This article is prepared to answer many questions regarding patent protection. This letter discusses the patenting process and the steps, time frames and costs associated with obtaining a patent. Of course, it does not cover all details or situations encountered in applying for a patent, but is intended to give you a brief overview of the patenting system.
This article describes first the nature of a patent right, followed by the specifics of the three phase process of obtaining a patent: 1) prior art search; 2) drafting the patent application, and 3) prosecution of the patent application. After reading this, if you wish to consider this firm representing you, please call so that we can discuss whether there are any conflicts that would prohibit an attorney-client relationship, and whether we can reach a mutually agreeable arrangement.
What is a Patent?
A patent is a right granted by the United States government giving the patent owner the right to exclude others from making, using and selling a patented invention for a limited period of time. Patent applications filed before June 8, 1995 expire 17 years from the issue date. Applications filed after June 8, 1995 expire 20 years from the date of filing the application. Several other changes to the patent law occurred on this date, and thus, you should consult a patent attorney for more specific information in this regard.
The term exclude is important, because a patent does not give an inventor an absolute right to make use or sell, but rather, allows an inventor to prohibit others from making using or selling the patented invention. This is referred to as a “negative right” in patent parlance.
There are three types of patents: (1) utility patents; (2) design patents; and (3) plant/biological patents. Utility patents cover a broad range of subjects including processes, machines, articles of manufacture, compositions of matter (e.g., chemical compounds, mechanical or physical mixtures and alloys), and improvements to any of these subjects.
Design patents are issued for any new, original and ornamental designs. Among the designs subject to design patent protection are apparel and other haberdashery, including household articles, furnishings, weaving, lamps, packages and containers, games and toys, and jewelry. The cost of obtaining a design patent is approximately $1,500 (including government fees, draftsperson fees and attorney fees). Design patent applications are often used when an applicant wants to use the notice “patent pending” on all products or advertisements.
Finally, plant patents are issued for any new variety of asexually reproduced plants. Unless you specialize in asexually reproducible plants, this is unlikely to apply to your invention.
Reasons for obtaining patent protection vary from inventor to inventor. Factors such as marketing value, exclusive use of the invention, commercial licensing potential and the ability to finance the invention all influence the decision to obtain a patent. There are, however, disadvantages in obtaining a patent including expense, availability of manufacturing expertise and capacity, prior patent availability and potential infringement challenges. Of course, the alternative for protection of your invention include the following areas of law: trade secret, copyright, trademark or contract law.
Novelty and Unobviousness
The United States patent laws require that an invention be novel and unobvious in order to gain patent protection. Thus, the Patent Office will examine each application for novelty and unobviousness. For example, in order for an invention to be novel:
a) the invention must not be known or used by anyone in this country, and must not be patented or described in a printed publication in this or any foreign country before the invention was made by the applicant; or
b) The invention must not have been patented or described in a printed publication in this or a foreign country, or be in public use or for sale in this country more than one year prior to the date of the application by the applicant in the United States; or
c) The invention must not have been described in an issued United States patent before the date the invention was made by the applicant.
“Made by the applicant” (as defined by court cases) varies in definition but generally refers to the first date that an applicant can prove that he/she conceived (not made!) a working model of the invention. It is also important to note that you will forfeit your right to obtain a patent if you do not file an application within one year of the first public use or sale of the invention (offers for sale are considered a sale under patent laws). In this regard, it would be to your advantage to keep your invention a trade secret, and only disclose it to others on a “need to know” basis. To help prove the date of conception of your idea it may be helpful to keep a journal containing dated descriptions and drawings of your idea which includes signatures of close associates attesting that they have reviewed your idea on a certain date. At one time mailing your disclosure to yourself may have qualified as evidence of conception but because technology now allows a person to obtain a postmark for any date it is inadvisable to use this route as evidence of conception.
In addition to novelty, a patent will not be granted if the differences between your invention and the prior art (i.e., prior patents already issued) are such that the idea surrounding the invention, as a whole, would have been “obvious” to a person having “ordinary skill in the art” at the time you conceive your invention. Again, the courts have defined a person having “ordinary skill in the art” differently, but it generally refers to someone who has general knowledge of the technological area to which your invention might apply.
Scope of Patent Protection
Some patents are broad (and thus very strong) and some are narrow (and thus very weak). Those patents which are broad usually prevail in patent infringement suits. Those patents which are narrow usually offer no substantial patent protection, and can be justified by other means. The amount of legal and technical expertise expended in drafting a broad patent is usually greater than that involved in obtaining a narrow patent.
The ultimate value of a patent is influenced by various factors but the foundation for patent protection lies in the commercial value of the invention. While many broad patents do not recoup the cost of obtaining patent protection, narrow patents may be worth the initial cost because the narrow feature it protects is of great commercial value, or because the feature has a commercially essential secondary value.
