Patenting Electronics: What’s the Cost & Is It Worth It?

The average cost of filing a patent in the USA is above US$ 25,000. For patents in the US, the cost involves attorney fees and USPTO fees. 

An attorney will help you navigate through the process of applying for a patent, including a patent search, filing for a provisional or nonprovisional (utility) patent, and act on any office actions.

An attorney might charge anything between US$250 to US$500 per hour.

USPTO fees vary significantly and there are many.

• Patent application filing fee
• Patent search fee
• Patent examination fee
• Patent post allowance fee
• Patent extension of times fee
• Patent maintenance fee
• Miscellaneous patent fees
• Post issuance fees
• Patent Trial and appeal fees
• Patent petition fees
• National stage
• PCT fees National/International stage
• Patent enrollment fee

For full details, please go here

IF I GET AN ELECTRONICS PATENT IN THE USA OR EUROPE, WILL I BE SAFE IN MANUFACTURING IN CHINA?

If you applied for patent protection internationally under the Patent Cooperation Treaty, in theory, you should be safe, but the reality is not always that.

Even though China is part of the PCT, there’s still a lack of effective enforcement of patents in China, which means that if you find out that someone is copying your electronic device and you decide to take legal actions against it, you’ll spend a lot of time and money in a Chinese court and still get no positive results.

But just because patent enforcement in China is not sufficient, it doesn’t mean your new electronic device has to be copied eventually, we go at great length to protect your IP.

We do this by implementing an NDA, doing product development in Taiwan, and by applying a technique we call Divide and Conquer, please read this article to find out more Electronics IP protection in China.

WHERE SHOULD I GET AN ELECTRONICS PATENT?

Copying is often originated by companies in the target market of the product.

Usually, a company in the target market of a given product sees how successful a product is and then asks a Chinese electronics manufacturer to reverse engineer it and make a copy.

It’s for this reason that, if you decide to file a patent, you’re better off filing for it in the target market of your product.

HOW TO PATENT AN ELECTRONIC IDEA IN THE USA? 7 STEPS

The truth of the matter is that you can not patent ideas, you can only patent inventions.

1- DEFINE WHETHER YOU HAVE AN IDEA OR AN INVENTION

Ideas are exciting and emotional thoughts, that, while they seem to be an excellent way to solve a problem, there’s no formal process explaining how.

An invention, on the other hand, is a physical product or fully described process that explains step by step how this will work.

An idea would be something like an electronic mattress that tracks your sleep, reminds you of things to do before going to sleep, and also has a vibrating alarm that won’t stop until you get up.

Excellent idea, but you won’t get a patent for that.

If you have let’s say

• Some drawings of your electronics product
• A list of the components and other materials you need
• An explanation of how easy it would be to build the prototype
• A step by step guide on how things will be assembled
• Which kind of system this electronic would need to function properly

Now is looking more like an invention.

Once an idea has been described at a level of detail that any electronics manufacturing experts could see a clear way on how to build at least a solid prototype, then you have an invention.

2- CHECK FOR ELIGIBILITY

It’s recommended to seek help from a licensed and registered USPTO patent attorney, no one better than her/him to help you understand whether your invention is eligible or not.

That being said, here’s some necessary and useful information you should be aware of. The current patent statute states:

“Any person who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” 

Eligible patents need to meet three basic criteria clearly

• Utility
• Novelty
• Non-Obviousness

For most people, this is not specific enough and they’re still left with many unanswered questions; this is why consulting with a registered USPTO patent attorney is highly recommended.

While a lawyer, most likely, won’t say: yes, it is eligible, or no, it is not eligible, you’ll still get a very educated opinion on different aspects of your invention and will let you know what are the risks of moving forward with your patent application.

3- TIME TO DETERMINE WHOM WILL OWN THE PATENT

After meeting with your lawyer and deciding that you have high chances of getting a patent, you must be clear on who will the patent be attributed to:

• Who invented this?
• Was it only you?
• Is there a partner?
• Did anyone other than yourself make a significant contribution?

Those are all essential questions you should have an answer for as an inventor needs to provide an oath disclosing all known people that took part in the invention- this under 37 CFR 1.66.

In many instances, people that helped you create a physical version of your electronic product, are not real inventors, for example, if you come to us to develop a prototype of your invention, while our experts will put work in optimizing your design for manufacturability, and there’s certainly a creative effort in that, we are not inventors as we did not conceive the original idea.

If indeed there are co-inventors, they must all be listed, and everyone will get equal rights to the invention.

If you’re not sure whether you should or should not list someone as a coinventor, please consult with your lawyer.

What happens if the invention was developed while being employed by a company?

Then the ownership of the invention will go to the company. Companies make employees sign an employment contract when hired, and more often than not, it includes an intellectual property clause.

This means that any employee that develops any intellectual property while on the job, it’s forced to give ownership rights to the company.

4- IS APPLYING FOR A PATENT WORTH IT?

