How much does patenting an invention cost?

The purpose of this article is to give a rough idea of costs involved in patenting an invention.

There are different routes for obtaining patents, and this article focuses on one common strategy, which involves filing an initial patent application as a UK patent application, then filing an international patent application, and subsequently filing national/ regional phase patent applications.

The first stage is usually to draft and file an initial patent application, a so-called “priority application”, which can be a UK patent application. The cost of this depends on the invention, the complexity and the time required, but often is within the range of £5,000 to £10,000 or more, for a good quality patent application drafted by a patent attorney. The content and quality of this initial priority application can be the most significant factors in determining whether commercially useful patent protection will ultimately be obtained.

At this initial stage, in some cases it can be useful to ask the UK patent examiner to carry out a search and examination assessment of the invention. This can give some indication as to the chance of success in securing patent protection and/or useful information regarding obstacles which may need to be overcome. The cost of requesting this patentability assessment, and professional consideration and advice regarding the results, depends on the work required, but might be within the range of £1,500 to £3,000. Alternatively, a patentability assessment could be carried out before filing.

If protection is desired in several jurisdictions, a common strategy is then to file an international (“PCT”) patent application within a year of the filing date of the initial UK priority application. This can typically cost between £5,500 and £9,000 depending on how much the text is modified at this stage (e.g. to cover further variants of the invention, add additional supporting data, add material to improve the position with respect to information found during search, or add material tailored to commercial priorities which may have altered since the UK filing date).

The international examiner will then carry out their own search and patentability assessment. The cost of professional assessment and advice regarding that, if required, depends on the work required, but might be within the range of £500 to £2,500.

The period during which the international patent application remains pending (the “international phase”) expires 2.5 years after the initial UK filing date. Optionally, during the international phase, further actions can be taken (e.g. further examination can be carried out and amendments and arguments presented). The cost of these optional further actions may be justified in certain scenarios, for example if the patent applicant wishes to address objections at an early stage.

At the end of the international phase, national and regional phase patent applications are filed in those jurisdictions in which the patent applicant wishes to seek patent protection. At this stage, most patent applicants file at least a European patent application and a US patent application, and other jurisdictions in which patent applications are commonly filed include China, India, Japan, Canada, South Korea, Brazil, Australia, Singapore, Mexico and Israel, amongst others. The choice of countries will depend on the field of technology, the patent applicant’s business model, and the commercial importance of the invention, and considerations include where the markets for the invention are, and other factors.

As a very rough rule of thumb, the cost of filing each national or regional phase patent application might be within the range of £2,000 to £8,000 (costs at the upper end of this range might be payable in countries where translations are required and where the text is lengthy; also some countries require higher official fee payments than others). Therefore, the cost of filing in several important jurisdictions might be within the range of £20,000 to £40,000 or more. After filing, applications in most jurisdictions go through a process of “prosecution” over several years which entails search and examination by each patent examiner; usually each patent examiner will raise objections which the patent attorney will address on the patent applicant’s behalf by counterarguments or by narrowing the scope of the patent or both, possibly in more than one iteration. The cost of prosecution varies, but can be similar to the cost of filing, for example a further £20,000 to £40,000 or more, if several jurisdictions are covered.

When patent applications reach the grant stage, further costs occur which again vary significantly by jurisdiction.

In respect of European patent applications, particular considerations arise on grant. At this stage it is necessary to decide in which European countries the European patent is to be brought into force. It is possible for European patents to be in effect in individual countries on a country-by-country basis, as a bundle of national patents. It is also possible to obtain coverage in most of the EU by choosing a Unitary patent. Grant costs for a significant part of the EU, plus the UK, and possibly some other non-EU countries, could be of the order of £5,000 to £20,000.

Overall, allowing for all of the costs mentioned above, securing patent protection in several important European countries (including the UK) plus the US might cost of the order of £30,000 to £60,000 or more (over several years). Additionally obtaining patent grants in several other non-European countries could increase the total cost (over several years) to something of the order of £60,000 to £100,000 or more.

After grant (and in some cases before grant), patent offices require payment of renewal fees, usually on an annual basis, to keep patents in force or patent applications pending. These can cost a few hundred pounds to a few thousand pounds per renewal fee per jurisdiction.

The figures provided in this document are approximate and are exclusive of VAT, where applicable. The intention is merely to give a ballpark indication of possible costs. Actual costs may be outside the ranges stated and will depend on the specific circumstances and work required. This document summarises key steps in the patenting process but omits discussion of other matters which may occur thereby incurring further costs.

We find that the patenting strategy set out in this document works well for many of our clients. In particular, the use of the international phase postpones the deadline by which expensive national and regional patent applications must be filed.

Nevertheless, for some clients other patenting strategies will be more appropriate and we can advise on the most appropriate routes and strategies depending on particular circumstances. These might entail one or more of the following, for example:

i) filing the initial patent application as not a UK patent application but as a European patent application or an application in another jurisdiction;

ii) not having a priority application at all, for example filing an international (PCT) patent application straight away;

iii) not filing an international (PCT) patent but proceeding directly to foreign and regional patent applications.

Whilst the costs of securing patent protection can be very high, it is often the case that the most significant factor in the value and success of a company can be its IP (including its patents). Exclusivity in several important jurisdictions worldwide, or the ability to sell or licence a commercially critical invention, can be worth many times the investment in patenting. Furthermore, investment in the early stages of the patenting process can be particularly worthwhile: focusing on a good quality initial UK patent application can result in a position which can help bring commercial partners on board before the patenting costs rise significantly at the national and regional filing stages.

Article by Robert Gregory