I started this site to provide a one stop source for answers to the most frequently asked questions about patents and the patent process. I compiled the list of questions in the FAQ primarily from the questions that my clients typically ask. Now that those are answered, it's time to turn to the questions/keywords sent to Google that directed visitors to this site.
1. How much should a simple utility patent cost? I have been doing a lot of market research in order to provide competitive rates and the range that I have seen quoted by small firms for uncomplicated inventions varies from between $2,500 and $5,000. For more information click here.
2. How much time to draft office action response? Most replies take me 8 to 10 hours, but it can take more or less time depending on the complexity of the invention and the cited prior art.
3. How to choose a patent attorney? Click here.
4. Is my invention patentable? Click here.
5. How to prepare a patent application. The requirements for a patent application are laid out in MPEP chapter 600. I will explain in greater detail in future posts.
6. I have an idea for a product, what next? Click here.
7. Infringement under doe and literally infringement. Click here.
8. Outsource patent work. This is a very popular search. You will likely need an export license to communicate your invention to a party outside of the U.S. For more information click here.
9. Look over my patent application. Patent applications a very complex technical and legal documents. I have worked with many inventors that filed their own patent applications. Most of them perform admirably when it comes to describing the technical aspects of their invention. The problems that these inventors run into is satisfying the formalities of the patent application, which are very expensive to correct after the application is filed. I am happy to review inventor's patent application and provide feedback for a nominal fee.
10. Help inventors monetize patent. Unfortunately, there is no simple answer. Click here for one option.
11. Notice of allowance reopen prosecution. Reopening prosecution is typically required to take certain measures that are not available when prosecution is closed. This may be required, for example, to file an Information Disclosure Statement or to correct inventorship. Prosecution is reopended by filing a request for continued examination (RCE).
12. Number of office actions until allowance. There is no fixed number of actions. Rather, the number will be based on how close the prior art is to the claimed invention, and on the skills of the practitioner arguing the application and of the examiner assigned to the application. I have received allowances after only one office action in applications that were easy to distinguish from the prior art. See 6891234. Applications with closer art will likely see 2 to 4 office actions before an allowance.
13. Patent application average cost. Another popular search. I would estimate that the average cost of a quality utility patent application of average complexity is between $7,000 and $8,000. For more information click here.
14. Patents how long to get. Click here.
15. Should an inventor prepare his own specification? Click here.
16. What are patent post allowance fees? There is an issue fee and three maintenance fees at 3, 7, and 11 years from the grant date of the patent. Patent office fees are here.
17. What kind of patents are there. Design, Utility or Non-provisional, Provisional, and Plant.
18. What to do if my patent is being infringed. When you find yourself in this situation you will want to contact the infringer to get them to cease all infringing activity, demand damages resulting from the infringement, and/or offer a license for any further use. There are generally two ways to get the ball rolling. The most commonly selected option is to send the infringer a cease and desist (C&D) letter that puts them on notice of the infringement. C&D letters should be approached with extreme caution, however, as the letter may give the infringer standing to sue the patentee for a declaratory judgment as in the case between HP v. Acceleron. The second option is simply to sue the infringer. Patent litigation is expensive. Luckily, individual inventors and small businesses can turn to law firms willing to work on a contingency fee.
19. When can I expect a first office action patent application. This will vary greatly depending on the backlog in the particular art unit that the application is assigned. I have seen few first office actions come in in less than 14 months and many more office actions come in in over 24 months. Click here for more information.
20. Why file continuation after notice of allowance? Flexibility! I have seen instances where a company does not infringe an issued patent, but there was support in the specification to file a continuation application with claims that would be infringed. If a continuation application is not filed, the patentee may loose the ability to capture subject matter in the specification if the application is allowed to issue without filing at least one continuation application.
How do I choose an attorney or agent? What about Invention Marketing Companies?
I was going to skip this post, but I spoke to a colleague recently that reminded me how important it is to choose the right patent attorney. This colleague started a business roughly five years ago to produce novel software for streaming media. At inception, the business took steps to protect its intellectual property, including pursuing patents and trademarks. For its patent applications, the business selected a fairly large, nationally recognized firm. As you can probably guess things did not work out so well. Now that the patent application is being prosecuted, the business is having a hard (expensive) time getting meaningful patent protection from the patent application filed by this firm.
Unfortunately, this is not an isolated case and small businesses are not the only ones that fall into this trap. Indeed, I have first hand experience fixing the applications prepared by some of the most prestigious law firms for clients that paid these firms millions of dollars every year.
So how does one avoid falling into this trap? Answer: the attorney or agent that is selected must be a good match for the business. Here are a few variables to consider:
1. The size of the business and that of the firm - Larger firms generally have more resources to service larger clients. Unfortunately, these firms typically provide preferential service to their larger clients. As a result, work for small clients is typically handled by junior associates with little or no supervision. Smaller firms do more work for individuals and small businesses, which translates into more attention for these clients.
2. The experience and background of the attorney or agent that will actually prepare the patent application - Generally, the more experience that a practitioner has the higher probability of getting good quality patent. Also, I prefer that the practitioner have litigation and licensing experience. I find that practitioners with this additional experience do a better job avoiding problems that only show up when applicants are trying to monetize their patent. The practitioner's background should also match the technology that applicants are pursuing. For example, biologists are likely better suited for patent applications directed to biotechnology whereas engineers are likely better suited for electro-mechanical devices.
3. Cost - The practitioner's rates must fit within the applicant's budget. Larger firms typically charge more to cover their substantial overhead. Smaller firms have better control over their overhead, which typically allows them to charge less. For example, as a fifth year associate at a medium to large firm in New York City my billable rate was near $400 per hour. When I transferred to a smaller firm in the same city, my billable rate went down to $250 per hour. I have seen practitioners charge as low as $100 per hour and as high as $500 per hour. There are also firms that offer services at a flat rate. Note, the hourly rate varies based on the practitioner's level of experience as well as other factors. Therefore, a higher hourly rate does not necessarily translate into a higher overall cost as senior practitioners typically require less time to complete a task as compared to their junior counterparts.
