You've come up with an idea for the next big thing--but how do you keep others from stealing it? There's really only one way to get legal protection, and that's to file a patent with the U.S. Patent and Trademark Office (PTO).
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.
Tomima Edmark is the inventor of the TopsyTail and several other products, and is author of The American Dream Fact Pack ($49.95), available by calling (800) 558-6779. Questions regarding inventions and patents may be sent to "Bright Ideas," Entrepreneur, 2392 Morse Ave., Irvine, CA 92614.
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 penny-wise and pound-foolish.
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.
Know Your Options
If patent costs are still beyond your budget, you have other choices. The PTO offers inventors two other ways to file and document the date of invention. Although these filings don't replace patents, they offer some legal protection.
- Disclosure document: You may file a disclosure document with the PTO that describes through words or drawings any aspects of your invention you wish to disclose. Each one-sided page must be numbered, any text or drawing must be able to be photocopied, photographs are acceptable, and no prototype may accompany the document. One original and one copy of the document must be signed by the inventor and sent with a self-addressed, stamped envelope and a check for $10 to Box DD, Assistant Commissioner of Patents, Washington, DC 20231. No one reads this document; the patent office simply keeps the original, stamps the copy with an identifying number and date of receipt and then returns it to you. Unless the disclosure document is referred to in a separate letter when you make your patent application, the document will be filed in the patent office for only two years and then be destroyed.
Such a document does not initiate a patent application nor provide patent protection. It does, however, give you a legal document proving the approximate date of your invention. In the event someone then files a patent application for the same invention, you still must demonstrate an earlier invention date and prove you did not abandon the idea.
- Provisional patent application: Recent changes in nondesign patent laws (following the United States' 1994 passage of the General Agreement on Tariffs and Trade treaty) now allow for the filing of a provisional patent application. This includes a description of the invention; drawings may be required if the description is not clear. It doesn't, however, include an oath or declaration, patent claims, or the specified drafted drawings that are required with a full patent application. This application proves you've filed a patent application and allows you to claim an early priority date.
Filing a provisional patent application places your invention in "patent pending" status and gives you an additional year to follow up with a formal application. If you don't file a formal patent application, however, you won't receive protection. Unlike the disclosure document, your application will be reviewed for compliance by the application board. The fee for filing a provisional application is $75. This option is helpful if you're running out of time to file your patent and need to establish a filing date.
Filing a patent with the help of a qualified patent attorney is definitely the best choice if you truly want to protect your idea. Although it's expensive and time-consuming, filing a patent is the only legal means available to you to defend your invention. For more information on patent applications, the PTO has a very informative Web site (http://www.uspto.gov) designed to answer patent applicants' questions.