Patenting any product can be a long, complex, and expensive process. But there are ways to manage the costs, particularly when dealing with mobile applications (e.g., iPhone apps, Android apps, web apps, etc.). One of our favorite strategies for protecting mobile applications is to start with a provisional patent application. The provisional patent application is an initial application that secures a filing date (priority date) for the patent application and allows you to start exploring the market without fear of others beating you to the patent office. The easy way to think of it is that the provisional patent application is a placeholder in time that secures your place in line at the patent office. While each application is unique, a typical provisional patent application for a mobile application may cost between $3,000 to $6,000 to prepare and file (plus the USPTO filing fees of $70 or $140 depending on whether the client qualifies as a micro entity or a small entity). The $3,000 application is typically a minimally viable application that will secure your filing date with respect to the essential core of the invention. The $6,000 application is typically a more fully developed application that provides an even stronger base from which to build the later non-provisional. In either case, if we are working with you at both the provisional and non-provisional stages, the cost of the provisional is credited against the cost of the non-provisional.
Once the provisional application is on file, you can safely launch the app in the App Store, Android Market, or similar distribution channel, and test the market. Because the provisional patent application secures your priority date for up to one year, you can take the first 6-9 months after the provisional application is on file to see how well the app catches on before deciding whether to continue the patent process. The relative success (or failure) of the app over that time can help guide you in determining whether to invest further in the non-provisional patent application.
While the provisional patent application functions as a placeholder in time, the non-provisional patent application is the step required to start the examination of the patent application at the patent office. It is a much more complex and expensive document to prepare, requiring a claim set, formal drawings, and a higher filing fee. Again, while each application is unique, a typical non-provisional patent application for a mobile application may cost between $12,500 to $17,500 to prepare and file (plus the USPTO filing fees of $430 or $785 depending on whether the client qualifies as a micro entity or a small entity). As noted above, when we have prepared the provisional patent application for you, we credit the cost of the provisional against the cost of the non-provisional. The non-provisional is the “full” application and start moving the process forward at the United States Patent and Trademark Office (USPTO).
Once the non-provisional patent application is on file, the examination process begins. The examination process is the wildcard in the patent application process. It can take anywhere from a year to three or more years to get through the examination stage. Typically, the patent application will sit waiting for examination anywhere from several months to several years. When the examiner picks up the application, the examiner will search the existing patents and patent applications looking for references that teach the same invention as your application. The examiner will find the most relevant references and issue an office action either allowing the patent or providing reasons why the patent can’t issue in the present form. You then have the opportunity to respond to any issues raised by the examiner by filing an amendment and responsive arguments. Each response may be several thousand dollars, depending on the complexity of the arguments and amendments that will be required.
The typical patent application will go through several rounds of rejections before the patent examiner sends a notice of allowance. The number of rounds of examination and the complexity of the responses will determine the cost of the examination process, but it is typical to see fees between $5,000 to $15,000 over 2-3 years of examination. It is important to understand that at this stage of the patent process, your mobile app will have been in the market for some time and you will be able to be confident in deciding whether the app is valuable enough to continue pursing patent protection.
Once the patent office action allows the patent application, you need to pay the issue fee to the USPTO (typically under $1,500 including the USPTO and the legal fees) and then the patent will issue. From that point forward, the only remaining patent fees will be at the 4, 8, and 12 year marks after issuance when a maintenance fee is required to keep your patent in force. Currently, the small entity maintenance fees are $800 (4 year), $1,800 (8 year), and $3,700 (12 year).
All said, over a course of 3-5 years, the total fees to patent the typical mobile app may be anywhere from $20,000 to $30,000, with the maintenance fees being additional fees over the following 12 years. As noted above, patenting a mobile app can be a long, complex, and expensive process. However, as you can see, due to the stages of the patent application process, you have an opportunity to stage the fees over several years while simultaneously exploring the product value in the market. This enables you to gauge the potential value of the patent as you are going through the patent process.
Richards Patent Law has very significant experience patenting mobile applications and we will be happy to speak with you about your mobile app to help you determine whether it makes sense to move forward with a patent application.