4. Recommendations as well as criticism from similarly situated peers should be taken into consideration.
As I hinted above, I have had a lot of experience fixing patent applications that were mishandled by others. In most of these instances, the owners of these applications could have avoided costly mistakes by simply doing their homework and asking tough questions before selecting a firm for their patent applications.
On a side note, there are a number of invention marketing/submission/promotion companies that offer inventors patent and marketing services for their invention. I haven't dealt with any personally, but I've heard that a number of them are unscrupulous to say the least. This is the way that the scam plays out. An inventor contacts the company for a consultation. The company tells the inventor that it is a great idea (regardless of the merits of the idea) and that they would like to market the invention for them. The inventor only has to pay the full cost of the patent application and the full cost for the company to submit the invention to each company. It is my understanding that few if any inventions are actually licensed to third parties. More information about these companies can be found here and here.
Unfortunately, this is not an isolated case and small businesses are not the only ones that fall into this trap. Indeed, I have first hand experience fixing the applications prepared by some of the most prestigious law firms for clients that paid these firms millions of dollars every year.
So how does one avoid falling into this trap? Answer: the attorney or agent that is selected must be a good match for the business. Here are a few variables to consider:
1. The size of the business and that of the firm - Larger firms generally have more resources to service larger clients. Unfortunately, these firms typically provide preferential service to their larger clients. As a result, work for small clients is typically handled by junior associates with little or no supervision. Smaller firms do more work for individuals and small businesses, which translates into more attention for these clients.
2. The experience and background of the attorney or agent that will actually prepare the patent application - Generally, the more experience that a practitioner has the higher probability of getting good quality patent. Also, I prefer that the practitioner have litigation and licensing experience. I find that practitioners with this additional experience do a better job avoiding problems that only show up when applicants are trying to monetize their patent. The practitioner's background should also match the technology that applicants are pursuing. For example, biologists are likely better suited for patent applications directed to biotechnology whereas engineers are likely better suited for electro-mechanical devices.
3. Cost - The practitioner's rates must fit within the applicant's budget. Larger firms typically charge more to cover their substantial overhead. Smaller firms have better control over their overhead, which typically allows them to charge less. For example, as a fifth year associate at a medium to large firm in New York City my billable rate was near $400 per hour. When I transferred to a smaller firm in the same city, my billable rate went down to $250 per hour. I have seen practitioners charge as low as $100 per hour and as high as $500 per hour. There are also firms that offer services at a flat rate. Note, the hourly rate varies based on the practitioner's level of experience as well as other factors. Therefore, a higher hourly rate does not necessarily translate into a higher overall cost as senior practitioners typically require less time to complete a task as compared to their junior counterparts.
4. Recommendations as well as criticism from similarly situated peers should be taken into consideration.
As I hinted above, I have had a lot of experience fixing patent applications that were mishandled by others. In most of these instances, the owners of these applications could have avoided costly mistakes by simply doing their homework and asking tough questions before selecting a firm for their patent applications.
On a side note, there are a number of invention marketing/submission/promotion companies that offer inventors patent and marketing services for their invention. I haven't dealt with any personally, but I've heard that a number of them are unscrupulous to say the least. This is the way that the scam plays out. An inventor contacts the company for a consultation. The company tells the inventor that it is a great idea (regardless of the merits of the idea) and that they would like to market the invention for them. The inventor only has to pay the full cost of the patent application and the full cost for the company to submit the invention to each company. It is my understanding that few if any inventions are actually licensed to third parties. More information about these companies can be found here and here.
How can I be sure that I am not infringing someone's patent?
Defending against patent infringement can cost several millions of dollars. As a result, it is a prudent business strategy to perform a clearance search before investing any substantial amount of money in research and development for a new product. The clearance search is much like the prior art search, except that the focus for the clearance search lies on the claims of issued patents. That is, the claims of the issued patents are compared against the proposed product to determine if the product would infringe the patent. Additionally, a typical prior art search may run between 6-10 hours depending on the technology, whereas the amount of time necessary for a clearance search will likely be much more.
Just how much time one authorizes for a clearance search should be based on a sound business strategy. That is, the cost of the search must be weighed against the benefits and/or risks of spending more or less time on the search. For example, there is little benefit in spending $10,000 for a clearance search for a product that costs very little to bring to market and is expected to net less than $100,000. In this instance, having invested little in the product, the investor can simply abandon the product when confronted with an infringement claim. On the opposite end of the spectrum, it would be imprudent not to spend more than a nominal amount for the clearance search for a product that will cost millions to bring to market and is expected to net many millions.
Just how much time one authorizes for a clearance search should be based on a sound business strategy. That is, the cost of the search must be weighed against the benefits and/or risks of spending more or less time on the search. For example, there is little benefit in spending $10,000 for a clearance search for a product that costs very little to bring to market and is expected to net less than $100,000. In this instance, having invested little in the product, the investor can simply abandon the product when confronted with an infringement claim. On the opposite end of the spectrum, it would be imprudent not to spend more than a nominal amount for the clearance search for a product that will cost millions to bring to market and is expected to net many millions.
How do I know if someone is infringing my patent?
The most common type of infringement is direct infringement. For direct infringement, the patentee must show that the infringing party is either using, making, selling or offering to sell a product that infringes at least one of the claims of a patent either literally or under the doctrine of equivalents (DOE).
A product literally infringes when it exhibits all of the limitations of a claim. A wooden chair, for example, with four legs, a seating surface, and a seat back would literally infringe a patent that claims a wooden seating apparatus that includes at least four legs and a seating surface because the chair includes all of the limitations exactly as they are recited in the claim. A chair with three legs would not literally infringe because it does not include at least four legs and a metal chair would similarly not literally infringe because it is not wooden.
