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PATENT INFO

Patent Process

A step by step guide to a very complex process
 

• An attorney with the appropriate background is selected and a meeting between the attorney and the inventor is scheduled

• Sometimes a patent search is performed if the general area is heavily researched or common.

• Once the specification is completed, then "claims" are drafted. Claims set forth exactly what the invention is and what is being "claimed" as new useful and non-obvious.

• The specification and claims are mailed together with the appropriate forms to the United States Patent and Trademark Office (USPTO). The application is assigned to a patent examiner that is familiar with the area; he or she reviews the application for completeness, and compares the invention to other patents and publication to make a preliminary determination of patentability.

   

In almost all cases the patent application is rejected. We are informed of this via an "Office Action". This first office action may take 18 months or more to receive. The patent attorney responds in writing to the examiner explaining why the subject matter is patentable. The patent attorney may also make amendments to the claims to address the grounds for rejection. The patent examiner may again reject all claims, or allow some. The office actions continue until the USPTO sends a "final rejection". It is no unusual that this process can take 5 or more years. The actual process is often more complex.

 

Patent Costs

 

Costs - Patent searchers typically cost between about $ 500 and $ 1200 for the US only, depending upon the nature of the art to which the invention pertains, its complexity, and who is doing the search. As a result of legislation that became effective on December 8, 2004, the fee structure at the Patent Office changed. The filing fee to the Patent Office for an individual inventor or a small company that qualifies for small entity status (i.e., companies with fewer than 500 employees) is now $150.00. For those who are familiar with the fee structure prior to December 8, 2004, you will remember that the filing fee for small entities was formerly $395.00. It would, however, be a mistake to believe that the Patent Office has decreased its fees in such a significant way. The Patent Office has always like to charge a la carte fees, and now they have taken that tendency to new heights. In addition to the basic filing fee the patent fee legislation enacted on December 8, 2004, requires paym ent of a Search Fee ($250 for small entities) and an Examination Fee ($100 for small entities). Therefore, the total fee due to the Patent Office for a small entity to successfully launch a non-provisional utility patent application is $500.00. It is also important to realize that this initial fee covers 3 independent claims and 17 dependent claims. If you have more claims it costs more.
 

In addition to the various filling fees there will also be an issue fee due before any patent will be granted by the Patent Office. The current issue fee for a small entity is $700.00. So even without any attorney fees the absolute lowest you could pay for a single patent is $1,200.00. In reality what happens is that during prosecution many times the examiner will allow some claims but not all claims. If that happens you may decide to let the allowed claims issue, at which point the issue fee would become due. Then you may decide to continue fighting over the rejected claims in hopes of getting some of them through the office. That would require another patent application, which would lead to additional filing fees. You can, of course, always decide to drop the rejected claims and incur no additional fees with respect to them, or you could also decide to appeal, which means additional attorney time preparing the appeal, which also carries fees of between $500.00 and $1,000.00 for a small entity. The lesso n here is that fees can add up quickly. It is true, however, that once you file an application it will likely be many months (or perhaps years) before the patent office will get back to you so you can usually stagger these additional fees.

Another cost associated with filing and/or issuance is the preparation of formal drawings. You will either need to be able to create patent drawings that are acceptable to the Patent Office or hire someone who can. Informal drawings are allowed to start, but formal drawings must be made before the patent can issue. Filing formal patent drawings initially, however, does create a broader initial disclosure, which can be most helpful. If you need to obtain professional patent drawings for something relatively simple may only cost in the range of $100 to $125 per drawing sheet, with each drawing sheet typically containing several figures per sheet. Given the complexity of the drawing rules and the comparatively small charge for professional drawings, it is usually better to hire someone who specializes in patent drawings.
 

- Type of Invention, Examples, and Cost

• Relatively Simple electric switch; coat hanger; paper clip; diapers; earmuffs; ice cube tray $4,000 to $6,500
  
   
• Minimal Complexity board game; umbrella; retractable dog leash; belt clip for cell phone; toothbrush; flashlight $6,500 to $9,000
  
   
• Moderately Complex power hand tool; lawn mower; camera; cell phone; simple business method; microwave oven $9,000 to $12,000
  
   
• Intermediate Complexity ride on lawn mower; video game; simple RFID devices; solar concentrator; $12,000 to $16,000
  
   
• Relatively Complex shock absorbing prosthetic device; internet implemented business method with computer system $16,000 to $25,000
  
   
• Highly Complex MRI scanner; PCR; telecommunication networking systems $25,000 +

 

 

Patent Phases

 

Phases - To provide the reader with a general understanding of the patenting process, this outline breaks down the patent process into four phases:

PHASE I - REVIEW OF CONCEPT, KNOWN ART AND STATUTORY BARS
PHASE II - PATENTABILITY SEARCH AND EVALUATION
PHASE III - PREPARATION OF PATENT APPLICATION
PHASE IV - PATENT PROSECUTION


PHASE I - REVIEW OF CONCEPT, KNOWN ART AND ANY STATUTORY BARS

The first phase of the patenting process is a detailed review of the design including a description of the features of the design and any information concerning similar products of which the inventor and those involved are aware. The Appendix includes a "Checklist for Invention Disclosure" which describes some of the background information that should be reviewed. Drawings and prototypes are helpful. Any facts relating to the items described in 35 USC 102 and 35 USC 103 (See copy in Appendix) should be reviewed and a decision made as to whether any bars to patent protection exist. For example: Has the invention been in public use or on sale in the U. S. more that one (1) year before filing the patent application? (See "Invention Status Checklist" in Appendix).

