Patent Engagement Letter Appendix


Listed below are additional tasks, and their costs, that we might undertake for you if, for whatever reason, our provision of patent law services related to obtaining and maintaining a patent was not to follow the typical, utility patent prosecution process outlined in the Patent Engagement Letter:

1. Completion of Reduction to Practice– Patent law says that the creator of an invention is not an “inventor” until he/she has “reduced to practice the invention” (i.e., built a prototype and documented its benefits or, without having built a prototype, documented the invention in its entirety with an “enabling” disclosure” [i.e., a description in enough detail {e.g., identify by name the various parts or elements of the invention and give the specifications for them if these are important to the functionality of the invention; if possible, provide one or more line drawings of the invention and label these such that they identify the invention’s various parts} to allow a person having ordinary knowledge in the technical area of the invention to make and use it without having to undertake extensive experimentation to resolve any technical details not fully provided in your disclosure]). If you do not meet these requirements of “inventorship” and assuming that you wish to do so by “making an enabling disclosure,” our first task will be to assist you in this documentation step. Because the amount of work required at this step can vary widely, it is difficult to quote a typical legal fee for this step. However, it is hoped that we can limit our fees for this step to $2,000 or less.

2. Instead of Initially Filing a Regular Utility Patent Application and for Whatever Reason (e.g., When You Suspect That You May Not Have Yet Evolved the Best Embodiment of Your Invention, But Want To Try To Secure The Earliest Possible Filing Date For Your Invention; Want to Try to Postpone Some of Your Patent Costs), Preparation and Filing of a Provisional Patent Application (PPA) Knowing That You Will Need Within 12 Months Of Its Filing To Prepare & File The Required Require Patent Application (RPA): Legal Fee – approximately $2,500 – $5,000 and depending upon the effort required to fully describe your invention (which often is a function of your invention’s complexity and the completeness of the written disclosure that you provide of your invention) and understanding that a legal description (i.e., a “claim”) of your invention will generally not be a part of a PPA, Expenses – USPTO Filing Fees – $130, assuming you are entitled to pay “small entity” fees, plus possible expenses for necessary line drawings (e.g., $100/sheet). Note: In rare circumstances, one may wish to file a PPA solely for the purpose of being able to lawfully put a “Patent Pending Notice” on all materials related to the invention and not to claim priority to this PPA’s earlier filing date – in this situation, these legal fees can possibly be significantly reduced.

3. Expedited Examination of a Regular Patent Application.  Depending on the subject matter of your invention and the type of technology applicable, it can take anywhere from 20 – 30 months after your application’s filing date to get any initial feedback (i.e., a First Office Action) from the USPTO regarding whether they will or will not grant a patent for the invention. The receipt of this feedback usually begins a sort of negotiation process with the USPTO regarding what form any to-be-allowed claims will take; this process can add another 8 – 16 or more months to the time of when the applicant will eventually be granted a patent.  For those applicants who do not want to wait approximately 2.5 to 4 years for their patent to issue, the USPTO does offer the following option: Request For Prioritized Examination – for an additional USPTO application filing and processing fee of $2,070 for a small-entity applicant, the USPTO will advance your application ahead in the normal lineup of applications waiting to be examined – this will often reduce to less than 12 months the typical 20 – 30 months duration before one receives a First Office Action.  An additional approximately $200 in legal fees may also be incurred in preparing the paperwork necessary to make this request.

4. Preparation and Filing of a U.S. Design Patent Application: Legal Fee – approximately $1,500 – $3,000 and depending upon the effort required to fully describe and claim your invention (e.g., if only 6 Figures are required to claim your invention, the expected legal fee would be closer to $1,500; if 15 or more Figures are necessary, the legal fee could be closer to $3,000). Expenses – USPTO Filing Fees – $380, assuming you are entitled to pay “small entity” fees, plus possible expenses for necessary line drawings (e.g., $100/sheet).