If by now you know that you have an eligible invention and you have it clear whom the invention belongs to, then it’s time to consider whether it makes sense or not to go through the expensive process of filing for a patent.

Here’s an interesting fact, 97% of all patents never make any money.

Now, the goal, for most people, when patenting an invention is to make money, this pretty much means this is an ROI issue, will all the time and money you’ll invest into patenting an electronic device bring a good return on investment?

Here you’re going to want to step away from the inventor/entrepreneur mindset and get into consumer mode. You have to evaluate the commercial value of your electronic device.

Will my invention solve a real problem? Is this problem big enough for people to want to buy my electronic device? Is the market big enough for me to make money? Is manufacturing possible? Is the cost of manufacturing reasonable?

A lawyer won’t be the right person to answer all of these questions. When it comes to an electronic device, the best way to evaluate its manufacturability and commercial value is through a proof of concept.

Once the POC process is over, and you now have hard evidence that your electronic device is possible to manufacture and that, more importantly, there’s a market for it, then you should apply for a nonprovisional patent.

BE AWARE

Early disclosure of your invention might kill your opportunities of getting a patent.

In the United States, you have a limit of one year, after you’ve published your invention to the public, to patent your product, if you fail to do so, then your invention becomes public domain.

Taking an early version of your invention to a trade show, publishing your invention on a trade journal, placing it on Kickstarter or any other website to gather funds and verify whether people have an interest on it or not qualifies as publishing your invention and the minute you do so your one-year grace period will start running.

So how can you test whether your invention is worth patenting without worrying about losing the rights to your new electronic device?

The answer is Confidentially Agreement, also known as an NDA Non-Disclosure Agreement. We wrote something about NDA too, please check it out.

If you sign a confidentiality agreement with a 3^rd party, then the clock won’t start ticking.

An Extra Step

If for whatever reason it is, you don’t need to bring in a third party to help you with your electronic prototype, let’s say you have that already under control and you decide to take your prototype to an electronic fair, you should work with a registered USPTO patent attorney to file a provisional patent application.

After doing this, you’ll be in what’s known as pending patent status.

Once you have filed your provisional patent application, you don’t have to worry about sharing your invention with the world and then losing the rights to it.

5- DEPLOY YOUR POC AND MARKET RESEARCH

Whether your new electronic invention is meant to be sold at the retail market or is a B2B electronics, make sure to set a timeline to test the prototype in real-life situations to see how the possible users receive your device.

Apart from finding out whether your product is something useful for a specific market, make sure you do a market analysis to verify:

• How big the market is and this way predict demand
• The level of competition in the market
• Is there any entrance barrier, such as governmental or legal requirements?

If your product proves to be useful and easy to use and additionally find out that there’s a big market for your new electronic device, few competitors and a low entrance barrier, then congratulations, this would be a clear example of a product worth patenting.

If you find out that the odds are against you but you still want to make sure you keep the rights to your invention because in the future you can improve on it and then try again, then ask your lawyer to help you out with a trade secret protection deal.

6- FILE YOUR PATENT APPLICATION

You’re now in this step because you have done much hard work to make sure your invention meets the minimum eligibility standards plus all the market research to know that there’s a chance of market success with your new electronic device.

Now, make sure you select the right patent application.

List of Patents

Provisional Patent Application.

This is a simple application that works to preserve a filing date for an invention. You must follow up with a nonprovisional patent application within one year.

The primary purpose of this patent is to give the inventor the chance to develop a prototype and test the product in real-life situations to get possible customer’s feedback before moving into claiming a Nonprovisional patent.

Nonprovisional patent application

This is a formal application submitted to the USPTO.

This application must include specific claims, drawings with proper formatting, a large set of documents including an oath, invention disclosure statement, and an application datasheet.

Divisional Patent Application

This type of patent comes after a Nonprovisional patent application. This is usually a restriction requirement office action.

When a large claim set covering many different aspects of an invention is submitted, the examiner at the USPTO might see the claims as totally different subjects, requiring you to apply for more than one patent.

Continuation Application

This is an application for those inventors who have already filed patents and keep on improving their inventions.

As long as such improvements were described at least at a basic level in the nonprovisional patent, you can file a continuation application.

Design Patent Application

This patent aims at protecting the three-dimensional shape of an object product or device.

For electronic devices, it is highly recommended for you to file both a nonprovisional patent and a design patent.

Plant Patents

This patent aims at protecting innovations in plants and other botanical elements.

 7- APPLY FOR AN INTERNATIONAL PATENT

Remember that patents protected by the USPTO only protects your right in the United States of America.

It would be best if you considered obtaining a patent in all countries that have a market demand for your product. Consult with your lawyer about the Patent Cooperation Treaty.

How much does it cost to patent an idea worldwide? That’s a question we’ve heard a couple of times; the truth is it depends; so please consult with a lawyer.

Congratulations, you have applied for your patent.

ELECTRONICS PATENTS – FREQUENTLY ASKED QUESTIONS