I am looking to retain high-technology patent attorneys in the San
Francisco Bay Area for several startup companies.  I have not
personally been involved in patent attorney selection in the past, and
am trying to get up to speed.

Assuming a startup technology company selects a firm with a solid
reputation, what are "typical" costs associated with development and
filing of a patent?  What types of costs are involved?  In what ways
will costs vary across firms?

I want to understand a general range of costs, as well as making sure
that compensation quotes are fair across the industry.  Any quidance?

Dear bkft:

Obtaining a patent can be quite complex and costly.  As a
practitioner, let me share with you the process of obtaining a patent
and a breakdown of the various expenses you can expect to incur along
the way.  I am assuming you will be pursuing utility patents, which
are the most common type.  Design patents are cheaper, but they offer
much less protection.

First, you will need to disclose your invention to your patent
attorney.  The more effort you can put into preparing a comprehensive,
easily understood document with drawings/photographs, along with a
prototype if one exists, before you meet with your attorney, the less
time this will take, and the cheaper it will be.

Next, the patent attorney will conduct a patent search, which is a
review of the existing prior art (typically just United States patents
and published United States patent applications) to understand what
has been done before and how your invention differs from it.  Any
guidance you can provide regarding relevant prior art you are aware of
and how it has been classified by the United States Patent and
Trademark Office is helpful in this process.  Having reviewed the
prior art, the patent attorney can give you some idea as to the
patentability of your invention.

Once the patent search has been completed and you have decided to
pursue patenting your invention, a Patent Specification must be
written and drawings conforming to the standards of the United States
Patent and Trademark office must be executed.  The Patent
Specification, the drawings, application filing forms required by the
United States Patent and Trademark Office, and a filing fee are then
sent to the United States Patent and Trademark Office.  A Patent
Examiner reviews the application.

The average backlog at the United States Patent and Trademark Office
is currently about 18 months.  So, within one to two years after
filing your application, your patent attorney will receive either a
Notice of Allowance or a first Office Action from the Patent Examiner.
 A Notice of Allowance at this stage is unusual, but if you have
received one, then you pay an issuance fee and receive your patent. 
More likely, the patent attorney will have to respond to the Office
Action by pointing out how the Patent Examiner has erred in refusing
to grant your claims and/or amending the Patent Specification to
overcome the Patent Examiner's objections.

In the event the response to the first Office Action is unsuccessful
at overcoming the Patent Examiner's objections, a second Office Action
will be issued, and the Patent Attorney will have an additional
opportunity to try to do so.  Depending upon the situation, there may
be even more than two Office Actions, and one should allow for several
months to pass between each one.  Ultimately, either a Notice of
Allowance will be granted, or the patent application will be rejected.
 An optional appeals process exists.  Overall, about two thirds of
patent applications are granted.

Now that you understand the process, here is some idea of what it will cost.

A large law firm will typically charge $200 an hour or more for patent
searching, Patent Specification writing, and responding to Office
Actions.  Their fees are usually open ended and wind up being around
$8000-$10,000 for the entire process.  Drawings are typically about
$100 per page.  Depending on the nature of your invention, you may
need one page or 50 pages to adequately depict it.  Three to six is
typical.

Some firms, particular smaller firms and individual practitioners, are
willing to engage in a fixed-price arrangement, particularly if you
have a significant volume of patents you will be applying for.  $2500
for the Patent Specification and an additional $2500 to prosecute as
many Office actions as are necessary is typical.  These firms often
operate with less overhead than a full-service firm, and may not offer
patent litigation services, allowing them to charge lower prices.

Patent agents, who are not patent attorneys and therefore cannot
litigate patents or handle trademark issues, are nonetheless members
of the Patent Bar and can apply for and prosecute patents on your
behalf.  They are usually a cheaper option than a patent attorney.

Naturally, if your invention requires unusual expertise in order to
understand it, then the attorney will probably be able to charge you
more because he or she has less competition.  Also, you will want to
inquire as to how many patent applications your attorney has submitted
and how many been granted, both overall and in the field of your
invention.  Some aspects of the patent process can really only be
learned through experience, so it is very valuable to have a seasoned
attorney, but you will most likely pay more for him or her.  Finally,
you will want to know who will actually be writing the Specification. 
You do not want to be paying the price of a seasoned attorney for a
junior attorney, a paralegal, or a patent agent, nor do you want
someone of lesser skill writing your patent application unbeknownst to
you.

For a current list of fees imposed by the United States Patent and
Trademark Office, please consult
http://www.uspto.gov/web/offices/ac/qs/ope/fee2004apr01.htm "UNITED
STATES PATENT AND TRADEMARK OFFICE FY2004 FEE SCHEDULE Effective April
1, 2004"

At present, the minimum utility patent application fee is $770 ($385
if you are a small entity) and the minimum issuance fee is $1330 ($665
if you are a small entity).  These fees are in addition to your
expenses for the Patent Attorney and the drawings.  Additional
escalating fees are incurred during the life of the patent to keep it
active.

In the event you elect to pursue patenting your invention in foreign
countries, you should expect your attorneys fees to be at least 50%
more for each additional country and to pay additional fees to the
patent office of each foreign country.  Translation of the patent
application may also be required.  If you anticipate pursuing patent
protection in foreign countries, you will want to make sure that your
attorney is familiar with the procedures in the various countries in
which you will be seeking to acquire a patent.  A large law firm may
be more suitable in this case.

The United States Patent and Trademark Office web site is an excellent
resource for learning more about the process of obtaining a patent. 
It is accessible via http://www.USPTO.gov.

I hope the above information is useful to you.

Sincerely,

Wonko

Very quick response, and very thorough.  Covered all areas I was
interested in.  Very satisfied.