5. Prosecution of a U.S. Design Patent Application:

      • Response to USPTO Office Action/s which gives the USPTO’s feedback on the Application (A necessary step in >90% of design applications): Legal Fee – because the amount of work required at this stage will be a function of the USPTO’s feedback, it is difficult to quote typical legal fees for this step; recognizing that a Response to more than one Office Action may be required, it is hoped that these legal fees can be held to approximately $1,500-$2,000 or less.
      • Filings In Response to a Notice of Allowance & the subsequent Issuance to you of a Patent: Legal Fee – approximately $500, Expenses – USPTO Issuance Fees – $510.
      • Maintenance Fees – there are none for a design patent whose life is 15 years from its date of issue.
      • Foreign Application. Depending upon your interest in foreign patent protection, within six months of filing a U.S. patent application or your invention’s public disclosure, you will need to apply for your foreign patent rights – typically by making one or more Paris Convention (PC) filings. Legal Fee – it is hoped the initial legal fees can be held to $1,000 or less for each PC filing, Expenses – typical initial PC filing expenses are on the order of $1,000 per filing.

6. Patent Maintenance. Patents require maintenance. We often are retained by our clients to provide this maintenance. As previously noted, this includes: payment of “small entity” (assuming the patentee is a “small-entity”) maintenance fees of $800, $1,800 and $3,700 on the respective 3rd, 7th and 11th year anniversaries of the date of issuance of your patent.  For this to occur, your account must be fully paid up before we will pay these fees for you. In addition, in our discretion, we may require that you pre-pay both the filing fee and the fees associated with our work to make the filing (we will typically require prepayment for filing fees in excess of $300). We will advise you of the nature and amount of the filing fees before you incur them, provided that if we are unable to reach you, or you do not respond, we may not pay such fees and your filing may go abandoned. In that case, if we cannot reach you, we may also advance these filing fees for you, to prevent an abandonment, and you agree to pay said fees. Often these maintenance fees are only due at periods that are long after the initial registration, so you should keep your contact information with us up to date.

7. Assuming Responsibility for Prosecuting a Patent Application That Another Drafted & Filed. An additional fee of $1250 will be charged if you are becoming a client after you or another representative has prepared or filed a patent application on your behalf prior to your becoming our client.

  1. Freedom-To-Operate Assessment With Respect To A Specific Patent

For a review of whether one’s product, service or method of operation is infringing another’s specific patent (i.e., whether the client is free to make and sale what it believes to be its own, similar product or service), there are a few options to choose from, depending on the level of comfort one is seeking.  The more thorough the review, the more cost is involved.

Option 1:  Quick Look Review

  • Review the specific patent (not its file history);
  • Review either a website or a statement from the client, describing as completely as possible their product, service or method of operation;
  • Telephone call with the client to discuss our thoughts based on the above review.
  • This review usually takes a few hours, and is quoted in the $2,000 range but can quickly increase to more depending on the complexity of the specific patent and the client’s product, service or method of operation.

Option 2: Intermediate Clearance Review

  • The review incorporates the above points, plus:
  • Review of the specific patent’s file history so as to ensure a precise interpretation of its claims and make an initial assessment of the patent’s possible validity;
  • Preliminary, written, non-opinion report with a summary of the issues uncovered by the review.
  • This option generally adds $2,000 – $3,000 in additional cost to Option 1, with the exact amount depending greatly on the size and complexity of the specific patent’s file history (e.g., 50 – 1,000p).

Option 3: Full Service Review

  • This review incorporates the above points, plus:
  • Full, written report with regards to the specific patent in question;
  • This option generally adds $4,000-$6,000 or more in additional costs to Option 2, with the exact amount depending greatly on the amount of time required to fully document the review.

Please note that the above services are NOT a full Freedom to Operate Opinion (FTO), since we are not performing any patent searching services (i.e., to identify other pertinent patents that might raise infringement issues for the client’s making and selling of its products or services, etc.) in the above options.