Patent

(Print/Download) The Patent Process Patent Info

 

THE PATENT PROCESS | BASIC INFORMATION

 

At Paparella & Associates, we are committed to educating our clients on the patenting process in order to educate our clients on the details and expenses that are part of the patent process.  Therefore, we have created for you this primer on the process of patenting an invention.  The patent process is very complicated and as such, though we have tried to simplify this primer, it is not an easy read, nor is it all-inclusive.  Hence, this primer is not meant to be construed as legal advice and is provided solely for informative purposes only.

A patent can be granted to anyone who “invents or discovers any new and useful process (e.g. manufacturing process, business methods), machine, manufacture, (e.g., devices) or composition of matter (e.g., drugs), or any new and useful improvement thereof.  What this means is that anything made by man can be patented, wherein the word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles which are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything which is made by man and the processes for making the products.

The grant of a patent offers the patentee, his heirs or assigns, the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.  If the invention is a process, the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by the process, for a term ending 20 years from the date on which the application for the patent was filed in the United States.

There are different types of patents and all “patents” are not created equal.  There are plant patents, design patents, utility (non-provisional) patents, and provisional patents to name but a few.  This primer will focus on the utility patent, as that is what typically provides the most protection and the type that that is most sought after.  *To sum up the entire process for a simple invention, the patent process will take between 2 and 5 years (or more), and you will have invested between $6,000 and $12,000 in the hope of obtaining a patent grant

Before we prepare and file a patent application, we typically recommend that a patentability search be conducted.  A patentability search helps us determine whether or not your invention is patentable, and if so, the amount of protection you may receive from any patent application stemming therefrom.  Although such a search is not a prerequisite for filing a patent application, we highly recommend that one be conducted.  In the majority of cases we have found that a patent search allows you, not only to make a more informed decision as to whether or not to seek patent protection, but it also helps in the prosecution of a subsequent patent application. 

It is our opinion that a patent application which has been prepared in conjunction with and utilizing the information which has been garnered from a properly executed patentability search, allows us to better address the issues which are likely to be brought up by the Examiner during the examination process.  This is because, by analyzing the references (patents and patent applications) that were disclosed during the search, your patent attorney will be able to prepare claims that are easier to defend (more accurate) and win.  Consequently, by having conducted a search, the costs associated with the prosecution of the application (discussed below) may also be reduced.  Additionally, we are able to prepare a more comprehensive patent application.  As, by having conducted a search we have a better grasp of “what is out there.”  Accordingly, this tells us something about what is not out there.  Therefore, we are typically able to obtain protection that may have been otherwise left out of the patent application.  Hence, in most situations, having conducted a search allows us to create a more encompassing and higher quality application. 

Patentability searches are best when physically conducted, on-site, at the United States Patent and Trademark Office (USPTO) by highly trained and specialized searchers.  With the advent of the World-Wide-Web and the proliferation of databases, there are now numerous organizations offering “discounted” or “low-Price” patent searches.  However, be advised that there is simply no substitute for a patentability search that has been conducted at the USPTO, and conducted by trained professionals with decades of experience.  Further, many of these low cost searches can be done yourself.  If you are comfortable with search engines (i.e. Google, Yahoo, MSN), these initial searches can be done yourself by going to http://www.Qlver.com and clicking the patent search link in the Resources section.  We advise all our clients to at least initially check this database before having us conduct a proper and extensive search.  However, once you decide that an extensive search is required, again, there is simply no substitute for a patent search that has been conducted (physically) at the USPTO, and conducted by trained professionals.  The reasons why these comprehensive searches should be conducted at the USPTO are numerous.  For example, by conducting the search at the USPTO, the searcher will in many cases actually talk to the Examiners in the art unit that will be examining your application.  These conferences are invaluable in assessing the quality of the search and help us determine what the Examiners will search when they are examining your application.  Hence, the quality and quantity of the information we receive from a search that is physically conducted at the USPTO can not be achieved anywhere else (i.e. off-site). 
The patentability searches conducted by Paparella & Associates are conducted by our own Associates, having at least 10 years experience, and are conducted at the United States Patent and Trademark Office in Washington, D.C.

Upon review of the patents found during the search, we render a report advising you on the patentability of your invention.  *The cost of such a search for an invention of low complexity is typically around $1500.  Such searches can be more expensive depending on the complexity of the subject matter.  Patentability searches usually require from six to ten weeks to conduct. 

If, after reviewing the patentability search report you decide to proceed with the preparation of a patent application for filing in the United States Patent and Trademark Office (USPTO), we can typically have a patent application ready for filing within two to three months.  *The cost for preparing and filing a United States utility patent application is typically about $4000-$6000 depending on the complexity, with most cases being around $5000. Of course, more complicated cases will be more expensive. 

If you are comparing the relative pricing structures of various organizations, be careful.  As with any comparison, make sure you are comparing the exact same services.  With patents, you will want to know: 1) what type of patent will you have prepared (i.e. utility, design, provisional); and 2) what costs are included in there fee (i.e. drawings, USPTO fees, number of claims).  The policy of Paparella & Associates is to set forth an inclusive fee structure in order to apprise you of the “total” costs for the various steps involved and so that your not surprised by a bill that is significantly higher than what you were quoted.  As such, the pricing structure set forth herein includes everything to prepare and file a utility application with the USPTO (includes all attorney time for the preparation of the specification, the preparation of the drawings, payment of the USPTO fees (for up to 20 claims, 3 of which may be independent claims), and all other items in order to prepare and file your application with the USPTO).  At this point (after filing) you will have obtained Patent Pending status.  There are less expensive ways to obtain this status.  However, these other ways, including the “provisional” application, are replete with traps and if not done correctly you will have, at least, spent money for nothing and, at worst, lost your invention rights.  Hence, it is recommended that you talk to an experienced patent attorney at Paparella & associates before you have someone advise you on one of these alternate courses of action.  It is also imperative that you determine if the filing organization will represent you in prosecuting the application before the USPTO.  If not, you may have to seek the counsel of an experienced patent attorney in order to finish the application process (e.g., handle the prosecution of the application).  Further, if the application was not prepared correctly, you may have to start over and will have lost all of the monies you had spent thus far.  Hence, it is strongly recommended that you seek the advice and assistance of a qualified and registered patent attorney to assist you. 

