How Much Does It Cost To File A Software Patent in 2024?

You want to file a software patent, but how much does it cost to prepare and file one in 2024? Unfortunately, the answer isn’t simple. There are several types of patents that you can file, which causes the cost to vary. Also, software patents are a very specific area of patent protection, so there is a lot of gray area involved.

Cost to File a Software Patent – Short Answer

Depending on the complexity of the software you want to patent, the cost for a patent lawyer preparation of a provisional patent application will range anywhere from $2,000 to $3,000.  The cost for a patent lawyer to prepare a utility patent application is estimated to be between $7,000 and $18,000 in 2024.

A design patent to protect UI and graphical icons in the software application, in contrast, can cost anywhere from $1,000 to $2,000. You will also need to plan for government filing fees associated with filing a patent application including search fees, examination fees, and filing fees. It is recommended to research and draft your application before filing. The more prepared you are, the more affordable the patent application process will be.

Breaking Down the Costs: From Provisional to Utility Patents

Filing a software patent isn’t just about submitting an application and waiting for approval. There are several steps and associated costs that can vary greatly depending on the complexity of your software and the strategy you choose.

The Initial Step: Provisional Patent Application

Starting with a provisional patent application is often a strategic move for startups. It’s less costly, ranging typically from $2,000 to $3,000, and it doesn’t require the same level of detail as a utility patent application.

This step allows you to secure a filing date and gives you a year to refine your application or software before you commit to the more expensive non-provisional patent application. Think of it as putting a pin in your place in line, which is incredibly valuable in the competitive tech landscape.

Transitioning to a Utility Patent

If you decide to move forward with a utility patent application after your provisional period, you’re looking at a higher cost bracket, generally between $7,000 and $18,000.

This range can be daunting, but it reflects the comprehensive nature of the protection this type of patent offers for your software’s functionality and methodology, not just its concept. Each feature, function, and innovation within your software can be protected, which is why the cost can escalate based on complexity.

Why Such a Wide Cost Range?

The broad range in cost largely depends on how intricate your software is. If your software integrates complex algorithms, multiple functionalities, or new technologies that are difficult to describe and claim clearly, your patent application will require more time and expertise from your patent attorney to draft effectively.

Additionally, if your software potentially overlaps with existing patents, more thorough searches and stronger claims are necessary, which also adds to the cost.

Factor in Design Patents for UI/UX

For software, especially those with unique user interfaces or user experiences, considering a design patent could be strategic. These are generally less expensive, ranging from $1,000 to $2,000, and protect the visual aspects of your software.

If the user interface is a key differentiator for your product in the market, securing a design patent can be a cost-effective way to add a layer of protection.

Consider the Long-term Benefits

While the upfront costs might seem high, the long-term benefits of holding a patent can far outweigh these initial expenses. Patents can deter competitors, attract investors, and potentially lead to lucrative licensing deals. They can also be pivotal in defending against infringement lawsuits, which can be far more costly than the patent application process.

Strategic Planning is Key

Strategically planning your patent application process can save you money. Being well-prepared with your documentation and having a clear understanding of your software’s unique selling points can streamline the process.

Moreover, engaging a competent patent attorney who understands the nuances of software patents and can advise you on how to structure your application efficiently is invaluable.

The Desirability of Protecting Software

Investors love software startups.  The reason is that SaaS businesses provide predictable, recurring revenue. A Netflix monthly subscription is a reliable, steady source of income that can be increased by adding more subscribers or increasing its cost. This is in contrast to a one-off fee to download a movie. SaaS startups have the potential to take on unlimited subscribers with less or more fixed costs. This could potentially create huge revenue. You can also easily upsell existing customers if you get them hooked.

SaaS companies tap into the modern consumer attitude. Consumers prefer to spend less money on one purchase and instead, they want flexible, cheaper products that can be used immediately, as well as the ability to be canceled quickly. SaaS is already a proven business model that investors love.

One potential hiccup is that your business model can be duplicated easily once you publicize and promote your startup. All it takes is another sharp coder who can see your Unicorn growth and emulate your idea.  This is where patents and intellectual property law can be used to protect your business.

Capital is the fuel for the marketing and sales engine when VCs invest in SaaS companies. You don’t want to put fuel in an engine that isn’t working, so make sure you explain how your software can scale. It is important to be clear about your sales and marketing strategy, how to keep the competition at bay,, as well as the metrics, and why you believe that if you invest more money, the system will accelerate. This is where patents can be used to prove to investors that you have exclusivity and can scale unimpeded by copyists.

