How to Lower Your Provisional Utility Patent Cost
Utility patents are ideal for inventors who want to safeguard their innovations from others. Unfortunately, these patents can be expensive.
One way to save money is by filing a provisional utility patent application before applying for a non-provisional patent. This is an excellent option for inventors unsure whether they should file a utility patent application.
Fees for small entities
The United States Patent and Trademark Office (USPTO) has been gradually decreasing fees for smaller entities to encourage innovation from solo inventors, small businesses, and colleges/universities. At present, micro entities pay about 50 percent less than large entities when applying for patent protection.
Micro entity status can be granted either on the basis of gross income or from an institution of higher education that receives most of their earnings. To qualify on either basis, applicants must include either form SB/15A for gross income eligibility and SB/15B for institution-based qualification with each application.
However, it’s essential to remember that if an applicant or small business previously claimed micro entity status and then changed it later, they must make a written assertion of that change before paying any fees (issue fees, maintenance fees) for a new patent application. Otherwise, the original recorded status will remain unchanged; potentially leading to significant financial penalties for the applicant.
Therefore, it is imperative that you review all of your patent filings with an attorney prior to paying any USPTO fees. Doing this will guarantee that your entity status is updated correctly and any unpaid fees are covered.
Particularly if the patents you seek to secure involve sophisticated technology like computer software or medical devices, extensive documentation may be required and fees associated with them can be high; hence, it’s essential that you don’t overpay for services your company requires.
Furthermore, any attempt to fraudulently establish small entity status is considered fraud and will jeopardize your patent’s enforceability. This stands in stark contrast to previous regulations which allowed falsely asserting entitlement to a fee reduction to be excused if made with good faith and discovered later as an error.
In 2022, the Unleashing American Innovators Act implemented new penalties for any attempts to falsely assert entity status without due cause. These consequences could have a significant effect on small businesses and individuals seeking to take advantage of reduced fees for small entities.
Fees for large entities
In addition to filing fees, large entities must also pay patent maintenance fees at regular intervals over a 20-year patent lifespan. These fees guarantee that a patent remains in force and protects the encompassed invention from infringement by other parties. They are due at 3-3.5, 7-7.5, and 11-11.5 years after issuance of the patent.
In the United States, large entities may qualify for small entity status which enables them to reduce some USPTO fees by up to 50%. Nonetheless, this status can be lost if a large entity gives its rights or licenses the patent to a smaller one; hence it’s essential that you know your exact entity status before filing any paperwork.
If you’re uncertain of your entity status, the United States Patent and Trademark Office can be of assistance. They will be able to tell you which patent application type to file and what fees apply based on your entity size.
The USPTO also offers a fee waiver program for small and micro entities, which can be utilized by individuals, groups of inventors, and small businesses. However, it should be noted that these discounts only cover the initial filing fee and do not cover any attorney or agent fees associated with drafting a patent application.
Once a utility patent application has been filed, there will be additional expenses associated with disputing its merits with an expert and paying an issue fee once granted. Depending on the type of patent, these additional fees could add up to several thousands of dollars over its lifespan.
If you choose an international filing system, an additional foreign filing fee of several thousand dollars could be assessed over the life of your patent. Furthermore, patent maintenance fees at 3-3.5, 7-7.5, and 11.5 years after issuance will add up over 20 years – another few thousand in additional costs for you as a patent holder.
Fees for requesting a refund
As an invention becomes more complex, so does the cost to obtain a provisional utility patent. Prices for provisionals range anywhere from $280 to over $15,000+ depending on the type of invention; thus, hiring an attorney to help complete an effective provisional application is highly recommended.
If you have paid fees in error or were misidentified as belonging to another entity, you may be eligible for a refund under the “by mistake” clause as provided for in 35 U.S.C. 42(d) and 37 CFR 1.26 (see below).
Under this provision, the Office has the authority to refund fees paid in error or that are in excess of what was due. It also has the power to return fees paid via credit card and issue a refund either back to the card account used for payment, or directly to the payor if they provided banking information needed for electronic funds transfer under 31 U.S.C.
Refund requests under this section must be made within three months of receiving either a deposit account charge authorization or certificate of correction filed after the fee payment date. The Office treats receipt of either document as being the fee payment date for refund purposes.
Be aware that in order to receive a refund under Section 1.27(c), you must assert your small entity status. Failure to do so will cause the Office to treat you as a large entity and will not reduce any fees.
In addition to refunding any fees not reduced under the micro entity discount, the Office will also refund any payments in full made before an applicant established small entity status. However, this refund can only take effect upon establishment of small entity status and only if an assertion under SS 1.27(c) and request for reimbursement are submitted within three months from payment of the full fee.
Fees for additional 50 sheets
Utility patent applicants face an uphill battle when it comes to filing a patent. Whether filing for personal use or business use, the cost can be substantial and put a serious dent in your wallet. Fortunately, there are plenty of resources available that will help guide you through this maze of fees. From topnotch lawyers and turnkey sites offering patent filing solutions, there are plenty of choices – just do a simple Google search for “patent lawyer near me.” More experienced practitioners might want to check out UpCounsel which boasts an impressive roster of lawyers with average years of experience ranging from 14-14 years.
Filing a standard or provisional patent can cost thousands of dollars, but there are ways to save money and get your application filed quickly and within budget. For instance, you may qualify for reduced filing fees if your entity meets certain size and activity criteria. Similarly, expedited filing can be purchased if you need to secure your desired patent quickly.