Patents
Overview of the Process for Obtaining a U.S. or Foreign Utility Patent
In order for the independent inventor to realize any financial return within the U.S. on his/her new, useful, nonobvious and heretofore confidential invention, the inventor usually must apply for and acquire the U.S. utility patent rights for the invention. These rights include a cause of action that, for the life of the patent, allows the inventor to go into a federal court and prevent others in the U.S. from making, using, importing, selling, and offering to sell the invention.
In return for these rights, the inventor must contribute to the U.S. knowledge base by filing with the U.S. Patent & Trademark Office (USPTO) a confidential, legally complex and carefully drafted application for these rights (Note: This is why the invention must, except for a few types of specifically allowable disclosures {e.g., a foreigner’s filing of a patent application in their native land less than one year prior to the filing of the U.S. patent application}, be kept confidential until the patent application is filed). The application must: (1) reveal to one skilled in the technology of the invention how to make and practice the invention, (2) distinctly claim and define that which is patently novel in the invention, and (3) be judged by the USPTO to have met the statutory requirements for the invention’s patentability.
If these requirements are met and the applicant has paid the required fees, the USPTO will grant a patent to the inventor and make the application’s contents available to the public.
Confidential Invention Disclosure to the Patent Attorney
For the independent inventor, the legal and administrative complexity of the process for obtaining a U.S. utility (as opposed to a design {for the ornamental or visual shape of a product} or plant {for unique species of plants created through the use of cuttings and grafts}) patent usually requires the hiring of a patent attorney or agent. Thus, the inventor’s first step in this patent procurement process is to disclose confidentially to his/her patent attorney the background details of the invention. These details include explanations of: (a) exactly how the invention works, (b) what useful function or task the invention performs, (c) what, if any, problems are solved by the invention, (d) any advantages that the invention has over currently known technology, and (4) the circumstances associated with the conception of the invention.
Novelty Search
Because utility patent protection is only available for new, useful and nonobvious inventions, and because the legal expenses associated with applying for a patent can be large (i.e., $5,000 to greater than $15,000), it is often advisable to first make a relatively low-cost assessment as to whether it is likely that a patent will issue on the proposed invention. This involves investigating technology similar to the proposed invention to determine the state of the art in the area of the invention and what, if any, scope of patent protection may be available for the invention.
If the search reveals no prior disclosures (e.g., prior patents) of the proposed invention, it is likely that a patent may be obtained for the invention (depending on how broadly the invention is claimed {discussed below} and assuming the invention meets the other statutory requirements for patentability, including usefulness and non-obviousness). This situation will serve to justify incurring the greater expenses associated with preparing a formal patent application. Attempts are generally made to hold the costs for such a patentability search to a flat-rate of $1500. This arrangement is usually most cost efficient for the inventor as services costs usually exceed this price point. Factors included in the Novelty Search include time required to review for the invention, analyzing the complexity of the invention and the inventor’s disclosures and responses to our questionnaire, time required to draft a representative claim to the invention, and time for conducting the search and analysis.
Preparation and Filing of the Utility Patent Application
The patent application has two primary sections: the specification and the claims. The specification is essentially a detailed description of the invention, including drawings if necessary, showing what the invention does, how it works, and disclosing its advantages over prior art. The description of the invention must meet certain legal requirements, including that it: (a) be thorough enough to allow a person skilled in the invention’s field of technology to make and use the invention, (b) identify the invention’s best mode of operation, and (c) provide a basis for and explanation of the terminology that is used in the “claims” of a patent application.
The claims of the patent application provide the “legal description” of an invention. These take the form of carefully worded, legally structured sentences that vary in definitiveness, with each of these sentences attempting to distinctly define more closely than the others the patentable novelty of the invention. Thus, while one ideal claim might suffice, the patent application almost always contains 10 – 20 claims that range from broad ones (which define the invention with the fewest details possible) to narrow ones (which set forth in more detail the specific elements of the invention).
For the USPTO to examine a patent application, required filing, search & examination fees must be paid at the time the application is submitted. For a small entity (independent inventors and small businesses {<500 employees}) inventor, these fees, as of June 2013, are $800.00, which is half of the fee paid by the larger, non-small-entity applicants.