A product that does not literally infringe because it does not exhibit all of the limitations of a claim may nonetheless infringe under the DOE. Under the DOE the product exhibits an equivalent limitation in place of at least one of the claimed limitations. The patentee, however, cannot regain any subject matter that was disclaimed during prosecution. For instance, the three legged chair in the example above would not infringe under the DOE because three is not equivalent to four. The metal chair may infringe under the DOE if metal was used because metal has similar properties to wood. The metal chair would not infringe under the DOE if the metal limitation was added in an amendment to the claims during prosecution or if the applicant stated anywhere in the patent record that metal should not be used for the patented invention.
A product literally infringes when it exhibits all of the limitations of a claim. A wooden chair, for example, with four legs, a seating surface, and a seat back would literally infringe a patent that claims a wooden seating apparatus that includes at least four legs and a seating surface because the chair includes all of the limitations exactly as they are recited in the claim. A chair with three legs would not literally infringe because it does not include at least four legs and a metal chair would similarly not literally infringe because it is not wooden.
A product that does not literally infringe because it does not exhibit all of the limitations of a claim may nonetheless infringe under the DOE. Under the DOE the product exhibits an equivalent limitation in place of at least one of the claimed limitations. The patentee, however, cannot regain any subject matter that was disclaimed during prosecution. For instance, the three legged chair in the example above would not infringe under the DOE because three is not equivalent to four. The metal chair may infringe under the DOE if metal was used because metal has similar properties to wood. The metal chair would not infringe under the DOE if the metal limitation was added in an amendment to the claims during prosecution or if the applicant stated anywhere in the patent record that metal should not be used for the patented invention.
What happens after I receive a notice of allowance?
A notice of allowance is a document that the Patent Office communicates to the applicant when it is satisfied that the patent application complies with the applicable Patent Laws and Rules. The notice of allowance marks the close of prosecution and the applicant will have to pay the issue fee for the patent to grant. An applicant can only file a continuing application that claims the benefit of a prior filed patent application while the prior filed application is pending. This means that the applicant will have to file any divisional, continuation, or continuation in part applications for any unclaimed inventions before the prior filed application issues. Any subject matter that is not claimed will be deemed dedicated to the public. As a result, the applicant should review the application after the notice of allowance to determine if there are any claims that were cancelled during prosecution or if there is any unclaimed subject matter that the applicant may want to pursue in a divisional or continuation application. Applicants should consider filing a continuation application even if there aren't any claims apparent to the applicant at the time worthy of another application. Doing so provides applicants with the flexibility of filing claims in the future directed toward a competing product that may not necessarily infringe the claims of the prior filed patent application.
Is my invention patentable?
A patent application will be examined to ensure that it complies with the patent laws and rules before it can issue as a patent. The most commonly cited laws in rejections from the Patent Office are 35 U.S.C. 101, 102, and 103.
35 U.S.C. 101 - Under section 101, the claimed invention must be "a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." This rule is rarely ever cited by the Patent Office as a basis for a rejection outside of the software and business method classes of patents. As of this writing, software and business methods are still patentable provided they are tied to a particular machine or are transformative.
35 U.S.C. 102 - Under section 102, the claimed invention must be novel. An invention can be rejected under section 102 if the Patent Office can show that there exists a single prior art reference that discloses the invention either expressly or inherently exactly as it is recited in the claims. For example, assuming that the claims of an application recite a device that includes the elements A, B, and C. a rejection under 102 is proper in this instance if the Office can show all of the elements A, B, and C are disclosed in a single prior art reference.
35 U.S.C. 103 - Under section 103, the claimed invention must not be obvious. An invention is obvious under section 103 if the Patent Office can show that at least two prior art reference disclose every element of the claimed invention and also a motivation to combine the references. With regard to the example above, a rejection under 103 is proper if the Office can show that all of the elements A, B, and C, and the motivation are disclosed in at least two prior art references. If the Patent Office makes the requisite showing, applicants can submit evidence of unobviousness, such as unexpected results, commercial success, long felt but unresolved need, copying by competitors, etc.
The requirements for patentability are discussed in MPEP chapter 700.
35 U.S.C. 101 - Under section 101, the claimed invention must be "a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." This rule is rarely ever cited by the Patent Office as a basis for a rejection outside of the software and business method classes of patents. As of this writing, software and business methods are still patentable provided they are tied to a particular machine or are transformative.
35 U.S.C. 102 - Under section 102, the claimed invention must be novel. An invention can be rejected under section 102 if the Patent Office can show that there exists a single prior art reference that discloses the invention either expressly or inherently exactly as it is recited in the claims. For example, assuming that the claims of an application recite a device that includes the elements A, B, and C. a rejection under 102 is proper in this instance if the Office can show all of the elements A, B, and C are disclosed in a single prior art reference.
35 U.S.C. 103 - Under section 103, the claimed invention must not be obvious. An invention is obvious under section 103 if the Patent Office can show that at least two prior art reference disclose every element of the claimed invention and also a motivation to combine the references. With regard to the example above, a rejection under 103 is proper if the Office can show that all of the elements A, B, and C, and the motivation are disclosed in at least two prior art references. If the Patent Office makes the requisite showing, applicants can submit evidence of unobviousness, such as unexpected results, commercial success, long felt but unresolved need, copying by competitors, etc.
The requirements for patentability are discussed in MPEP chapter 700.
How much is it going to cost to get a patent?
It shouldn't surprise anyone to hear that it is not inexpensive to get a patent. A general understanding of the work necessary to get a patent will help applicants appreciate the effort that goes into the cost while also allowing applicants to take steps to minimize the cost. Costs will generally be incurred at three distinct times in the life of a patent: during 1) preparation and filing, 2) prosecution, and 3) post allowance.