Speaking of experience, when seeking advice with intellectual property matters (patents, trademarks, copyrights, trade secrets, and the like) you should first look for a “patent attorney.”  A Registered Patent Attorney is an attorney who has chosen to specialize in intellectual property and has taken and passed not only one or more State Bar exams, but also the Federal or Patent Bar exam.  And, in order to even sit for the patent bar exam, you must be scientifically trained.  Secondly, make sure your Registered patent attorney is experienced and has been properly trained.  Unfortunately, as with Doctors who are required to work a residency program during college, wherein the Doctor in training gains “real-world” experience under the direct supervision of experiences Doctors, this is not the case with patent attorneys.  As such, ask you patent attorney how he was initially trained (i.e. did he have formal training under the tutelage of a qualified and experienced patent attorney), and whether or not they have “real-world” experience.  The later point goes to the heart of a well written patent application.  At Paparella & Associates we value patent attorneys that have actually worked as scientists and engineers.  This real–world experience is invaluable in preparing patent applications that are resistant to reverse-engineering.

Once your application is filed with the USPTO, your application has entered what we call the prosecution phase.  *During this phase you will need to invest from another $1,000 to $6,000 in the prosecution of your application.  The USPTO examines the applications it receives in chronological order.  Considering the current USPTO backlog, it will typically take from about two years before your application is examined.  Once examination starts, the process can last between one and three years, with the USPTO reviewing your application at least once, and usually two times.  When an Examiner reviews your application he prepares a written report of what he finds to be patentable.  This report is called an Office Action (OA) and must be correctly responded to or your application will go abandoned.  As we receive these Office Actions, we will report them to you and prepare responses to the arguments on your behalf.  It typically takes two of these Office Actions for us to determine whether or not the Examiner will allow your application to become a patent.  During this period, you be billed on an hourly basis.  The costs associated with these expenses are extremely difficult to estimate in advance.  *However, typical prosecution expenses tend to fall within a range of from $500-$2000 for each Office Action.  Hence you will have to invest from another $1,000 to $6,000 during this two to five year period of prosecution.  Additionally, it is essential that you keep in mind that no one can guarantee that an application will eventually become a patent.

If your application is allowed, you will incur additional fees.  At the date of this writing these fees include a $700 Issue fees (large companies pay twice that amount), and a $300 Publication fee, In addition to our fees for rendering services ($200-$500 for our services in making certain that the application will issue in proper order).  In addition, Governmental maintenance fees are required to keep utility patents in effect for their full term.

If and when your patent is granted you will have to pay “maintenance fees” on a regular basis.  These fees occur at the 4th, 8th, and 12th years and at the time of this writing are $450, $1,150, and $1,900 (for small entities).  Your patent will expire after 20 years from its filing date.  In order to remind you of these dates, we offer a service that you may subscribe to.

IMPORTANT NOTE:  Please be aware that your patent application must be filed with the USPTO within one year of your first offer for sale, public use, or publication of your invention.  Failure to file within this timeframe bars you from obtaining a United States patent.

If you have any interest in obtaining protection on your invention in foreign countries, your United States patent application must be filed before your invention is made public in any way.  Any corresponding foreign patents must then be filed within one year (6 months for designs) of the filing date of your United States patent application.

If you have any other questions, please do not hesitate to contact our office.   

*Please note that the costs which are provided herein are cost “estimates” and are provided as a convenience only.  There are numerous factors that go into the costs associated with all intellectual property and as such, these costs are variable and your costs may be different than that those listed.  Hence, you should talk to your patent attorney about the costs associated with your particular case.  The costs provided herein are a base costing structure for an invention of low complexity and mechanical in nature (as of January 2007).  Higher complexity inventions and those in the business method, electrical, software, chemical, and biological arts will be higher in cost and in some cases, significantly higher.

About Paparella & Associates:
Paparella & Associates is a law firm which specializes in intellectual Property.  Namely, Patents, Trademarks, & Copyrights.  Serving the business community throughout the U.S., Paparella & Associates is uniquely situated to deliver the highest quality representation, while charging fees that are more in line with business expectations.  Representing clients in all intellectual property matters including, Patents, Trademarks, Copyrights, Infringement Matters, Clearance Opinions, Freedom to Operate Opinions, and Litigation.  For more information, please visit our website at www.Qlver.com

Qlver Representation for Ingenious Businesses

PATENT, TRADEMARK & COPYRIGHT ATTORNEYS

Atlanta (404) 472-3321
Ann Arbor (404) 472-3321
Austin (404) 472-3321
Boca Raton (404) 472-3321
Chicago (404) 472-3321
Detroit (404) 472-3321
Grand Rapids (404) 472-3321
Kalamazoo (404) 472-3321
Lansing (404) 472-3321
Los Angeles (404) 472-3321
San Jose (404) 472-3321
Silicon Valley (404) 472-3321
   
Toll Free (888) 877-2873