PHASE II - PATENTABILITY SEARCH AND EVALUATION
 

The second phase includes conducting a preliminary patentability search. While a search is not necessary to file for patent protection, it is helpful in determining whether a patent application should be filed and the drafting of claims in the application. To conduct such a search, the following steps should be taken:

1. Compile and document the known prior art;
2. Determine the points of novelty of the invention and their advantages over the prior art;
3. Determine the U.S.P.T.O classification of the invention; and
4. Conduct a preliminary patentability search to determine the novelty of the invention;

No assurance can be given that the concept is patentable or that all of the pertinent references will be uncovered by a preliminary patentability search.

Upon completion of the patentability search, the inventor will be forwarded copies of the references for his review. A meeting will then be arranged to discuss the patentability of the concept. A decision may be made as to whether or not to proceed with the filing of a patent application. Some of the factors that enter into this decision are:

1. The known devices already on the market.
2. The results of the patentability search.
3. The commercial importance of the invention.

The patentability of the concept will be dependent on:

1. a review by the United States Patent and Trademark Office (USPTO) of the patent application filed,
2. the prior art cited to the USPTO as a result of the preliminary patentability search or otherwise known, and
3. the prior art uncovered by the United States Patent and Trademark Office as a result of their own independent search.

The U. S. Patent and Trademark Office may find other prior art that is more pertinent than that discovered in the preliminary novelty search. It should be clearly understood that the preliminary search is not conclusive as to the patentability of the subject matter and is not directed to the question of infringement of other patents. Moreover, the ultimate patentability of the concept may be decided by a court of law.

 PHASE III - PREPARATION OF PATENT APPLICATION

The patent application includes a written description of the invention (specification), defining the best mode of the invention. Drawings of the invention are included and are described in the specification. The drawings must meet certain rules of the USPTO and are generally prepared by a patent draftsman. The patent application includes claims that define the metes and bounds of what the invention covers. The language of the claims is important in defining the breath of the patent. Other documents that may be filed with the application are an Information Disclosure Statement, Assignment of the Patent Application, and Small Entity Status Documentation to minimize government fees.

The U. S. Patent and Trademark Office requires that applicants for a U. S. Patent application make a full and complete disclosure in good faith and with all candor to the Patent Office of any known art including patents, publications or other information considered pertinent by the person filing the statement. This disclosure requirement is more fully described in the "Duty of Disclosure, Candor, and Good Faith". (See copy in Appendix).

It must be understood that changes in the concept, after the drafting of the patent application is commenced, may require modification of the claims and specification. After execution of the patent application by the inventor, the patent application will be filed with the U. S. Patent and Trademark Office.

PHASE IV - THE PATENT NEGOTIATION PROCESS OR PATENT PROSECUTION

Once the patent application is filed, the application is "prosecuted" before the U. S. Patent and Trademark Office. This process occurs between the applicants attorney and the U. S. Patent and Trademark Office.

The United States Patent Office will inform the applicants attorney of its position with respect to the patentability of the concept in the form of an Office Action, after filing the patent application [approximately nine to eighteen (9 - 18) months depending on their case load]. This Office Action may and probably will cite patents or other prior art in addition to that uncovered in the preliminary patentability search.

Some reasons for rejections by the USPTO are as follows:

1. Non Art Rejections,
   • Non -statutory Subject Matter,
   • Insufficient Structure,
   • Vague and Indefinite,
   • New Matter,
2. Prior Art Rejections, and
3. Informalities in the Application.

In response to the Office Action by the USPTO, an Amendment to the patent application by the Applicant may be filed. In that Amendment, the Applicant may make remarks directed to the arguments for patentability and may revise the specification and claims if necessary. No new matter may be added by the Amendment. Additional Office Actions by the United States Patent and Trademark Office and Amendments by Applicant may occur.

As a result of the "prosecution" before the U. S. Patent and Trademark Office, the Patent Office may or may not allow a patent application to pass to issue and become a patent. If the Patent Office does not allow the patent application, other steps may be taken to obtain a patent.

ANCILLARY MATTERS TO CONSIDER - PATENT MARKING
 

While the patent application is pending, the marking "Patent Pending" or "Pat. Pend." may be used. These phrases have no legal effect, but only give information that an application for patent has been filed in the U. S. Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.

After the Patent is granted, the following notice should be used on the product:

"Patent No. ________".

To recover damages fro an infringer, a patentee must give notice of the patent to the infringer. Notice may be given by marking the patentee\'s products or by letter to the infringer. Damages begin only when notice is given. There are two exceptions to the general rule. Notice need not be given under method claims, or if neither the patentee nor any licensee is manufacturing under the patent.