Since the implementation of GATT in the U.S. in 1995, an alternative to the standard patent application has come into existence – the provisional patent application (PPA) – but beware, this is an application in name only because it will never be examined and, by itself, lead to the granting of any patent to its filer – it’s only benefit to the inventor is that it provides a possible early filing date and allows the inventor to put a “Patent Pending” notice on the invention and in any written literature that refers to the invention. The PPA was created to help provide uniformity in the duration of U.S. patent protection that can be obtained by U.S. citizens as compared to that conceivably available to foreigners. For the inventor who has not yet reduced his/her invention to practice and therefore does not have an invention date, the filing of a PPA (which has a lower filing fee of $130 for small entities and essentially requires only the filing of the specification section) establishes such an invention date, provided that a regular patent application is filed within the next twelve months.
The Examination Process
After the patent application has been filed with the USPTO, a patent examiner carefully reviews the application in order to determine the invention’s patentability. The examination workload and staffing of the USPTO are such that this review will typically not start until 12 to 24 months after an application has been filed.
As a result of the American Inventors Protection Act of 1999 (AIPA), unless an applicant requests otherwise by filing and certifying that the invention has not and will not be the subject of an application filed in a foreign country, all patent applications are published eighteen months after the application’s filing date (or earlier upon request).
To be patentable, an invention essentially must be: (1) useful, (2) novel, and (3) nonobvious. The novelty requirement is often consider to be the threshold test for patentability. It generally is satisfied unless: (i) prior to the inventor’s invention or filing date, the invention was patented by another or published anywhere in the world by others or publicly known or used in the U.S. by others, or (ii) prior to one year before the filing date of the inventor’s patent application, it was in public use or on sale in the U.S. as a result of the acts of the inventor or others (Note: This effective one-year grace period for such acts of the inventor is unique to the U.S. patent laws; in foreign countries, such acts of the inventor would bar the inventor from obtaining a patent in their native land).
The probably more demanding, nonobviousness requirement is harder to objectively define. The typical way that an examiner shows obviousness is to cite a number of prior art references that, when combined as suggested by possibly another prior art reference, contain all of the elements of the applicant’s invention. The applicant generally challenges the logic of the combination and identifies certain secondary considerations that suggest that the invention was not obvious (e.g., long duration of well recognized need for the invention, prior unsuccessful efforts of others to develop such an invention, degree of commercial success of the invention).
When the examiner has made his/her initial patentability determination, the USPTO responds by sending the applicant what is known as an “Office Action” containing its determination and the reasons for it. If the Office Action contains a rejection of the claims (which occurs on the first Office Action > 90% of the time) and there exist arguable grounds for contesting the examiner’s determination, one typically files a “Response,” usually in the form of an Amendment to the application, to overcome the rejection. There are usually only two Office Actions and Responses before a final determination is made by the examiner as to the invention’s patentability. If this determination is detrimental to the applicant’s interests, it can be appealed — a time consuming and expensive process. (Typical legal fees for responding to Office Actions are $2,000 to $3,000, depending upon the complexity of the arguments that have to be made for the patent applicant).
Fees for the Issuance and Maintenance of the Patent
After the examiner has agreed to allow the application to issue as a patent, the small entity inventor presently must pay the USPTO a patent issuance & publication fee of $1,190, which is, in part, to pay for the expenses associated with preparing the application’s contents for publication. Periodically during the life of the patent (up to 20 years from the date of filing for those applications filed on or after 6/8/95), the inventor must pay USPTO maintenance fees in order to allow his/her patent rights to continue to be in effect . These come due at times that are measured from the patent’s date of issuance. Their amounts increase with time under the assumption that the inventor will realize greater profits on the invention the longer that it has been in existence. For the small entity inventor, these maintenance fees and their due dates are as of June 2013: @3.5 years: $800, @7.5 years: $1,800 and @11.5 years: $3,700.