1) Preparation and filing
The preparation and filing stage is probably the most labor intensive and therefore the most expensive. The amount of work will vary depending on the complexity of the invention. Generally, the greater the complexity of the invention, the greater the amount of work that has to go into drafting the patent application. I typically budget between 30 to 40 hours to draft a utility patent application. At an average of $300 per hour** that comes to $9,000 to $12,000 not including the filing fees. The cost of a provisional patent application varies considerably depending on how much work that applicants require. Filing an invention disclosure prepared by the client after brief review by the attorney for obvious faults as the provisional application should cost no more than $1000. You may opt for a prior art search before you file any application, which can add between $500 and $1,000 to the total cost of the patent. There is an increasing trend for flat fee services, but the cost shouldn't differ significantly. At this time, the filing fee for a provisional is $110 and for the utility begins at $545 for a small entity. A schedule of the Patent Office fees can be found online here.
One way to lower the cost at this stage is for the applicant to perform his or her own preliminary prior art search. If the applicant identifies relevant art that would stand in the way of getting a patent, the applicant may decide to abandon the venture before any additional effort is expended.
Another significant way to reduce the cost is to reduce the amount of time necessary for the patent attorney to draft the application. This can be accomplished by providing the attorney with a full disclosure that clearly identifies the invention so that the attorney can limit the need to use outside references to draft the patent application. For instance, one of the most time consuming patent applications that I drafted started from an invention disclosure that was no more than a broad concept written on a napkin. In that instance, I spent a considerable amount of time researching the subject matter before I could even begin drafting the patent application. On the other end of the spectrum, a client that provides an attorney with a large disclosure without a clear indication of the subject matter that the client considers the invention will incur fees for the attorney to sift through potentially irrelevant information to get to the invention. Companies that file patent applications regularly use invention disclosure forms that prompt the inventor for only the information necessary for the attorney to draft the patent application. Finally, limiting the number of claims in a patent application will also reduce attorney time and Patent Office fees. These measures can save as much as 10 attorney hours.
The attorney rate is often the first variable that applicants attempt to minimize. This, however, may actually cost more in the long run, but that will be the subject of another post.
2) Prosecution
Some time after a patent application is filed, usually within 18 months, the Patent Office will examine the application to determine whether or not the application complies with the Patent Laws and Rules. Examination includes a prior art search the results of which are communicated to the applicant in a document referred to as an office action. The office action typically includes at least one prior art based rejection, which must be overcome in order for the patent to issue. The time necessary to respond to an office action will vary depending on how familiar the attorney is with the application, the number of references cited, the number of claims rejected, and the complexity of the invention and/or the rejection. Expect at least 8 hours for a fairly simple response to about 16 hours for an average response. At $300 per hour, expect to pay between $2,500 and $5,000 or more. If the Office is not convinced by the applicant's reply, it will issue another office action that must similarly be replied to. Applicants may receive multiple office actions in an application until the Office is satisfied or until the applicant abandons the application. The Office charges fees during prosecution that are not insubstantial. Overall, expect the cost of prosecution to be about that for preparing the patent application.
There are several ways to reduce the cost of prosecution similar to those discussed above. For example, applicants may want to review the prior art and determine if is as relevant as the Patent Office asserts. Applicants may also identify for the attorney the important differences between the invention and the prior art so that the attorney does not waste time arguing elements of the invention that are not as important to the applicant. The most significant factor, however, is to reduce the number of office actions in an application. This can only be accomplished with a quality set of claims that clearly distinguish the applicant's invention from the prior art without unnecessarily limiting the scope of the invention.
3) Post allowance
Post allowance is typically the least time consuming from the attorney's perspective. Expect to pay about $1000 in attorney or paralegal fees to prepare the documents for the patent to issue. The Patent Office charges issue fees and periodic maintenance fees.
** Note, the hourly rate and the general costs of the items discussed herein are merely estimates that will likely be repeated to you by at least one attorney when your are interviewing them for your patent application. That is not to say that you will not be able to find a professional to provide these services for less. I find that there are a number of solo practitioners that are willing to work with inventors at a reduced rate and/or under non-traditional fee agreements.
1) Preparation and filing
The preparation and filing stage is probably the most labor intensive and therefore the most expensive. The amount of work will vary depending on the complexity of the invention. Generally, the greater the complexity of the invention, the greater the amount of work that has to go into drafting the patent application. I typically budget between 30 to 40 hours to draft a utility patent application. At an average of $300 per hour** that comes to $9,000 to $12,000 not including the filing fees. The cost of a provisional patent application varies considerably depending on how much work that applicants require. Filing an invention disclosure prepared by the client after brief review by the attorney for obvious faults as the provisional application should cost no more than $1000. You may opt for a prior art search before you file any application, which can add between $500 and $1,000 to the total cost of the patent. There is an increasing trend for flat fee services, but the cost shouldn't differ significantly. At this time, the filing fee for a provisional is $110 and for the utility begins at $545 for a small entity. A schedule of the Patent Office fees can be found online here.
One way to lower the cost at this stage is for the applicant to perform his or her own preliminary prior art search. If the applicant identifies relevant art that would stand in the way of getting a patent, the applicant may decide to abandon the venture before any additional effort is expended.
Another significant way to reduce the cost is to reduce the amount of time necessary for the patent attorney to draft the application. This can be accomplished by providing the attorney with a full disclosure that clearly identifies the invention so that the attorney can limit the need to use outside references to draft the patent application. For instance, one of the most time consuming patent applications that I drafted started from an invention disclosure that was no more than a broad concept written on a napkin. In that instance, I spent a considerable amount of time researching the subject matter before I could even begin drafting the patent application. On the other end of the spectrum, a client that provides an attorney with a large disclosure without a clear indication of the subject matter that the client considers the invention will incur fees for the attorney to sift through potentially irrelevant information to get to the invention. Companies that file patent applications regularly use invention disclosure forms that prompt the inventor for only the information necessary for the attorney to draft the patent application. Finally, limiting the number of claims in a patent application will also reduce attorney time and Patent Office fees. These measures can save as much as 10 attorney hours.
The attorney rate is often the first variable that applicants attempt to minimize. This, however, may actually cost more in the long run, but that will be the subject of another post.