Moreover, patenting your software method protects your company from the risks and costs of being copied by competitors. The cost of patenting your software idea is often directly related to its perceived value.

A patent for software inventions can last for 20 years, which is an inordinately long time to protect software inventions. While obtaining a patent can protect your software invention, many startups choose to obtain one for defensive purposes or to increase company valuation during discussions with investors or venture capitalists.

Boosting Investor Confidence

Investors are on the lookout for startups with not only great products but also strong potential for market dominance. Patents serve as a clear indicator that your software is unique and legally protected, which significantly elevates investor confidence.

This is especially true for SaaS businesses, where the product itself (the software) is the core of the business model. A patent signals to investors that your startup holds exclusive rights to its innovations, which can be crucial for drawing in venture capital necessary for growth.

Enhancing Market Position and Valuation

Securing a patent elevates your startup’s market position by effectively blocking competitors from copying your innovative features. This exclusivity can be a game changer in competitive markets, allowing your business to establish and maintain a significant market share.

Moreover, patents can enhance your company’s valuation. Intellectual property assets are tangible on the balance sheets and can increase your company’s worth, making it more attractive in mergers, acquisitions, and investment rounds.

Leveraging Competitive Advantage

In the fast-paced world of technology, being first to market with a new feature or functionality can be a massive advantage. However, without protection, your innovations can be quickly replicated, diluting your market presence.

Patents protect these innovations from being copied, allowing your startup to maintain its competitive edge. They create a barrier to entry for competitors and can even deter larger, more established companies from encroaching on your niche.

Facilitating Licensing Opportunities

Owning a patent can open up additional revenue streams through licensing agreements. If other companies want to use your patented technology, they’ll need to pay for the privilege.

This can be a substantial source of income and can also lead to strategic partnerships that may provide other non-monetary benefits, such as expanding your network or enhancing your product offerings through collaborative development efforts.

Encouraging Innovation

When a startup knows its software can be protected, it’s more likely to invest in research and development. A patent system supports innovation by providing a time-limited monopoly in exchange for the public disclosure of the invention.

This not only protects the inventor but also feeds into the cycle of innovation as others are inspired to create new solutions that build upon patented technologies.

Managing Risk of Infringement Claims

In industries where software patents are prevalent, having your own patent portfolio can provide defensive leverage. It’s not uncommon for companies to engage in litigation over software patents.

Owning patents can give you a stronger position from which to negotiate in such scenarios, potentially avoiding costly legal disputes or settling them more favorably.

Building Brand Reputation and Authority

Patents can also enhance your brand’s reputation, signaling to customers, partners, and competitors that you are a leader in innovation. This can be particularly powerful in the tech industry, where being seen as a pioneer can attract better talent, more partners, and ultimately lead to increased user adoption.

Steps to get a Software Patent

First, you must make sure that your software meets all the criteria for a software patent. Your software should improve computer performance and must be new, useful, and not obvious to someone of ordinary skill in the industry. Moreover, your patent application should be detailed and your disclosure should meet the guidelines of the USPTO. Those who are unsure of the steps to take to get a software patent can consult an attorney to learn more about the process.

While user interface and icons are routinely protected by design patents, the harder to get a patent is utility patent, which can protect the concept rather than the design patent. There are two types of utility patent applications: non-provisional and provisional applications. The provisional type is temporary and automatically expires in one year unless converted into a non-provisional application.

People often refer to utility patents when they talk about patents, which are the most common type of patent issued by US Patent and Trademark Office (USPTO). As such, we will focus on utility patent application costs first, and we will discuss design patent costs at the end.

A utility patent protects the operation of an invention, its workings, and/or the method by which it is used. Your invention must be a machine or process, method, article of manufacture and/or composition. Patents cannot be granted for abstract ideas, natural phenomena, or laws of nature.

Computer software, on the other hand, has been the subject of legal controversy as to whether the software is directed at the exclusionary category of “abstract thoughts”.

The term of a utility patent is usually 20 years after the date of its first effective filing. However, the USPTO must be paid the required maintenance fees to maintain the patent in force. The actual term of a patent may be shorter or longer depending on developments during prosecution, the status of related patent filings, the length of time taken for USPTO to grant patent applications, and so forth.

While it’s important to have a detailed description of your code, the process to get a software patent requires a lot of attention. The application should be thoroughly documented so that it can be judged in court. If you’re not a technical person, you can always hire a patent attorney to ensure that your software patent application will be successful.

