FAQ of the Week: What is included in filing a utility application?

FAQ of the week: utility application

Question: We have a mechanical invention, but don’t want to get into manufacturing of the product
without good patent protection.  We don’t want competitors stealing our idea.  You mentioned that it
might run about US$ 9000 to file the utility application in the US. What is behind the $9000?  Also, we
are looking to protect the idea in at least the big five countries in Europe, the USA, China, Japan, perhaps
Brazil.  What would that cost?

Answer: Fish IP typically charges $8K  to $10K for researching prior art, brainstorming, drafting, and
filing a US utility application.  Software applications can run more.

About $1500 – $2000 goes into prior art searching, to figure out what is the white space that can be
claimed.  That is a critical step because merely claiming the invented design is usually worthless from a
patent standpoint.  There are simply too many work-arounds that others might come up with. \

Another $2000 or so goes into brainstorming how to claim that white space.  Remember, that a good
patent is not entirely directed to what the inventor invented.  It is directed to what the inventor wants
to stop others from doing.  Two entire different goals.  A good patent claim is a single sentence, that
includes what the inventor invented, plus all commercially viable alternatives (whether we know what
they are or not), and disclaims all combinations know anywhere in the world at any time (whether we
know what they are or not), preferably 50 words or less.  As you can imagine, that is not a simple task.
Another $4000 or so is drafting the application and claims.

Another $1000 or so (for a small entity) is for out of pocket filing costs, paralegal time, etc. Prosecution
of the application (arguing with the patent office) over the following 3 or more years will likely run
another $5K – $7K or more.  Then there is an issue fee, and maintenance fees.

Filing in other countries is additional.  If we file in Europe, we would likely go through the EPO (European
Patent Office), which would probably run about $7K to pay the filing, examination and foreign associate
fees, and at least that much again over the following years to get the EPO to grant the application.  Once
the application is granted, one needs to validate the grant in European countries of interest, or take the
Unified Patent approach, all of which can add at least another $10K.  And there are annual maintenance
fees to boot.

Filing in countries that require a translation, such as China, Japan, Korea and Brazil, are more expensive
because of the translation costs – both for the initial application and for the office actions and responses
during prosecution.  One has to expect to spend at least $15K to $20K for each such country, plus annual
maintenance fees.

Have more questions on patent laws and regulations? Visit our FAQ pages or contact us for a consultation.