What kind of initial patenting costs should we calculate?

Hi, there. Good question, as it is pretty difficult to answer without knowing more. You are indeed correct that preparing and filing a patent application, and then prosecuting that application to grant, can be a pretty expensive venture. In my experience, the highest cost is the initial upfront cost of preparing and filing the application. Preparing the application alone can amount to >$10k easily, and the official filing fees can be a few to several hundred dollars depending on your entity size (micro, small, or large). Prosecuting the application tends to be less expensive and is stretched out over a number of years, which helps reduce the financial burden. You must also decide if you would like to file an international application and/or any foreign applications, which could greatly increase the overall cost, depending on the number of countries in which you want to file your application.

There are, however, ways of reducing these costs, such as getting yourself involved in the overall process. When I am approached for patent prosecution work by individual inventors or small businesses that don't have much money, I advise them to prepare many of the documents themselves. This enables me to spend a lesser amount of time revamping the documents to conform to U.S. patent practice and ensuring all the necessities and formalities are disclosed. Also, the type of technology can greatly factor in to the overall cost of preparing the application. Obviously, preparing an application involving a more complex technology takes more time and effort than preparing an application involving a simpler technology.

As for the other facet of your question, it is very difficult to access the risk of filing a patent application. One way to determine the likelihood of your success is to approach a patent professional for a patentability search and opinion. However, there is never a guarantee that the patent professional will not fail to find a piece of prior art that a USPTO Examiner may find, and there is also no way of knowing how an Examiner may interpret a particular reference. Nevertheless, a patentability opinion remains one of the best ways to assess your risk as it tests the novelty and non-obviousness of your invention.

In addition to this, certain types of technologies stand a better chance at being patented than others. For example, recent case law developments in patent eligibility standards (e.g., the Alice decision) have made it much more difficult to patent software and computer-based technologies (although it is still possible).

Feel free to reach out to me with any additional questions.