Step 1: Ensuring Your Software Meets Patent Eligibility Criteria

The first and perhaps most crucial step is to confirm that your software meets the basic criteria for patentability set by the United States Patent and Trademark Office (USPTO).

Your software must offer a novel solution, be non-obvious (meaning it cannot be easily deduced by someone with average knowledge in the field), and provide a tangible benefit. It should distinctly improve computer functionality or solve a specific technological problem in a new and unobvious way.

Step 2: Conducting a Thorough Patent Search

Before you file your patent application, conducting a comprehensive search of existing patents and published applications is essential. This search will help you understand the landscape of already patented software and ensure that your innovation is truly unique.

Utilize resources like the USPTO’s patent database, Google Patents, or even specialized software patent search tools to conduct this search. If possible, engage a professional who specializes in patent searches to ensure no stone is left unturned.

Step 3: Preparing a Detailed Patent Application

Crafting a detailed patent application is a step that requires meticulous attention to detail. The application must include a full description of your software, detailing the specific elements of its functionality and the problems it addresses.

Include diagrams, flowcharts, and code snippets where necessary to illustrate how the software operates. This description should be thorough enough that another person skilled in the same domain could recreate your software without additional information.

Step 4: Defining Clear and Strong Claims

The claims section of your patent application is where you define the scope of your invention’s protection. This is the most critical part of your application, as these claims will determine what exactly is protected under your patent.

Each claim must be clear and precise, capturing the unique aspects of your software without being overly broad or vague. Work closely with a patent attorney to draft these claims to ensure they are robust and defensible.

Step 5: Navigating the Application Process

Once your application is prepared, submit it to the USPTO for review. This process includes paying the required filing, search, and examination fees. After submission, an examiner will review your application to determine if it meets all the criteria for patentability.

This process can take time, and the examiner may issue “office actions,” which are official communications asking for clarification or additional information, or rejecting certain claims.

Step 6: Responding to Office Actions

Responding effectively to office actions is crucial. Each response should address the examiner’s concerns comprehensively and may require amending your claims or providing further evidence to support your application.

This step often involves several rounds of communication with the USPTO, and having a skilled patent attorney can be invaluable in navigating this part of the process successfully.

Step 7: Final Steps Toward Patent Grant

Once all the examiner’s concerns are addressed and your application meets all the patentability requirements, the USPTO will issue a notice of allowance. At this point, you will need to pay the issuance fee after which your patent will be granted.

Receiving a patent is the culmination of a detailed and often complex journey but represents a significant achievement and protection for your software innovation.

Searching For Software Patents

Software patent searches are an excellent way to determine whether your software is unique and different from existing software. By performing a software patent search, you can gain a comprehensive picture of the software market and what competitors have done. This is an excellent tool for a business or legal venture, and it can help you understand the competitive landscape and how to distinguish your product from the rest. The search may also help you learn about the types of software that are already out there.

Although a free patent search is often less expensive than the cost of preparing a patent application, the quality of the software patent search will be of equal value. A skilled attorney will have the knowledge and experience to conduct an exhaustive software patent search for you, and the right attorney can mean the difference between approval and denial of your software patent application.

Before you spend money, you may want to do your own diligence by searching for your idea at the USPTO search site, or at the Google patent search site.  You can perform a software patent search yourself with the help of a number of free and paid tools available on the internet.

Software is not an easy subject to categorize and search for. The abstract and title of a software patent do not always capture the full scope of the software. New Big Data technologies have been developed to address these issues and search through databases of software patents. These solutions use related terms to search through huge databases.

One benefit of doing your own patent search is saving time. A software patent search will allow you to compare your software to other similar software and determine whether it is unique enough to warrant a patent. This is a very important step, as adding additional information could endanger your priority date or patent filing date. Doing a software patent search will also allow you to make sure your software has not been patented before.

The search for similar software applications can provide an insight into how the application process should be written. For example, software may be patented if it improves functionality in a computer, uses fewer resources or solves a computing problem in an unconventional manner. This may make it easier to sell the software in the future.

Understanding the Importance of a Comprehensive Patent Search

Before you embark on the journey of filing a patent, it’s crucial to understand what’s already out there.

This involves more than a cursory glance at related products; it requires a deep dive into existing patents to ensure your software doesn’t infringe on someone else’s intellectual property and to verify that your idea is indeed novel and non-obvious.

A detailed patent search can save you from costly legal disputes in the future and streamline the patent application process.

Utilizing Professional Resources

While there are tools available for anyone to conduct a patent search, utilizing the expertise of a professional patent searcher or a patent attorney can provide a more thorough exploration of existing patents.