Constructive Notice To Potential Infringers
Once a patent is granted, its number should be placed on the invention (i.e., U.S. Pat. No. 6,000,000) in order to give a potential infringer constructive notice of one’s patent rights. Otherwise, the patentee will only be able to recover damages from an infringer from the day the infringer had actual notice of his/her infringement, rather than from the day the patentee began marking the invention.
Foreign Patent Coverage
To obtain foreign patent coverage, within twelve months of filing a U.S. patent application (i.e., one’s priority date), one needs to start applying for his/her foreign patent rights, this typically includes:
i) Preparation and Filing of a PCT International Patent Application that is based on the U.S. application (Typical Legal Fee of around $2,000, Filing Fee of approximately $3,000, depending upon whether one designates the USPTO or some other authorized, foreign patent office for conducting a required international novelty search),
ii) Assuming that the results of this international search report are favorable and that a patent applicant actually wants the benefit of having what is expected to be a “favorable examination report” to use when beginning, at 30th month from one’s priority date, the expensive step of entering the “national stage” of this process and the filing of the required applications in the specific foreign countries where one is seeking foreign patent rights, before the end of the 22nd month from one’s priority date, one will want to exercise his/her option to have the PCT authorities perform a preliminary patentability examination; this requires the filing of the necessary papers to “Demand” such a preliminary patentability examination (Typical Legal Fee of around $1,500, assuming no Preliminary Amendment is necessary, with an Examination Filing Fee of around $600 to $2,500, depending upon whether the USPTO or some other authorized, foreign patent office performs this examination and currently listed currency exchange rates),
iii) With or without having filed a “Demand,” before the end of the 30th month from one’s priority date and assuming that the PCT preliminary examination report is favorable, one has to decide in which foreign jurisdictions he/she will actually file for national patent rights. The costs involved at this step include individual, national filing fees, possible translation costs, foreign patent agent filing fees, continuing legal fees for a U.S. patent attorney to supervise this work, and possible later fees involved with making any necessary amendments to the various foreign patent applications. These “national stage” fees are by far the most expensive step in this process, and it usually is suggested to postpone them until the 30th month in order to give the inventor the maximum possible period of time to assess the marketability of the invention so that he/she can better determine as to whether these final expenses can be cost-justified.
Larry Guffey
Patent Attorney
Tina Neuman
Senior Paralegal
What is a patent?
In the United States, a U.S. patent is a right granted by the U.S. Patent Office via an issued patent certificate in order for the owner to stop others from making, using, or selling an invention in the United States for a limited time period.
What if I only have an idea or a concept?
“Reducing your Invention to Practice”: The U.S. Patent Office requires you to have either: (1) a working prototype; or (2) a written description sufficient to allow someone familiar with the same field of technology to read the written description and to re-create your invention.
If you do not have any of the above two items, you need to get working on them. We may be able to provide assistance with this step of the process, but you will be billed for our consulting services at our pro-rata hourly rates in order to try and assist you with reducing your invention to practice.
What assistance can you provide while my invention is still just an idea?
I’m not sure if I want to move forward…can you still provide guidance?
What occurs in a Patent Consultation?
What can be patented?
Utility Patent: Covers inventions that are functional:
- Machines
- Articles of Manufacture- products
- Compositions of Matter (chemicals)
- Business Processes or Methods
- Improvements to Existing Products or Technology
Design Patent: Covers the shape, ornamental features, and appearance of useful objects.
Plant Patent: Covers asexually reproduced distinct and new variety of plant. (We do not handle these types of patent matters.)
How do I know if my invention can be patented?
How do I know if someone else has previously created my invention or if there are similar inventions that may prevent me from obtaining a patent?
Can I perform my own Novelty Search?
We encourage clients to investigate whether the invention or similar inventions exist and perform at least internet searching and in-person product searching in stores. Similar inventions, and inventions that are publicly sold or available, even products that may not necessarily have patent protection, may impact our assessment of whether your invention is likely to be granted patent protection. General internet searching, in addition to searching on the Google Patent Search Engine tool — https://patents.google.com is helpful and may provide some insight for your patent attorney. These actions are not a substitute for a specifically crafted Novelty Search conducted by a patent attorney, and we recommend that you consult a patent attorney before moving forward.