2) Prosecution
Some time after a patent application is filed, usually within 18 months, the Patent Office will examine the application to determine whether or not the application complies with the Patent Laws and Rules. Examination includes a prior art search the results of which are communicated to the applicant in a document referred to as an office action. The office action typically includes at least one prior art based rejection, which must be overcome in order for the patent to issue. The time necessary to respond to an office action will vary depending on how familiar the attorney is with the application, the number of references cited, the number of claims rejected, and the complexity of the invention and/or the rejection. Expect at least 8 hours for a fairly simple response to about 16 hours for an average response. At $300 per hour, expect to pay between $2,500 and $5,000 or more. If the Office is not convinced by the applicant's reply, it will issue another office action that must similarly be replied to. Applicants may receive multiple office actions in an application until the Office is satisfied or until the applicant abandons the application. The Office charges fees during prosecution that are not insubstantial. Overall, expect the cost of prosecution to be about that for preparing the patent application.
There are several ways to reduce the cost of prosecution similar to those discussed above. For example, applicants may want to review the prior art and determine if is as relevant as the Patent Office asserts. Applicants may also identify for the attorney the important differences between the invention and the prior art so that the attorney does not waste time arguing elements of the invention that are not as important to the applicant. The most significant factor, however, is to reduce the number of office actions in an application. This can only be accomplished with a quality set of claims that clearly distinguish the applicant's invention from the prior art without unnecessarily limiting the scope of the invention.
3) Post allowance
Post allowance is typically the least time consuming from the attorney's perspective. Expect to pay about $1000 in attorney or paralegal fees to prepare the documents for the patent to issue. The Patent Office charges issue fees and periodic maintenance fees.
** Note, the hourly rate and the general costs of the items discussed herein are merely estimates that will likely be repeated to you by at least one attorney when your are interviewing them for your patent application. That is not to say that you will not be able to find a professional to provide these services for less. I find that there are a number of solo practitioners that are willing to work with inventors at a reduced rate and/or under non-traditional fee agreements.
What if I want to file in a country outside the U.S.?
The U.S. has entered into treaties with almost every industrialized country, which allow U.S. applicants to file patent applications with the party nations within 12 months of the earliest U.S. filing date and get the benefit of the U.S. filing date. In addition, the U.S. is a party to the Patent Cooperation Treaty (PCT), which allows applicants to file a single international application within 12 months of the earliest U.S. filing date and also get the benefit from an U.S. filing date. The applicant, however, will have to file the international or PCT application nationally in select countries within 30 or 31 months from the earliest filing date. Although PCT applications are examined and applicants are able to amend the application before entering the national stage, PCT applications do not grant. Rather, each national patent application must be prosecuted individually. The European Patent Convention (EPC) similarly allows applicants to file a single patent application within 12 months or 31 months when entering with the PCT application of the earliest filing date. Unlike the PCT application, however, the European patent application is prosecuted at the European level and later registered in the elected countries after the grant. The most important thing to remember about foreign filing is that missing a filing deadline likely results in a loss of foreign patent rights.
The costs associated with foreign patents vary, but as a rule of thumb expect the PCT application to cost about $5,000 and each national filing will be approximately $5,000 each for English speaking countries and $10,000 for non-English speaking countries. The EU is an additional $10,000. Applicants will likely pay at least the same amount to prosecute applications in each country or region. The cost for filing foreign patent applications consists mostly of patent office fees. Therefore, there is little that can be saved by shopping around for the least expensive agent. Bigger savings can be realized in prosecution by using strategies similar to those for the U.S. Of course the most prudent strategy is to limit foreign filing to only those countries where it makes good business sense to do so.
The costs associated with foreign patents vary, but as a rule of thumb expect the PCT application to cost about $5,000 and each national filing will be approximately $5,000 each for English speaking countries and $10,000 for non-English speaking countries. The EU is an additional $10,000. Applicants will likely pay at least the same amount to prosecute applications in each country or region. The cost for filing foreign patent applications consists mostly of patent office fees. Therefore, there is little that can be saved by shopping around for the least expensive agent. Bigger savings can be realized in prosecution by using strategies similar to those for the U.S. Of course the most prudent strategy is to limit foreign filing to only those countries where it makes good business sense to do so.
How long is it going to take to get a patent?
Unfortunately, there is no standard amount of time that it takes to get a patent application to issue. There are many variables, such as the particular class that the invention falls into and the examiner that has been assigned the application, that dictate how long it takes a patent application to be examined. The patent office has set a few self imposed time limits though. For instance, the Patent Office tries to get a first office action out to the applicant within 18 months from the filing date of the application. The Patent Office also wants examiners to respond to applicants communications within 6 months and for patent applications to issue if at all within 3 years from the filing date. In many classes, the Patent Office does a good job issuing patents within 2 to 3 years from the filing date. In some popular classes, however, this time frame is nothing more than wishful thinking. I have worked on many applications that didn't receive the first office action within 5 years and were still pending for nearly 7 years after the filing date. Luckily, the Patent Office rules give applicants an extension of time on the term of their patent for any delays caused by the Patent Office. Of course, any delays that are the applicants fault, such as extensions of time and requests for continued examination (RCEs), are subtracted from the extension. Accordingly, applicants should plan for a compact prosecution that limits these types of delays in order to maximize the term of their patent.
What to expect after filing an application.