These professionals use advanced tools and have a deep understanding of how to navigate complex patent databases such as those maintained by the USPTO and other international patent offices.

They also understand the nuances of patent classifications and can interpret the often complex legal language found in patent documents.

Exploring Various Databases

To conduct a thorough search, utilize multiple databases. Start with the USPTO’s patent database, but also explore international databases through the World Intellectual Property Organization (WIPO) and the European Patent Office (EPO).

Additionally, Google Patents can be a user-friendly tool that might reveal broader results through its linking to global patent databases and its ability to search through non-patent literature for prior art.

Analyzing Competitor Patents

Understanding what your competitors have patented is invaluable. This not only helps in navigating around existing patents but also in identifying potential gaps in the market or areas for improvement in your own software.

Reviewing competitor patents can provide strategic insights into the direction of technological developments within your industry, which can guide your innovation and patenting strategy.

Incorporating Big Data and AI Tools

The complexity of software patents, especially those involving algorithms and abstract ideas, can be challenging to navigate with traditional search methods alone. Leveraging big data analytics and artificial intelligence tools can enhance your search capabilities.

These technologies can process large volumes of data to uncover hidden relationships and patterns that might be missed otherwise, providing a more comprehensive overview of the patent landscape.

The Value of Preliminary Searches

Conducting preliminary searches before consulting with a patent attorney can be beneficial. This initial groundwork can help you articulate your invention more clearly and provide your attorney with a solid starting point for a more detailed and focused patent search. This can reduce the time and cost involved in the patent search phase.

Staying Updated

Patent databases are continually updated with new filings, so make it a routine to conduct searches at various stages of your product development process. This ensures that you remain informed about recent developments and can adjust your patent strategy accordingly.

Learning from the Search Results

Finally, view each patent search as a learning opportunity. Analyzing existing patents can enhance your technical knowledge and inspire innovative ideas that circumvent existing patents. It also prepares you better for discussions with your patent attorney and for making strategic decisions about protecting your intellectual property.

Costs of A Software Patent

If you’re interested in obtaining a software patent for your product or service, you may be wondering how much it will cost. Next, we will discuss what is required to obtain a software patent, as well as the costs involved. We will also cover how much it will cost in other countries. Also, we’ll discuss what your options are in terms of obtaining patents in different countries. In addition to these questions, you’ll find out what your obligations are and how to avoid legal pitfalls.

1. Cost Of A U.S Software Patent

The cost of a software patent can be high compared to other types of patents. The main reason for this is that software faces a higher hurdle at the patent office due to the Alice factors.

According to a Berkeley Patent Survey, two-thirds of software entrepreneurs do not have software patents. However, those entrepreneurs were ranked as having the least importance when it came to software patents. However, some will regret this decision. Just read the Phhhoto v Meta case and you will understand the importance of having patents as insurance for success with your GTM plan.  In that case, Phhhoto Inc., an app featuring short looped videos that did not have patent protection, filed federal antitrust claims in Brooklyn against the former Facebook Inc accusing founder Mark Zuckerberg of personally engineering a fraudulent “scheme to crush” the once-popular startup.

A software patent is valuable as it protects your innovation. Many companies buy patents to protect their products and charge royalties. Others focus on intellectual property and specialize in software patents. However, software patents are highly competitive. To obtain a software patent, you must have a strong foundation and demonstrate your uniqueness.

When you hire a patent attorney, be sure to choose an attorney with experience in the field of software. If you don’t hire an attorney, your patent application may be rejected, resulting in additional costs. Furthermore, the examiner may reject your patent application, requiring you to pay additional fees to respond to their findings. This will eat up the majority of your budget. Choosing a patent attorney with expertise in software patents is the best way to protect your ideas.

The first step in the software patent process is a prior art search. This requires an attorney to conduct a search of published patent applications and issued patents. The results of this process can help you determine what steps to take next. It will also help you determine the degree of protection that your patent offers. A prior art search can cost between $1,500 and $4,000, depending on how complex your software is. You’ll need to pay an attorney at least one-third of the total cost for your software patent.

The cost of a software patent application varies depending on the complexity of the invention. A simple software invention may cost $7,500 while a complex one can cost $17,000. The costs of biochemical and biological inventions are generally in the same range.

Another factor that affects the fees is the cost of professional drawings. Each drawing sheet can cost around $100-200/page. Depending on the complexity of your invention, professional drawings can cost several hundred dollars. However, these expenses are not necessary if you can do the flowcharts yourself, which is easy to do.