Key word searching is available on the U.S. Patent Office Database https://www.uspto.gov/patents-application-process/search-patents
Key word searching is an art, and a patent attorney will construct numerous key word searches to uncover information relevant to a potential patent matter. An inventor may conduct a preliminary search of these records as well, but you should be aware that a variety of terms exist that describe the same subject matter. Therefore, seeking legal assistance is recommended.
In addition to issued patents and pending applications, other materials such as literature (such as newspaper articles or research papers) or foreign patents and applications my also impact the patentability of an invention. An inventor should gather these materials for review by a patent attorney.
How long does an issued patent last?
Usually, utility patents are valid for a period of 20 years beginning from the filing date of the earliest filed application. After that time period, the patent will expire and it cannot be renewed. The invention then falls in the public domain for anyone to use.
Usually, design patents are valid for a period of 15 years from the issue date of the official patent.
Patents issued prior to June 1995 that are still valid are subject to different rules. Please contact us if you need assistance.
How much does it cost to file a patent?
Filing Fees
- Regular patent application (generally proceeds through the patent office in 2-3 years or so if all goes smoothly) – Filing fees are approximately $400, which is a reduced filing fee if you qualify for micro-entity status; and approximately $800 for a small entity if you qualify.
- Prioritized Application (expedited application generally proceeds through the patent office in about 1 year or so if all goes smoothly) – Approximately $1500, which is a reduced filing fee if you qualify for micro-entity status; and approximately $2800 for small entity if you qualify. The Patent Office grants only a certain number of expedited applications per year. In order to see if availability is still offered, please check with us.
Are there less expensive or reduced-rate options for filing?
If you qualify as having a “micro entity” status, the patent office reduces certain filing fee costs by 75%. Qualification is based on your individual gross income and the number of patent applications you’ve previously filed.
The applicant or the inventor has not been named as an inveor or joint inventor on more than four previously filed U.S. patent applications (excluding provisional applications and international applications).
The gross income designated amount to qualify for reduced filing fees is approximately $206,109 (in the preceding year). For the current qualifying amount, check the USPTO website here: https://www.uspto.gov/patent/laws-and-regulations/micro-entity-status-gross-income-limit
What are other expenses not covered in the fees?
Other expenses include external costs that are incurred on your behalf, such as filing fees, delivery charges, formal drawings and similar expenses. We do not charge separately for paper, fax, or phone expenses other than conference call service fees we incur.
Once we start a consultation am I locked into using your firm and do you keep my materials?
We may have initial discussions and consultations before you retain our firm for services. Depending on the service you’re investigating, a consultation fee may apply. Any discussions and/or materials that you provide during an initial consultation or prior to engagement with our firm are considered privileged and will be held in confidence and stored in accordance with Maryland state law.
What happens if I decide to stop working with your firm?
Clients may terminate our engagement at any time however, the client will be billed for services and expenses or other costs incurred up until the point of termination.
The materials you’ve provided to us during our relationship will be held in confidence and stored in accordance with Maryland laws. Legal materials that we’ve developed for you will be provided so long as all legal service costs have been paid in full for the relationship.
What if there is more than one inventor or business partner?
Generally, when we’re working with more than one inventor or business partner, the costs of the overall work tend to increase. We encourage multiple inventors and business partners to either designate one person as the point of contact when working with the attorneys, or for all inventors and partners to participate in calls and meetings. Otherwise, we find that additional time is spent repeating information, therefore incurring more legal time. All inventors are required to be listed on patent applications. Additional paperwork is required to be prepared and filed, thus increasing costs per inventor.
Will your firm invest, partner with, or fund my invention like on Shark Tank or Piranha Tank?
Funding the Invention – we do not invest in or fund clients’ inventions. Each client is expected to pay for initial upfront costs in connection with the initial consultation and novelty search.
Partnerships with Clients – we don’t take a piece of the action, so to speak. Clients request services, and we provide the services requested. We don’t take a percentage of product profits or partner with clients in a business relationship.