After an inventor decides that he or she wants or needs to file a patent, the inventor will you need to determine what type of patent to file. The three most popular are: provisional, utility, and design. Utility and design applications are the only ones from these three that will be examined by the Patent Office. Examination means that the examiner assigned to the application performs a prior art search and prepares an office action informing the applicant of the results. The first office action is non-final and it typically includes at least one rejection. Applicants shouldn't be alarmed with the thought of a rejection. They are very common especially in certain art units (business methods/biotech). Even though the application is rejected, it is still pending. Applicants do not need to file another application. Applicants must, however, reply to the office action. The reply is the device that applicants and their attorney use to convince the examiner to allow the patent. After the examiner considers the reply, he will either issue another non-final office action, a final office action, or a notice of allowance, depending on the substance of the reply. With a non-final office action prosecution is still open, which means that applicants can file another reply. With a final office action and a notice of allowance, however, prosecution is closed and the applicant's ability to continue prosecuting the application is limited. When prosecution is closed, applicants can file a reply to the final office action, a notice of appeal, and/or a request to reopen prosecution (RCE). Prosecution may be reopened more than once, but I prefer not to file any RCEs except in a few instances. The process repeats itself until either the Office issues a notice of allowance or the applicant abandons the application. Applicants can file a continuing application (continuation, divisional, or continuation in part) at any time while the parent application is still pending.
Should I outsource my patent work?
Over the past few years, it has become fairly popular for individuals and law firms to outsource some of their legal work to foreign countries. The major factor in doing so of course is the lower cost of services. The savings can be substantial, for example, in a large document review project. On a much smaller scale, however, such as a prior art search or a patent application, any savings are marginal. To determine the cost savings for an employer, I contacted a foreign firm and a pair of domestic firms a number of years ago, and I asked them for a quote to perform a prior art search and to prepare a patent application on the same subject matter. For the prior art search, the foreign firm quoted $600 whereas one of the domestic firm quoted $800. For the patent application the foreign firm quoted $3,000 while the other domestic firm quoted $10,000 (typical for NYC firm)**. The foreign firm could not file the patent application; the domestic firm would have to handle the filing for $1,500. Additionally, many are not aware that technology export restrictions may apply, which would require clearance from the Bureau of Industry and Security (BIS) at the Department of Commerce before the invention could be communicated to the foreign firm. Failure to get the necessary clearance could compromise the enforceability of the patent. It became apparent that any savings gained using the foreign firm would be wiped out quickly by the cost and effort to acquire the export license.
Here is the federal register notice from the U.S. Patent Office regarding patent outsourcing:
http://www.uspto.gov/web/
**Click here to find out more of what it will cost to get a patent.
Here is the federal register notice from the U.S. Patent Office regarding patent outsourcing:
http://www.uspto.gov/web/
**Click here to find out more of what it will cost to get a patent.
How do I file a patent application?
I always advocate that inventors file a provisional application on their own if they feel comfortable to do so before they commit to the utility application. This gives them 12 months to market their invention to determine if it has legs before the spend money on the more expensive utility application. That being said, there are filing requirements that must be followed in order for the mailing date to be deemed the application filing date.
Generally, the date an item is filed with the patent office is the day that it is received. You can and should take advantage of the benefits of using express mail to file your applications. When you use express mail, your filing date becomes the date on your express mail receipt, i.e., the day you mail it. I've never filed an application without express mail, but I suspect it could take a week or two for the patent office to stamp your application received. If you chose the mail route, include a return postcard with a list of the items included in the envelope and the number of pages for each item. The patent office will return the postcard with a stamp indicating that they received all of the items, which serves as proof in the not so rare instance that the patent office loses your application. By far, the best way to file an application is electronically. There is no cost for filing electronically, you can pay the fees using credit card online, and you get your filing receipt instantly!
When you file a provisional patent application you will have to include a Provisional Patent Application Cover Sheet. Utility applications require a Utility Patent Application Transmittal and a Declaration of Invention. Failure to use these form may result in the Patent Office treating the application as incomplete and it will send the applicant a notice to correct the deficiencies usually with an extra fee. When filing a utiltiy application it is also helpful in determining the proper fee that needs to be paid by using a Fee Transmittal Form. The Patent Office provides the Provisional Application Cover Sheet SB-16, Utility Transmittal SB-05, as well as many other forms, online here. The fee may be paid at the time of filing of either the provisional or the utility application. If the fee is not paid, the application will be considered incomplete and the applicant will receive a similar notice to correct the deficiency. If, however, the application being filed in the U.S. is a National Stage Application of an International PCT Application, the fee must be paid when the National Application is filed or the application will be deemed abandoned.
Generally, the date an item is filed with the patent office is the day that it is received. You can and should take advantage of the benefits of using express mail to file your applications. When you use express mail, your filing date becomes the date on your express mail receipt, i.e., the day you mail it. I've never filed an application without express mail, but I suspect it could take a week or two for the patent office to stamp your application received. If you chose the mail route, include a return postcard with a list of the items included in the envelope and the number of pages for each item. The patent office will return the postcard with a stamp indicating that they received all of the items, which serves as proof in the not so rare instance that the patent office loses your application. By far, the best way to file an application is electronically. There is no cost for filing electronically, you can pay the fees using credit card online, and you get your filing receipt instantly!
When you file a provisional patent application you will have to include a Provisional Patent Application Cover Sheet. Utility applications require a Utility Patent Application Transmittal and a Declaration of Invention. Failure to use these form may result in the Patent Office treating the application as incomplete and it will send the applicant a notice to correct the deficiencies usually with an extra fee. When filing a utiltiy application it is also helpful in determining the proper fee that needs to be paid by using a Fee Transmittal Form. The Patent Office provides the Provisional Application Cover Sheet SB-16, Utility Transmittal SB-05, as well as many other forms, online here. The fee may be paid at the time of filing of either the provisional or the utility application. If the fee is not paid, the application will be considered incomplete and the applicant will receive a similar notice to correct the deficiency. If, however, the application being filed in the U.S. is a National Stage Application of an International PCT Application, the fee must be paid when the National Application is filed or the application will be deemed abandoned.
Can I prepare my own patent application?