The time, money, and knowledge required to get a software patent are a large part of the process. However, the benefits far outweigh these costs. One of the most important things to consider is whether the software you want to patent is worth generating a large income. While it may seem too expensive, protecting a software product that can make you a substantial amount of money is worth the investment.

The benefits of a software patent far outweigh the cost. A software patent protects your idea from unauthorized use, which could result in costly consequences. A software patent will also position your company for greater financial performance. There is no better time than now to obtain a software patent.

Software patents are a good option for protecting a new idea against inappropriate use by competitors and positioning your company for higher earnings. However, there are some drawbacks. A software patent can take up to six years from filing to the date of issuance, which is often several years away. Additionally, the patent may be worthless if you’ve already developed your software, or it might be outdated and obsolete when you file it. The costs associated with obtaining a software patent are directly related to the perceived value of the patent.

To save time and money, you should find a patent attorney experienced with software. The attorney will review your software’s description and any other existing patents. This will reduce the risk of the patent being denied. Another important step in the process is to prepare your information and draft your application. This will save you money on attorney fees. Make sure that you have the proper background and knowledge to create a strong patent application. The best software patent attorney will also have a detailed understanding of the legal requirements.

At PatentPC, we have been doing software patents for over twenty years. We help clients identify new markets and strategic partners to add value during our consultations.

We will do everything we can to lower costs for our clients. We offer most of our services for a fixed price to ensure that clients have clear objectives and can meet their budgets. Our fixed fee approach applies to:

• Preparing, filing, and prosecuting patent applications at USPTO
• Opinions on patentability, validity, and infringement.
• Enforcement of patent rights in U.S. District Courts and on appeal
• Post-issuance Proceedings of the USPTO

We encourage you to request our list of typical patent fees. For more information about our services, call us at 800-234-3032 or schedule a strategy call with us.

2. Cost Of Getting A Software Patent In Other Countries

When filing a software patent application, you must be aware of the laws in each country where you plan to sell your product. The laws of various countries vary widely and may not protect the software you’re developing. The process for getting a software patent will be much more expensive and complicated than filing a standard patent application. As a result, you’ll have to file separate applications in many countries to get the protection you need. You may even have to go through several rounds of review before obtaining a patent.

As with traditional patents, worldwide protection costs a lot more than in the U.S. Various countries require yearly maintenance fees, which can amount to more than $3,000 a year. Furthermore, multiple annuities can add up to a considerable amount of money, since these fees only maintain the pendency of the foreign patent application. Moreover, these fees must still be paid even after the foreign patent matures.

The costs of obtaining a software patent in other countries vary widely, with an average of $8,000 and $12,000 in some cases. However, the fees do not necessarily include the fees associated with the legal fees of the various countries. It is important to remember that obtaining a software patent protects your invention and sets up your organization to increase its revenue. And the price is directly related to the perceived value of your invention in terms of protecting your international markets.

While it is not necessary to file your application in all of these countries, it may help your startup to reserve the right to pursue worldwide patent protection for its software. For instance, your potential future licensees and buyers may already have established distribution channels in other countries. You can use the PCT international reservation system which allows you to be able to claim your priority date in virtual all countries as long as you file internationally within 30 months of the PCT priority date.  If you are interested in the PCT option, contact us and do this within one year of your earliest priority date!

3. Do-It-Yourself Strategy to get a Software Patent Cheaply

If you are developing a software program as a solo founder, you probably know how frustrating it can be to get a patent. Often, patents are incredibly expensive and lengthy, which can hinder the innovation and entrepreneurship of the software developer. You may be thinking, “I can’t afford to hire an attorney to do this for me,” but the process is not as difficult as it seems. You can actually do it yourself initially using provisional patent applications and get attorney assistance to convert the case to a non-provisional in a year.

Provisional patent applications are an inexpensive way for an inventor to protect their IP before it is ready to be patented. They are not reviewed by the USPTO, but they secure the subject matter, priority date, and confidentiality of the patent. While this method may seem like a waste of time, it is a smart way to protect your work.

Once you have your idea and the right to protect it, you need to file a provisional patent application with the USPTO. This process is faster than filing a full patent application.

If you are interested in pursuing a software patent, getting a software patent attorney to write and file your provisional software patent application can cost between $1,500 to $3,000. This includes the lawyer’s fees for planning and drafting your application. The more complicated the invention, the higher the patent attorney’s fee.