Secondary values may evolve from different business objectives. For example, a patent that offers little protection can still be valuable because it:
- may serve as an advertising tool to announce a new product that is protected by the patent laws;
- may support an exclusive dealership contract which may be an antitrust violation in the absence of a patent;
- may support a manner of doing business to which a tax reduction may apply; or
- may provide a defense against a charge of patent infringement by another party.
Interestingly, many narrow patents have earned substantial royalties during their lifetime. Narrow patents also discourage competition for a period of time while a competitor investigates the strength and coverage of an issued patent, thus giving the patent owner the marketing advantage of a head-start on competition in an already crowded market.
As you can see, the decision to pursue patent protection should be based not only upon the patentability of your invention, but also upon the commercial potential of your invention, the type of patent protection available and the potential uses to which it may apply.
Steps in Obtaining a Patent
The complexity and cost of obtaining a patent varies significantly depending upon the complexity of your invention. A one-room house is built with less expense and expertise than a high rise office building, and similarly, a pencil can be described and claimed in a patent more easily and at less expense than a complex neural network computer. Complications can arise, and exact preliminary costs for obtaining patent protection are impossible to predict. Therefore, this letter provides estimated costs based on simple inventions which are not involved with atypical patenting procedures. The actual process of obtaining a patent is exhaustive and involves many considerations. The following paragraphs briefly depict the general patenting process.
The Prior Art Patent Search
During the initial conference with your patent attorney, (1) you should provide a written disclosure of your invention. This disclosure should include drawings (no matter how rough), if applicable. In order to give you and the patent attorney an indication of whether your invention is patentable, a prior art (or, “novelty”) search is usually performed. The search will focus on the disclosure you provide so it should be as complete as possible. This is the first of three phases of the patenting process.
Application for a Patent
This is the second phase of obtaining protection for your invention. The cost of preparing and filing a utility patent application (again, based on a simple invention) is usually about $4,000 to $6,000, which includes the prior art search, Patent Office fees, draftsperson’s fees, attorney’s fees, and other costs incidental to the preparation and filing of your application. The application will include a summary of the known prior art (from the prior art search), a detailed description of your invention, a brief description of how the drawings relate to the invention (if applicable), the claims (which, similar to a real property deed, define the boundaries of your invention) and any formal documents required by the federal laws.(2)
(1) A patent attorney is an attorney licensed in any state who has passed a special examination created by the U.S. Patent Office. In order to be qualified to take the test, the attorney must have a qualified technical or scientific degree. If an attorney successfully passes the test, his/her name is placed on a roster of registered patent attorneys and agents. Only pro se inventors, patent attorneys and patent agents are allowed to practice before the U.S. Patent and Trademark Office.
(2) Another type of patent application, effective June 8, 1995, is a "provisional patent application." This type of application only requires the name of the inventor(s), drawings (if applicable) and a description of the invention. Further, the cost ranges from $80 (for small inventors) to $160 per application. A provisional patent application is recommended for those inventors who do not want to spend a large amount of money to file a patent application. This type of application, however, will not be examined by the Patent Office on its merits, and will only be on file in the Patent Office for a period of one year from the date of filing. Therefore, an inventor will not know whether a provisional application has failed to encompass his/her invention until after a utility application is filed and examined. While the inventor receives an extra year to determine whether to file a utility application, such applications may be too brief or overly broad if drafted incorrectly, and therefore, may fail to encompass the inventor's true invention. Advantages of this type of application include receiving additional time to market the invention, establishing an earlier filing date which can be tied to the later-filed utility application, use of “patent pending” on marketing material, and of course, minimal cost. The inventor will have one year in which to market the invention (by sweat equity). This route is not recommended for those inventions where the technology rapidly changes (such as semiconductor technology) since the added year of protection is commercially meaningless.
Drafting patent applications is labor intensive and depends upon the complexity of your invention, the extent of the prior art which may relate to your invention, the completeness of information you initially provide, any revisions needed, and, if necessary, intermediate meetings with you. Indeed, total costs for complicated inventions typically range from $6,500 to $15,000. The preparation and filing of a utility patent application usually takes one to three months, however, it will vary depending on the simplicity or complexity of the invention.
Government Patent Office fees apply. For businesses employing less than 500 people, including individual inventors, the current filing fees are:
Basic filing fee (utility application)
Design filing fee
Plant filing fee
For those entities employing more than 500 people, the above fees (and the fees mentioned throughout this letter) are doubled. Additionally, depending upon the final patent application, other government fees may apply.
After the patent application is filed, the Patent Office Examiner performs a search to determine whether your invention qualifies for patent protection. In this regard, they may discover prior art which was not discovered in our earlier prior art search, including foreign references. As earlier described, the Patent Office will primarily examine the novelty, unobviousness and formal matters associated with your application.