Can I receive a patent in a foreign country?
For foreign protection of your invention, you are required to file a patent application in each country in which you seek protection. If you’ve already filed a U.S. application, this application can generally be used to assist with the foreign applications. However, each country has specific rules and requirements for a patent application with which you need to comply.
In order to file the foreign (PCT, which stands for Patent Cooperation Treaty) application, we will need to revise your U.S. Patent application so that it meets the form and requirements set forth by the foreign patent office. The initial fees in connection with foreign filings are as follows: (1) foreign (PCT) application filing fees are generally in the $3000 range (but may vary based on the fluctuation of the U.S. dollar); and (2) Legal fees for our services for the preparation and filing of the application are generally in the $1500-$2000 range. Please note that because the subject matter of each patent application is unique, costs will be determined on a case-by-case basis. A general range of costs is provided based on our experience of handling these matters.
International patent protection can be an expensive proposition depending on how many countries, and in which countries, you seek patent protection. In terms of the expenses that you might incur with these foreign national phase filings, there are specific foreign filing fees in each country, annual maintenance fees, and foreign counsel fees, among others. In addition, similar to your U.S. patent application, legal fees in connection with a foreign application would also be incurred in the future based on the examination of the application. Therefore, the initial $5000 (approx.) that we mentioned above and that you will initially spend, is usually the least amount of the costs that you will incur in deciding to pursue foreign protection.
How do I start the process to secure foreign protection for my invention?
We can assist you with protecting your invention in foreign countries. Please notify us at the time we file the U.S. patent that you have an interest in foreign protection. While an applicant typically has 6-12 months to file for foreign protection and claim the benefit of the earlier based off of the U.S. patent application, we need ample time to prepare the foreign application and work with local foreign counsel to file the application in the appropriate venue.
What does it mean to have “Patent Pending” status?
Once a patent application is filed, the application has patent pending status.
Under federal law, you may not use the “Patent Pending” status until an application has been filed. It is unlawful to do so and may be punishable by fine or imprisonment.
What’s the difference between a Provisional Patent Application and a Regular Patent Application?
Provisional Patent Application: This type of application is a placeholder application to secure an early filing date. A regular patent application (see below) must then be filed within 12 months, otherwise, the benefits of the earlier filing date are lost. The provisional patent application does not get examined by a patent examiner, nor does it issue into a patent. Note, the information provided in the provisional patent application, must be to the level such that any regular patent application that follows within the 12 month period, can be supported. Otherwise, any new information filed in the follow up regular patent application will not be deemed to have the benefit of the earlier filing date from the previously filed provisional patent application. Thus, depending on where you are in the invention process, it may be more cost effective to forgo the provisional patent application, and begin the formal patent process with filing a Regular Patent Application. Some inventors who are uncertain whether he/she wants to ultimately move forward overall, may seek to pursue a provisional patent application to test the commercial viability of an invention, investigate and secure investors, or seek to pursue a potential buyer of the application. These interests, however, are generally a lengthy process that could likely exceed the 12 month placeholder time frame, and therefore starting with a Regular Patent Application may be more cost effective. The filing of a provisional application also delays the patent examiner process by up to 12 months, depending on when the follow up Regular Patent Application is filed. Please seek legal counsel regarding patent strategy and options available in your specific scenario.
Regular Patent Application (Non-provisional): A regular patent application is required by the US Patent Office to begin the patent process. This application will be examined by a US patent examiner to determine whether the application meets the US requirements and is able to navigate the US Patent Office vetting process in order to reach the level of being allowed and issued as a formal US patent.
How long does the Patent Process take?
Generally, the legal services portion of conducting a Novelty Search will take about 4-6 weeks to complete from when the inventor fully responds to our invention disclosure questions (assuming that the inventor provides the requested and required information needed to analyze the invention and perform the search). If the decision is made to move forward after the Novelty Search is performed, drafting your patent application will generally take several weeks to two months or longer, depending on the subject matter, the number of inventions and embodiments, and whether the initial invention remains the same without changes.