However, you can do it yourself (DIY) or use a hybrid arrangement of preparing it yourself first and getting lawyer review to reduce lawyer fees. A DIY software patent application can be strategically used to prevent competitors from copying your work or to make extra income from cross-licenses. It can also protect you against predatory companies. A powerful software patent portfolio can prevent retaliatory lawsuits and put an end to patent infringement claims.  If you have time and lack a budget, you can make this process easier with a do-it-yourself strategy.

Software patentability often depends on the way in which you write your patent claims. When writing a software patent, describe the technical and engineering challenges faced and how you resolved them.  While claims are not needed, you may want to put one exemplary claim to show people that you have clarity of what the invention is and that you have full possession of the invention as early as the provisional filing date.  This information may be useful when you convert the provisional into a non-provisional utility patent application in a year.

Careful thought should be given to the claims, as they must be tailored to over pre-empting the space as that makes it more likely to be invalidated under the Supreme Court’s Alice Corp v. CLS Bank  Section 101 abstract matter views.

You can save money on a provisional application by creating it yourself with PowerPatent System. This system costs $99 and gives you everything you need to file a Provisional Patent Application. The system includes links to the relevant forms to file with the U.S. Patent Office. Unlike other simple provisional software, PowerPatent provides AI based diagnostics to help you craft a high quality patent application.  Moreover, the PowerPatent System includes an editable provisional patent application template. Once you have finished, you can submit your finished application. You can file it online with the U.S. Patent and Trademark Office’s Web portal.

While this method does take time and knowledge, it can produce a substantial return. In addition to saving money, hiring a patent attorney will improve your chances of success. In addition to that, a patent attorney can also help you avoid costly mistakes that might compromise your patent. But the cost of hiring a patent attorney will depend on your software’s complexity. If you’re interested in protecting your intellectual property, you should first collect your thoughts into a DIY application and then hire a patent attorney to polish the application for you.

A software startup should not wait until it’s too late to seek patent protection. By doing so, the company will miss out on immediate goals and strategic blocking patents that can maximize its valuation in the future. Some startups spend years acquiring patents, but some quickly develop powerful patent portfolios. You can use the right software patent techniques and tools to protect your software and prevent potential competitors from copying your ideas.

Provisional Patent Applications Extend the Life of a Software Patent

If you want to extend the life of a software patent, you should file a provisional patent application. This method will give you an earlier filing date and a 12-month patent protection. If the provisional patent expires before the nonprovisional patent is filed, it will lose its priority date.

If you file a non-provisional patent application, the lifespan will be twenty years, but you can also extend it by filing a provisional patent application first and then converting the provisional application into a non-provisional application within one year. The stacking of the lifetime of the two applications adds an extra year of patent protection for a total of 21 years. This is a strategy used by pharmaceutical companies where an extra year of drug protection can be worth billions. A provisional patent application is an early stage in the patent process. It is also an excellent way to protect your company’s intellectual property.

First, rushing to file a patent application can waste money and time. Some companies have rushed into filing patent applications when they had just a concept. As they went along, they created prototypes, talked with users and investors, and refined their products, only to realize that the technology was completely different than what they initially thought.

Once you have filed a provisional application, you can file further development applications within a year. This way, you can claim the benefit of the original provisional application and the subsequent developments. Moreover, you can add new developments to a non-provisional application if they happen within a year. New developments will be accorded a filing date when they are included in the patent application. Hence, you can avoid spending more money than you need to.

Once you’ve filed your provisional software patent, you can begin implementing your invention and monetizing it. During this time, your idea can be tested and honed. During this time, you can refine your invention and submit it for a full utility patent. By filing a provisional application, you have a year to refine your invention before it’s filed. You can also seek additional patents for your software.

The Strategic Use of Provisional Patent Applications

A provisional patent application is not just a preliminary step; it’s a strategic move in the patenting process. Filing a provisional application secures an early filing date, which is crucial in the patent world where the principle of ‘first to file’ applies. This early date can be pivotal if there is a race to patent similar technologies.

Extending the Patent Timeline

By filing a provisional patent application, inventors extend the life of their patent protection. Once a provisional application is filed, you have up to 12 months to file a corresponding non-provisional application.

This effectively extends the patent term to up to 21 years from the initial filing date (1 year of provisional plus 20 years from the subsequent non-provisional filing date). This additional year can be critical in maximizing the commercial benefits of a patent, especially in industries like software, where product cycles are rapid and market dynamics can change quickly.

Lower Cost and Flexibility

Provisional applications are generally less expensive to prepare and file than non-provisional patents because they have fewer formal requirements.

