Patent attorney fees and other associated costs are likely factors when inventors and companies consider protecting their innovations.  Patent protection is a key element of an intellectual property (IP) portfolio because patents confer the right to stop an unauthorized person from making commercial use of your invention.  A patent attorney could provide valuable counsel to clients on the scope of available patent protection and other aspects of patent law, but proper patent procurement, enforcement, and inventor/client vigilance are important.

A patent protection scheme typically begins by assessing what innovations are present and conducting an IP audit.  The IP audit could examine all of the company’s existing technologies and any future innovations related to those existing technologies, and assessing whether any patent protection on such innovations may be warranted.  The IP audit could also include assessing any new innovations in the company’s pipeline.  The IP audit could then be used to prioritize company resources, evaluate future values of the innovation, and provide a patent protection scheme that matches the company’s goals and future business environment.  The IP audit could also include an assessment of competitor’s technologies, business practices, and patent protection schemes.  Patent attorney fees for IP audits can vary significantly depending on the scope of the project.  Typically, patent attorneys provide an hourly rate for a particular project.  For other projects, patent attorneys could provide a flat fee cost estimate.  In any case, most patent attorneys usually require a retainer to cover any anticipated patent attorney fees.

Before investing in any patent protection scheme, it is advisable to seek counsel and conduct patent searches for any possible blocking patents.  Often times, inventors may have come up with a product that has already been patented and patent searches could help the inventor assess the scope of patent protection available, where to file patent applications, and take measures to prevent possible infringement of existing patents.  Results from patent searches could also aid in strategizing a comprehensive patent protection program, drafting the patent application, and, ultimately, in deciding the scope of the claims.  Patent attorney fees for patent searches could vary depending on the technology, state of the technology space, and scope of the search.  For example, patent attorney fees for patent searches on relatively simple innovations could range between $1,500 and $1,800.  For more complicated innovations, such as software or internet-related innovations, patent attorney fees could range between $1,800 and $2,500.

If the results of the patent search are favorable, the patent counsel will typically prepare a patent protection scheme that includes strategizing the geographical areas in which to file a patent application, drafting a patent application, patentability and non-infringement opinions, where needed, and providing counsel on any prosecution-related matters.  To receive non-provisional patent protection on utility innovations in the U.S., a company can expect initial patent attorney fees could range from anywhere between $5,000-$10,000 plus a $500 filing fee for up to 20 claims in the U.S.  Patent attorney fees can vary depending on the state of the technology space, complexity of the innovation, scope of patent protection sought, and filing requirements from a particular patent governing body.

After filing the patent application, patent protection is not immediately available.  In the U.S., the patent application generally publishes and become public 18 months from the earliest filing date.  Patent attorney fees to review the publication for accuracy could range between $0-$1,000, depending whether there are inaccuracies to correct or preliminary amendments to file.  About 20-24 months from the filing date, the U.S. Patent and Trademark Office (USPTO) typically issues an Office Action either rejecting or allowing the patent application.  The applicant must respond to the Office Action within the allotted time, otherwise the application could go abandoned.  Patent attorney fees for responding to the Office Action could be on an hourly basis or on a flat fee basis.  Typically, the time to respond to the Office Action could range between 2-8 hours and the patent attorney fees could range between $500-$2,500.

On the other hand, if the patent application receives a Notice of Allowance from the USPTO, the applicant must pay the requisite issue fees, otherwise the application goes abandoned.  After receiving the Notice of Allowance, it may be advisable to file any amendments to correct any informalities in the application by filing a “312 Amendment.”  Typically, the time to prepare a 312 Amendment could range between 1-5 hours and the patent attorney fees could range between $250-$1,100.  Moreover, if the application is a candidate to file a continuation, continuation-in-part, or divisional application, patent attorney fees could vary between $1,000-$8,000, depending on the state of the technology space, complexity of the innovation, scope of patent protection sought, and filing requirements from a particular patent governing body.

Most applications do not receive a first Office Action allowance and the process could require responding to two or three Office Action before the patent application is allowed, if at all.  Most applications generally take anywhere from 1-5 years before issuing as a patent and receiving patent protection in the U.S.  Some foreign patent governing bodies have even longer average patent prosecution periods.

Once issued, a U.S. patent generally offers patent protection for a 20-year term calculated from the earliest filing date.  This term may be reduced or adjusted by the USPTO.  Patent protection in the U.S. may be lost if the patentee fails to pay the requisite maintenance fees at 3.5 years, 7.5 years, and 11.5 years from the date of issuance.  Unless certain complications occur, patent attorney fees to file maintenance fees are typically minimal.  After the patent is issued, the patentee and patent counsel should consider asserting their patent protection rights against infringers and, in some cases, license the patented technology to third parties.  Depending on how the matter is ultimately resolved, patent attorney fees for enforcing patents can vary greatly.  Foreign patenting bodies may have different term limits, maintenance fee schedules, and patent protection limitations.  Foreign patent attorney fees may also vary greatly depending on a number of additional matters such as translation costs, certified copy costs, and attorney time to draft or, in some cases, redraft patent application for compliance with foreign patent laws.

If you are interested in additional information on patents, or if you have any questions regarding patent laws or our patent protection services, , please contact one of Dallas patent lawyers.   We offer an array of services in the areas of intellectual property including patents, trademarks, copyrights, trade secrets as well as intellectual property litigation and enforcement.  Detailed information on these and other services is available at http://kk-llp.com/.  In addition, we act as local counsel in patent, trademark, copyright, trade secret, and commercial litigation cases in the state and federal courts in the Northern District of Texas.  Further information on our local counsel practice is available at http://kk-llp.com/localcounsel.asp.