If you have some technical writing experience you most certainly can prepare your own application! The most popular types of applications are: provisional, utility, and design. Provisional applications are not examined whereas utility and design applications are examined. This difference means that it is much simpler to file a provisional application on your own than the utility and design applications. Primarily, the provisional application must contain an enabling disclosure and one that will properly support meaningful claims in the utility application to follow. To satisfy these requirements, applicants should describe the invention fully and include as many drawings of the invention as practical. The description should include a discussion of the manner in which the invention will be used and the interaction between the components of the invention. Also describe as many variations of the design as possible. The many formal requirements for the utility and design applications make them much more difficult to file on your own, but not impossible. Luckily the Patent Office has put together a reference manual that contains all of the requirements for each in a individual chapters. Expect to put in a considerable amount of time into drafting your patent. Most experienced drafters spend between 30 and 40 hours on most of the applications that they draft.
If you decide to file your own application, you should have an attorney look over the specification and the claims that you prepare. Doing so can actually save money in the long run. For instance, I recently did some work for an inventor that wrote his own application. The specification was really very good, but the claims did not follow many formal requirements. As a result, the inventor received rejections and incurred fees that could have been avoided had the inventor contacted an attorney to review the application before it was filed. Incidentally the fees paid to the Patent Office cost more than the fee that I would have charged for the review.
If you decide to file your own application, you should have an attorney look over the specification and the claims that you prepare. Doing so can actually save money in the long run. For instance, I recently did some work for an inventor that wrote his own application. The specification was really very good, but the claims did not follow many formal requirements. As a result, the inventor received rejections and incurred fees that could have been avoided had the inventor contacted an attorney to review the application before it was filed. Incidentally the fees paid to the Patent Office cost more than the fee that I would have charged for the review.
Do I need a prior art search?
A prior art search is not a prerequisite to filing a patent application. The Patent Office will conduct a prior art search as a part of the examination process. Notwithstanding, inventors should and often opt for a prior art search before they invest any substantial amount of money filing their patent application. At a minimum, inventors should perform a preliminary prior art search on their own using one of the free patent databases available, such as Google Patents and FreePatentsOnline. The preliminary search should also include an Internet search for similar products. Inventors that are not comfortable performing their own search can turn to a search professional that can perform the search them starting at around $500.
When should I file a utility patent application?
For most inventors, the primary benefit of filing a provisional patent application is that it delays the cost associated with a utility patent application for up to 12 months. Unfortunately, this also delays the grant of the patent. There are instances, however, when it is better for the patent to grant earlier than later. This is particularly true for items, such as toys, consumer electronics, and software, that tend to peak early soon after their introduction. In these instances, it may make better business sense to file a utility patent application as soon as it is practical after filing the provisional application or to skip the provisional patent altogether in order to maximize the benefit of the limited monopoly that a patent provides.
What type of patents can I file?
The most popular types of applications are: provisional, utility, and design. The provisional application is the least expensive. There are very few formalities, which makes it the most appropriate for inventors to file on their own. Provisional applications are not examined and they must be converted into a utility application within 12 months of the filing of the provisional. A utility application protects the functional aspects of an invention. In contrast, design applications protect the ornamental features of the invention. Once granted, utility patents have a twenty year term that begins to run from the day that the utility is filed whereas design patents have a fourteen year term that begins to run from the day the design issues.
When should I file a patent application?
There are clear advantages to filing a patent application as soon as one is capable of doing so. For instance, the U.S. has a first to invent patent system. What this means is that the applicant entitled to a patent is the first to conceive of the subject matter of a patent application. Absent any evidence to the contrary, the Patent Office presumes that the date of the invention is the filing date of the application. Therefore, the patent application may be rejected over an earlier filed patent, even if the applicant invented before the earlier filed patent. Applicants can submit evidence of an earlier date of conception, but this procedure is not available all of the time and doing so adds to the complexity and consequently the cost of the patent. Similarly, most countries have a statutory bar that prevents applicants from getting a patent if the invention is disclosed publicly before the filing of the application. The U.S. and Canada are the only two countries that I am aware of that give applicants a twelve month grace period to file their application.
The practical reality, however, is that not every applicant can file their patent application immediately. That being said, there are ways for an applicant to limit the risks associated with waiting. The first and least expensive way is not to disclose an invention to anyone unless the receiving party is bound by a confidentiality agreement. The confidentiality agreement, however, will not prevent loss of rights if the receiving party discloses the invention to someone that is not bound by the agreement. The next least expensive way to limit the risk of waiting is to take advantage of provisional patent applications. Provisional applications have a relatively inexpensive filing fee, they are not examined, and there are few formalities, which makes them the most appropriate for pro se applicants to file on their own. Of course, applicants should always maintain a notebook record of their invention in the event that it is necessary to prove an earlier date of invention.
The practical reality, however, is that not every applicant can file their patent application immediately. That being said, there are ways for an applicant to limit the risks associated with waiting. The first and least expensive way is not to disclose an invention to anyone unless the receiving party is bound by a confidentiality agreement. The confidentiality agreement, however, will not prevent loss of rights if the receiving party discloses the invention to someone that is not bound by the agreement. The next least expensive way to limit the risk of waiting is to take advantage of provisional patent applications. Provisional applications have a relatively inexpensive filing fee, they are not examined, and there are few formalities, which makes them the most appropriate for pro se applicants to file on their own. Of course, applicants should always maintain a notebook record of their invention in the event that it is necessary to prove an earlier date of invention.
I have an idea. Now what?
So you have an idea for a product and you think it is going to be the next big thing. The product may very well have the potential of being the next big thing, but it won't unless you put in the effort necessary to bring the product to market. You can accomplish this by either licensing your idea to someone that produces the item or you can produce the item yourself. Regardless, you will need to develop a business plan that takes into account the costs of and the potential revenue that may be derived from your venture. The business plan should also include a sound strategy for developing your intellectual property, which can be your venture's most important asset. The main focus often is on the patents, but there are other types of intellectual property that may be more appropriate or that may be used in conjunction with patents to maximize the value of the venture.
The types of intellectual property available include patents, trade secrets, trademarks, and copyrights. Patents protect a "process, machine, manufacture, or composition of matter". Trade secrets protect confidential information, including formulas, practices, processes, and compilations of information. Trademarks protect names to the extent that the names identify the source of a product or service and copyrights protect original works of authorship.