This lower cost provides startups and individual inventors with the flexibility to secure an early filing date without a significant initial investment. This period also offers a valuable buffer to further develop the invention, conduct market research, or seek funding based on a patent-pending status.

Maintaining Confidentiality While Securing Funding

During the 12-month period after filing a provisional patent application, inventors can safely disclose the invention to potential investors, partners, and others while seeking capital, partnerships, or additional resources.

This is because the provisional application secures the filing date and protects the invention from being considered prior art against itself. Inventors can use the term “patent pending” in discussions and presentations, which often adds credibility and value to the technology or software being presented.

Facilitating International Patent Strategies

For software companies looking to compete globally, provisional applications can be an integral part of an international patent strategy. The initial filing of a provisional patent application in the U.S. can serve as a basis for priority when filing patent applications in other countries, provided those are filed within 12 months.

This approach aligns with the Paris Convention for the Protection of Industrial Property, which allows the inventor to take advantage of the earlier U.S. filing date in countries that are members of the convention.

Risk Mitigation

The provisional period allows for testing the market response to the software or technology without full patent protection while minimizing the risk of public disclosure.

If the market response is unfavorable or if the technology evolves in such a way that the original invention becomes obsolete or needs significant changes, the inventor can choose not to move forward with a non-provisional application, thus saving the costs associated with it.

Preparing for a Full Patent Application

The provisional application should be as comprehensive as possible because it sets the foundation for the non-provisional application. It needs to sufficiently disclose the invention to support the claims that will be made later. This means detailed descriptions and any drawings or diagrams should be thorough enough to enable someone familiar with the technology to replicate the invention.

USPTO Filing Fees, Search, And Examination Fees

In addition to lawyer fees, you will need to plan for government fees.  When preparing a patent application, it is important to understand the different filing and search fees. Patent filing and search fees are divided into three categories, basic, electronic, and non-electronic. The fee is paid at the time of filing an application, and it must be paid by the due date to avoid a late-filing surcharge. The fee amount may vary based on the number of claims filed and the size of the application.

USPTO Filing Fees

The filing fee for each non-provisional application has a base fee and a variable fee that depends on the number of pages of your application and the number of claims.  The PTO fees change regularly, so the most current fees should be checked at https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

The USPTO fees can be reduced upon the establishment of small entity status (37 CFR 1.27) or micro entity (37 CFR 1.29). These are listed in separate columns. Except for provisional applications each patent application requires the appropriate search fee, examination fee, and the fees listed in the “Patent filing fees” section. Each fee listed under “Patent application file fees” should be accompanied with the appropriate search fee in the section “Patent search costs” and the appropriate examination fee in the section “Patent exam fees”.

Non-electronic filing fees of $400/$200 (fee codes 1090/2090/3090, 1690/2690/3690), must be paid along with the filing, search, and examination fees in every original nonprovisional utility applications filed in paper at the USPTO. You can only avoid the non-electronic fee by submitting your nonprovisional utility request via EFS-Web. The fee is not applicable to provisional, reissue, design or plant applications.

The Office may offer a refund if the applicant pays a fee in error or pays too much. But, there are strict rules and regulations to comply with. Fees can’t be refunded if a person has changed his or her mind. So, if you want to change your mind, the Director may be able to offer a refund if you request it, but you have to pay a petition fee!

USPTO Search Fees

Examining a software patent requires a certain fee. To determine the exact cost of the examination, see the fees schedule for specific categories of software patents. The examination fees pay for the time USPTO examiners review (and often reject) applicants.  In this process, patent applicants must be able to obtain prompt and thorough examinations of their applications. Compact prosecution requires that each claim be examined for compliance with all statutory requirements for patentability during the initial review of an application. This is true even if some claims are not in accordance with a statutory requirement.

Examiners must state every reason and basis for rejecting claims during the initial Office action. Particularly when deficiencies are used as grounds for rejection, they should be clearly explained. Examiners and patent reexamination lawyers should, whenever possible, explain how rejections can be overcome and what solutions may be found. A rejection that is not based upon prior art (lack or inadequate written description, enablement or utility) is considered proper. This rejection should not be interpreted as a conclusion but rather as a detailed explanation of the reasons. This approach is important to avoid unnecessary delays in prosecution of your application.

A standard examination process can take 18-22 months. For a higher fee, you can expedite the examination process, which can reduce the time to six to eight months. Examiners issue a Notice of Allowance once their review has concluded, which means that the patent application is okayed and is now ready for filing.