Once your application is ready for filing, the time it takes for a regular application to proceed through the patent office is approximately 2-3 years. Note, this time is also influenced by the PTO’s backlog. The US Patent Office offers alternative methods of filing a patent application (if available to you as an option), which would speed up the time in which the application is placed in front of an examiner to begin the review process. If you are interested in these alternate application tracks, please see Prioritized Track and Accelerated Track Application information herein.
The patent examiner’s response to your application will also influence additional time in connection with your patent matter. The PTO states that in 85-90% of all patent cases the application receives at least one rejection. Therefore, you should plan on receiving at least one or more rejections. Usually there is 3 months in which to respond to a rejection, and additional time for the patent examiner to review and make a follow up determination which can be an additional 2-3 months.
Once your application is allowed, the PTO will publish the issued patent, and issue the formal certification which generally takes 30-60 days.
You will also influence the time of the patent process via a number of factors, including but not limited to, response time to attorney, substance of response, changes to the invention, etc.
Are there faster ways to get my patent approved?
Prioritized Track Application – your expedited application will generally proceed through the prosecution phase of the patent office in about 12 months or so. Only a certain number of applicants per year are granted expedited applications. In order to see if availability is still offered, please check with us. Additional government filing costs apply.
Accelerated Track Application – your expedited application will generally proceed through the prosecution phase of the patent office in about 6-12 months. Additional legal work will be required for Accelerated Track applications, which have additional filing requirements, and therefore, additional costs for legal services and government filing costs apply.
What happens if my application is rejected?
As mentioned earlier, the Patent Office states that 85-90% of all patent applications will receive feedback from the Patent Office (usually via an “Office Action” or rejection). It is common for applications to receive more than Office Action.
Usually, we will review and analyze the PTO’s feedback, and make a recommendation to the client on how to proceed. In most cases, we are able to respond to the Office Action by drafting legal arguments and/or making amendments to the patent application in order to address the patent examiner’s feedback. Each response is generally $2500-$3500.
Because the amount of work required at this stage will be a function of the USPTO’s feedback, it is difficult to quote typical legal fees for this step; recognizing that a Response to more than one Office Action may be required, it is hoped that these legal fees can be held to $5,000 -$10,000 or less for this stage.
Why should I use a patent attorney at Oliver & Grimsley instead of Legal Zoom or other less expensive attorneys?
Our price is a reflection of our service and experience. When we conduct a novelty search, the process consists of drafting a sample legal description of your invention. This legal description will ultimately be required by the PTO should you eventually proceed to file an application. Based on this drafted legal description, we conduct an extensive search to make sure that it’s worth your while (in money and time) to draft and file a patent application. In the majority of cases, we are spending more time in searching then we charge you for (because of our capped fee arrangement for the search portion). Our name will be going on any application we file, which will ultimately impact our success ratings (we have a 90-95% success rate)- we therefore have a vested interest in giving you a quality recommendation on whether to move forward with drafting a patent application. We’re not just giving you an automated stamp of approval to get you to the next stage.
In performing our search, it is our hope to uncover similar patents that may present a problem for you moving forward if we were to draft a patent application for you. With this in mind, we are able to craft the application around our similar findings in order to put your application in the best light and show how your invention is unique and distinguishable. It is easier and more cost effective to draft the application from this perspective (i.e., having a good idea about what similar inventions are out there), rather than waiting for a first rejection from the U.S. Patent Office, which would force us to scramble with revisions and hope that information was included in the initial application filing that we can then later use to show why your invention is different. The U.S. Patent Office will always find additional “similar inventions” that were not uncovered in our novelty search. The Patent Office has a responsibility to vet all incoming patent applications to ensure that the invention rises to the level of patentability required to substantiate deeming it worthy for patent certification.
Personal Attention- we provide one-on-one consultation and legal services. Our attorneys provide guidance throughout every stage of the patent process beginning with the initial patent investigation, through hopeful issuance of the patent. In addition, we assist clients with additional matters, including intellectual property and business counseling in connection with trademarks and branding, negotiations, manufacturing, licensing, sales agreements regarding inventions, and business formation, among other things.