After this search, the Examiner will likely compose an “Office Action” describing his/her findings regarding your application. This correspondence is usually received within twelve months after we filed your application, and will include copies of any new prior art references the Examiner believes may or may not relate to your invention. This correspondence will either reject all or a portion of your application claims, object to any formal matters required by the Patent Office or accept all of your claims. In this regard, you may expect additional attorney fees for time to review and respond to the office action. The attorney time involved will vary depending on the Patent Office's position.
Do not worry that the Patent Office will disclose your idea to outside parties since your application will be maintained in secrecy during the pendency of your application. If you are granted a patent, your application file and related correspondence will become available to the public for inspection and copying.
Finally, it is important to note that even though a patent application has been filed, the law does not protect any pending patent application. There are provisions (and related fees), however, to expedite the application process and perhaps allow the applicant to pursue potential infringers.
Further Prosecution of Your Application
The third phase of the patenting process involves continued correspondence with the Patent Office. The patent attorney reviews the first correspondence from the Patent Office and, in consultation with the client, determines what further action to pursue. If the claims are rejected despite the patent attorney=s opinion of patentability, and the client is still interested in protecting the invention, the attorney will likely recommend that the application be further prosecuted.
If the decision is made to continue prosecution, the patent attorney will prepare a response to the Patent Office. This response may amend the application to better distinguish your invention from the prior art references cited, or may attempt to comply with the Examiner=s editorial flair. This response will always include text discussing the differences between the cited prior art and your invention, and may include legal cites to support the registrability of your application.
The Patent Office and the patent attorney will continue to exchange correspondence until the application is either allowed or finally rejected. This exchange of correspondence may take anywhere from six months to two years (or beyond). Most of this extended time is the result of waiting for correspondence from the Patent Office (remember, your application is not the only application they have to deal with!). If the application is allowed, there is an additional issue fee, as follows:
Utility issue fee
Design issue fee
Plant issue fee
Charges for further prosecution are billed on an hourly basis as the work is performed. If the application is finally rejected, an appeal process is available, but will result in additional attorney and government fees.
What Happens After the Patent Issues?
The Patent Office requires increasing maintenance fees to be paid at the 3?]1/2, 7?]1/2 and 11?]1/2 year anniversaries following the date of issuance of your patent. The rationale is that if you are actively engaging your invention after the patent issues, you should be able to pay additional fees to keep the patent protection alive for the duration of your patent. Currently, these fees for small entities are $455 at 3 1/2 years, $1,045 at 7 1/2 years and $1,610 at 11 1/2 years. If these fees are not paid, the patent will become abandoned, and you will lose all rights to the invention.
A small entity’s simple invention covered by a patent application can be protected for a cost between $4,000 and $6,000. Usually, most inventions fall within this range. Those inventions derived from within the corporate arena (not a small entity) cost between $6,500 and $15,000. Of course, this is the total cost to obtain a patent, and is computed over a period of years. Usually, the average period of time from filing a patent application to obtaining a registered patent is two to three years.
While this article is quite general in describing the patenting process, it serves to inform you of the general principles surrounding the patenting system. I look forward to assisting you with the protection of your intellectual property assets, if possible.
A patent attorney is an attorney licensed in any state who has passed a special examination created by the U.S. Patent Office. In order to be qualified to take the test, the attorney must have a qualified technical or scientific degree. If an attorney successfully passes the test, his/her name is placed on a roster of registered patent attorneys and agents. Only pro se inventors, patent attorneys and patent agents are allowed to practice before the U.S. Patent and Trademark Office.
Another type of patent application, effective June 8, 1995, is a "provisional patent application." This type of application only requires the name of the inventor(s), drawings (if applicable) and a description of the invention. Further, the cost ranges from $80 (for small inventors) to $160 per application. A provisional patent application is recommended for those inventors who do not want to spend a large amount of money to file a patent application. This type of application, however, will not be examined by the Patent Office on its merits, and will only be on file in the Patent Office for a period of one year from the date of filing. Therefore, an inventor will not know whether a provisional application has failed to encompass his/her invention until after a utility application is filed and examined. While the inventor receives an extra year to determine whether to file a utility application, such applications may be too brief or overly broad if drafted incorrectly, and therefore, may fail to encompass the inventor's true invention. Advantages of this type of application include receiving additional time to market the invention, establishing an earlier filing date which can be tied to the later-filed utility application, use of “patent pending” on marketing material, and of course, minimal cost. The inventor will have one year in which to market the invention (by sweat equity). This route is not recommended for those inventions where the technology rapidly changes (such as semiconductor technology) since the added year of protection is commercially meaningless.