Patent applications are comprised of two separate parts – the preparation phase and prosecution phase. The preparation stage will usually cost around $1,000, and the prosecution phase will likely cost up to $30,000 or more. If you want a faster process, consider consulting a patent attorney. Examination fees for patenting software are non-refundable.

Micro Entity Reduced Fee Option

One option for a software inventor is to apply as a micro entity. Micro entities are eligible for a 75% discount on U.S. Patent Office fees, compared to 50% for Small Entities and 0% for Large Entities. This could save you thousands or more!

While institutions of higher education are not considered a micro entity, the USPTO does allow them to file a patent application if certain requirements are met.

If you choose to file a patent application as a micro entity, you must be careful not to overextend your financial resources. In fact, you can be charged with fraud if you do not declare your income as a micro entity if you do not make enough money. It is very difficult to gain micro entity status unless you have a lot of money or have fewer patents filed. However, if you do make enough money, you can qualify as a micro entity.

While it may be tempting to file as a micro entity, doing so has its downsides. For starters, it can have a negative impact on the validity of your patent. Not only is it risky, but it can also lead to additional legal hurdles during the patent process.

Furthermore, you cannot be named as the sole inventor on more than four patents.

Design Patent Options for Software Ornamental Features

Software’s aesthetics, i.e. how it is presented to the user, are key factors in its success.  To protect the appearance of the user interface or icon, a design patent can be used. This is a different way to protect source code than only protecting the functionality of the software. 

Design patent applications are cheaper than utility ones because they protect only the appearance of the invention. This is a disadvantage, since competitors can avoid your ornamental design with another ornamental look and can freely use the idea behind your ornamentality.

However, once the user interface sticks (see Google’s search bar), the source code can be written in many different ways but if they achieve the exact same look or ornamentally, then such software infringes the design patent.

A design patent can protect the look and feel of your products. While it is the least expensive type of software patent, it has significant potential for damages awards if you look at Apple’s billion dollar award against Samsung for its iPhone design patent.

One important difference between utility and design patents is that design patents protect the appearance of an article and utility patents protect the material used to make the article. In general, design patents protect a product’s appearance, and the latter protects the material that makes it work. It is important that the overall visual impression is new and not an obvious copy of another prior design.

Design patents can be especially valuable if you are worried about counterfeiters or want to keep the look of your product untouched. The United States, Germany, and Europe are the hubs for big tech brands, so it makes sense for them to protect their designs there.

 Unlike utility patents, design patents can be filed quickly and can be issued in as little as a year. Utility patents can take two years or more to get granted. In addition to being less expensive, design patents do not require maintenance fees.

A design patent application is often filed close to the launch of the product. As the development process progresses, the inventor settles on a design. He or she may not be entirely satisfied with this design and may change it over time. This makes it important to submit a design patent application that accurately reflects the product. Similarly, the preparation costs of a design patent are significantly lower than those of utility patents.

Comparing Utility Patents And Design Patents Costs

Because they are easier to obtain, design patents have become the most popular type of software patent. A design patent is the least expensive type of software patent because it provides a superficial layer of protection, but is still worth considering. Increasingly, many developers want to protect their products as well as their designs, so a design patent is a great option for such companies. But make sure to research the various types of patents available before deciding which one to choose.

Utility style drawings are useful when the product you are designing is functional. For example, a utility-style drawing can protect the shape of a bottle, or a shoe. The document is almost entirely made up of pictures of the design on the useful item. This type of patent is difficult to search for because there are few words in the document. Design patents have been used to protect the appearance and functionality of touchscreen devices and user interfaces for software.

A software design patent is an excellent way to protect your creation. These patents cost approximately $2,500 to $3,500 and last for one or two years. These fees include the filing and preparation of the patent application. Often, design patents are cheaper than utility patents because they protect aesthetics. But if you want to protect a new design, you should do a design patent search.

Wrapping it up

While patenting can be costly, Patents have many advantages;

• Patents give you the right to prevent others from using, copying, manufacturing or selling your invention without your consent and protect your GTM plan.
• Ensure the exclusivity of your solution for a pre-determined time period to ensure that you are able to compete.
• Delay entry by the competition with new roadblocks and design-around efforts give you extra time to gain market share and show your Unicorn growth.
• You can also license your patent to others or sell it. This could be a great source of revenue for your company. Some businesses are only in it to collect royalties from patents they license – sometimes in combination with registered designs and trademarks.

Now that we have discussed the costs of patenting and ways to do this cost-effectively, go out and claim your intellectual property!