U.S. Patent Filing Procedures and Costs

PLEASE NOTE: This information is provided for informational purposes only, and does not constitute legal advice. For legal advice, please contact one of our attorneys.

There are three types of patents issued in the U.S.:
design patents, utility patents, and plant patents.

  1. A design patent covers the ornamental features of an
    industrial design.
  2. A utility patent covers a product, a composition, a method, or an apparatus. The U.S. also allows a number of items to be protected by utility patent which are not protectible in some other countries. Pharmaceuticals, some living organisms, and some types of computer-related software inventions may be protected.
  3. The U.S. has a special category for plants which may be patented.

Items needed to file an application in the U.S. are:

  1. a written description of the invention which (a) enables one of ordinary skill in the art to make and use the invention and (b) discloses what the inventor believes is the best mode for carrying out the invention at the time the application is filed;
  2. at least one claim which particularly points out and distinctly claims the subject matter the applicant regards as his invention;
  3. an oath or declaration which must be signed (but can be after filing) by the inventor (even though assigned to a company) except in certain special circumstances, such as death of the inventor;
  4. drawings, if necessary to understand the invention;
  5. a filing fee; and
  6. a power of attorney.

In order to claim priority based on a prior application made in another Paris Convention country, an application must be filed in the U.S. within one year (6 months for design patent) of the application date in the other country. If an application has been filed in multiple other Paris Convention countries, the U.S. application should be filed within one year of the first application that was filed in another Paris Convention country. In addition to the requirements listed above, a certified copy of the application filed in the other Paris Convention country must be filed eventually with the U.S. application in order to perfect a claim of priority. If more than one year has passed since the filing date in the first Paris Convention country, patent protection may still be available in the U.S., provided that no patent has issued from any application. If such a situation exists, please contact our firm for further analysis.

While the specification filed need not be in English when filed, a translation of the application will be required prior to examination. In addition, the applicant in a U.S. case is not necessarily the owner of the invention. Each inventor must sign the oath or declaration. An inventor may assign his or her rights in an application to anyone, e.g., an employer, who may then be responsible for prosecution of the application.

The U.S. also acts as a Contracting State in accordance with the Patent Cooperation Treaty. An application can be filed in the U.S. Patent Office designating the U.S. if at least one inventor is a U.S. citizen or resident. The requirements for filing a PCT application in the U.S. Patent Office designating the U.S. are the same as those for filing in other countries.

In addition, an international application under the PCT may enter the national stage in the U.S. In order to enter the national stage in the U.S., an applicant must file the following:

  1. a copy of the international application;
  2. the basic national fee;
  3. a copy of any amendments and translation (or they are considered cancelled)
  4. a translation of the international application into English; and
  5. the oath or declaration of the inventor.

If an applicant omits the last two items, additional time will be given to submit them. It is desirable to file copies of the references from an international search report or any other prior art references of which you are aware. These preferably should be filed within three months of filing the application.

There are limits on the number of pages and on the number of claims unless a burdensome “Examination Support Document” is filed and/or extra government fees are paid.

Documents and communications between us can be sent by email.

Our fee for the services of entering into the national phase under the PCT or filing and claiming priority under the Paris Convention is $1000. That fee includes preparation of USPTO forms, filing the application and reporting thereon but assumes receipt of papers by mail or email ready for filing. Additional fees may be required if new drawings are required or the application must be revised or a preliminary amendment must be prepared to conform the application to U.S. practice. Any substantial deviation from the above fees will be reported to you prior to our proceeding, if time permits. Of course the total cost for filing will also include official government filing fees.

  • Official Government Fees United States Patent Office Web Page
  •  

    Example Cost For Typical Utility Patent Application Filed Electronically (2015). (no more than 3 independent claims and 20 dependent claims) [large entity]/[small entity]

  • Basic Official filing Fee 280.00 / 70.00
  • Official Search Fee 600.00 / 300.00
  • Official Examination Fee 720.00 / 360.00
  • Our Services Fee 1,000.00
  • Total 2,600 / 1,730
  • The Government fees change periodically. See the above USPTO web site to confirm Government fee information.

    Copyright © 1999-2015 Frank H. Foster and Jason H. Foster