What price protection?

Entrepreneur, Sept, 1998 by Tomima Edmark

Many people think that sending a registered letter detailing their idea to an attorney, friend, or themselves (and then keeping it in a safe place, unopened) provides protection. Wrong - it doesn't. I sent myself such a letter for my TopsyTail. Although it was helpful during my patent infringement lawsuits in proving when I came up with my idea, it doesn't prevent anyone from stealing your invention. That's because the only legal form of protection recognized by the judicial system is a patent. And as you may already know, obtaining a patent isn't cheap.

PATENT ABC'S

To determine how much money you'll need to spend, you should first understand the two types of patents that most often apply to entrepreneurs:

* Design patent. A design patent protects only the appearance or ornamental design of your invention; jewelry and clothing are two examples. If you make changes to your design, you must file another design patent to protect the modified version. This patent is relatively easy to register for and is generally the least expensive to file. A design patent has a term of 14 years and requires no maintenance fees to keep it in force.

* Utility patent. This type of patent protects the function or method of your invention. For example, my TopsyTail has a utility patent that protects the method by which users invert a ponytail using my device. Although this patent application is more complicated because it requires you to explain in detail how your invention is used, it provides greater protection of your idea. A utility patent is also more difficult to register for and almost always more expensive to file than a design patent. Its term lasts 20 years from the date of filing and requires maintenance payments about every four years to keep it in force.

After choosing the type of patent you want to apply for, you next need to decide whether to file the patent yourself or hire a patent attorney or agent to do it for you. I highly recommend getting help from a professional; I've heard of several cases in which an inventor filed his own patent only to see it get struck down in court. When it comes to patents, don't be pennywise and pound-foolish.

FILING FEES

If you choose to file your own patent application, your minimum expenditures will be the filing fees and costs associated with drawings and document preparation. Assuming you are filing as an individual or a small entity (as opposed to filing as a corporation), the filing fees are as follows:

Design patent: $165 Utility patent: $395

If you're filing a utility patent, the PTO requires you to pay maintenance fees throughout the life of your patent to keep it active. Those fees are:

Due at 3 1/2 years: $525 Due at 7 1/2 years: $1,050 Due at 11 1/2 years: $1,580

Hiring a patent attorney or agent to file your patent for you will increase these costs. And since their fees vary widely, I recommend you interview several. attorneys or agents and get an estimate of the total costs from each. Patent filing is fairly straightforward, so each attorney you contact should be able to give you an estimate. If he or she can't, I recommend you not use that attorney.

Every two years, the American Intellectual Property Law Association (AIPLA) surveys its members to see what they're charging for basic patent services. Last year's survey revealed the following ranges:

Design patent application: $500 to $1,000

Utility patent application (fairly straightforward): $3,000 to $5,000

Utility patent application (relatively complex, i.e., computer hardware, biotechnology, etc.): $5,550 to $10,000

These ranges don't include costs for drawings, patent searches or filing fees; they reflect only the attorney's time. Also, keep in mind that these ranges don't include follow-up work the attorney might have to do for you.

According to the industry standard, more than 90 percent of all patents receive at least one office action (a communication regarding your application from the patent examiner). Most of the time such office actions describe problems with the application that must be addressed before the PTO can proceed with the patent. Every patent application I've filed received at least one office action to which my attorney had to respond. These actions will further drive up your costs - and there's no way to know how many office actions will be issued on your patent application.

Before filing a patent, it's wise to perform a patent search. This search (usually conducted by a professional) reviews all existing patents to determine if your idea is unique. It's also a good idea to have a trained patent attorney analyze the search results and give you his or her opinion on your idea's patentability. Additionally, almost all patent applications require drawings that conform to stringent specifications; ask an expert draftsperson to help you with this.

Here are ranges for these additional costs:

Patent search: $175 to $250 Patent search, analysis and opinion: $650 to $1,200 Professional drawings: $75 to $250 per page

The bottom line: A basic design patent application with the help of an attorney or agent is going to cost you approximately $1,000 to $3,000. With an attorney's help, a utility patent application (without maintenance fees) will cost you anywhere from $4,000 to more than $12,000.