To better visualize the differences between these types of intellectual property, assume that your product is a new soft drink that you will market under the name So-Drink. The composition and the process for producing the soft drink may be protected by either patents or trade secrets. The name, So-Drink, the shape of the bottle, slogans, and logos can be protected by trademarks. The name, bottle, slogans, logos, web pages, marketing material, etc., may be copyright protected as well. In this instance, it would be best to develop as much of the intellectual property as the venture's budget allows.
Not surprisingly, the cost necessary to develop intellectual property is a primary concern for most start-ups. In terms of overall costs, patents are probably the most expensive right to develop. There are, however, steps that you can take to lower the overall cost and to spread the cost over a longer period of time. For example, you can maintain certain aspects of the product as a trade secret before filing a patent application. Doing so, however, is not without substantial risk. Taking advantage of provisional patent applications can also reduce your initial outlay and delay the cost of the utility application for twelve months. There are few formal requirements for provisional applications and they do not get examined, which makes them the most appropriate patent applications for pro se applicants to file themselves. Utility applications are examined and they have many formal requirements, which means that most applicants will have to consult with an attorney at some point. Because utility applications are limited by the initial disclosure, it is best if applicants consult with an attorney before filing the utility application in order to avoid costly mistakes.
The types of intellectual property available include patents, trade secrets, trademarks, and copyrights. Patents protect a "process, machine, manufacture, or composition of matter". Trade secrets protect confidential information, including formulas, practices, processes, and compilations of information. Trademarks protect names to the extent that the names identify the source of a product or service and copyrights protect original works of authorship.
To better visualize the differences between these types of intellectual property, assume that your product is a new soft drink that you will market under the name So-Drink. The composition and the process for producing the soft drink may be protected by either patents or trade secrets. The name, So-Drink, the shape of the bottle, slogans, and logos can be protected by trademarks. The name, bottle, slogans, logos, web pages, marketing material, etc., may be copyright protected as well. In this instance, it would be best to develop as much of the intellectual property as the venture's budget allows.
Not surprisingly, the cost necessary to develop intellectual property is a primary concern for most start-ups. In terms of overall costs, patents are probably the most expensive right to develop. There are, however, steps that you can take to lower the overall cost and to spread the cost over a longer period of time. For example, you can maintain certain aspects of the product as a trade secret before filing a patent application. Doing so, however, is not without substantial risk. Taking advantage of provisional patent applications can also reduce your initial outlay and delay the cost of the utility application for twelve months. There are few formal requirements for provisional applications and they do not get examined, which makes them the most appropriate patent applications for pro se applicants to file themselves. Utility applications are examined and they have many formal requirements, which means that most applicants will have to consult with an attorney at some point. Because utility applications are limited by the initial disclosure, it is best if applicants consult with an attorney before filing the utility application in order to avoid costly mistakes.
Trademark Primer - Chose your marks wisely.
I had a meeting recently with a client about the strength of their marks and I thought I would share. In a nutshell, trademarks are words or phrases that identify the source of a product or service. In terms of strength, their are five levels of marks ordered in order of their strength, strongest first: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Fanciful marks are made up names, such as Kodak. Arbitrary are unrelated words applied to a product, such as Apple for computers. Suggestive marks require an additional mental step to make the connection with the product, such as Coppertone for sun tan lotion. Descriptive marks, as the name applies, describes the product, e.g., qwerty for keyboards. Generic marks are words that become synonymous with a product, such as thermos. 1, 2, and 3 are enforceable marks. 4 can only be enforced if secondary meaning can be established. Basically you have to show that consumers associate the descriptive mark with your product. Generic marks get no protection.
There are trademark rights under both state and federal laws. With state laws your rights mature when you use the mark in commerce. Federal law requires use in commerce and registration with the Patent Office. There are also what are called intent to use applications that don't require actual use in commerce as a prerequisite to federal filing. Federal trademarks provide national protection whereas state trademark protection is limited. Federal protection cannot preempt prior use of the mark. In these instances the prior user will be able to continue using the mark within the relevant territory.
There are trademark rights under both state and federal laws. With state laws your rights mature when you use the mark in commerce. Federal law requires use in commerce and registration with the Patent Office. There are also what are called intent to use applications that don't require actual use in commerce as a prerequisite to federal filing. Federal trademarks provide national protection whereas state trademark protection is limited. Federal protection cannot preempt prior use of the mark. In these instances the prior user will be able to continue using the mark within the relevant territory.
Freqeuntly Asked Questions
1) I have an idea. Now what?
2) When should I file a patent?
3) What type of patents can I file?
4) When should I file a utility patent application?
5) Do I need a prior art search?
6) Can I prepare my own patent application?
7) How do I file a patent application?
8) Should I outsource?
9) What happens after I file a patent application?
10) How long is it going to take to get a patent?
11) What if I want to file a patent application in a country outside the U.S.?
12) How much is it going to cost to get a patent?
13) Is my invention patentable?
14) What happens after I receive a notice of allowance?
15) How do I know if someone is infringing my patent?
16) How can I be sure that I am not infringing someone's patent?
17) How do I choose a patent attorney or agent?
Send me an email with any questions that need/should be added to this list.
2) When should I file a patent?
3) What type of patents can I file?
4) When should I file a utility patent application?
5) Do I need a prior art search?
6) Can I prepare my own patent application?
7) How do I file a patent application?
8) Should I outsource?
9) What happens after I file a patent application?
10) How long is it going to take to get a patent?
11) What if I want to file a patent application in a country outside the U.S.?
12) How much is it going to cost to get a patent?
13) Is my invention patentable?
14) What happens after I receive a notice of allowance?
15) How do I know if someone is infringing my patent?
16) How can I be sure that I am not infringing someone's patent?
17) How do I choose a patent attorney or agent?
Send me an email with any questions that need/should be added to this list.
