A United Stated patent is a grant of property rights by the U.S. Government to an inventor to exclude others from making, using, offering for sale, or selling the invention for the the term of the patent. Once the patent expires, the patented invention is granted to the public domain for general use.
U.S. patent law provides for the granting of three different types of patents:
1. UTILITY PATENTS are granted to anyone who invents or discovers any new and useful process, machine, manufacture of composition of matter, or any new and useful improvement thereof. "Process" includes industrial and manufacturing processes and methods. "Manufacture" refers to articles which are made or manufactured. "Composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. Utility patents are the most common types of patents. A utility patent has a term from the date the patent issues to 20 years from the date of filing the patent application.
2. DESIGN PATENTS are granted to any person who invents a new, original and ornamental design for an article of manufacture. A design patent protects the ornamental design (i.e., appearance) of the article. A design patent has a term 15 years from the date the patent issues.
3. PLANT PATENTS are granted to any person who invents or discovers and asexually reproduces a new variety of plant. A plant patent has a term from the date the patent issues to 20 years from the date of filing the patent application.
In order for an invention to be patentable, it must be novel. In other words, it must be different from that which is already known.
In order to be patentable, the invention must also be non-obvious. In other words, it must not be obvious to a person having ordinary skill in the field to which the invention relates at the time the invention was made.
Patents are granted only to the true inventor or inventors. At the time of filing the patent application, each inventor must sign an oath and declaration that they are a true inventor. Contrary to some popular myths, a person cannot legally see a product in the marketplace and rush to get a patent for that product in their name. If a person lies on the oath and declaration by stating they invented an invention that they, in fact, did not invent, the resulting patent would be invalid.
The amount of fees paid to the US Patent and Trademark Office depends on the size of the entity filing the patent application. Companies with more than 500 employees pay the “Regular Undiscounted” filing fees. Individuals and companies with fewer than 500 employees are considered “Small Entities”, and pay filing fees that are typically half of the Regular Undiscounted rate. Under some conditions, individuals may qualify as “Micro Entities”, which pay filing fees that are typically half of the Small Entity rate. We will consult with you and determine the appropriate entity type to declare when filing a patent application.
In 2013 the United States became a first-inventor-to-file jurisdiction instead of the first-to-invent jurisdiction of the past. This makes it very important to file a patent application as soon as possible to avoid someone else beating you to the patent office.
The United States patent protects your invention only in this country. However, most foreign countries have a patent process that your invention may be eligible for if it meets the time limits referenced below.
A patent may not be obtained if the invention was in public use, on sale, or offered for sale in the U.S. for more than one year prior to the filing of your patent application. In addition, foreign rights may be lost if the invention is publicly disclosed, advertised or sold before filing a U.S. patent application. If no such disclosure, advertisement or sale is made, you generally have one year from the date of filing a U.S. patent application to pursue foreign patent protection.
An inventor may sell all or part of his or her interest in a patent application or patent to anyone by signing an assignment. The assignment should be filed with the U.S. Patent and Trademark Office to give public notice regarding ownership of the patent. Regardless of who owns the patent, the patent application must always be filed in the U.S. Patent and Trademark Office in the name of the true inventor, and not as the invention of the person who has purchased the invention from the inventor.
The terms "patent pending" and "patent applied for" may be used by a manufacturer or seller of an article to inform the public that a patent application for the article has been filed with the U.S. Patent and Trademark Office.
The Patent Process
This entails performing a search in the official database of the United States Patent and Trademark Office to locate relevant patents and published patent applications. Following the search, the client will be provided with a patentability report and copies of the patents found during the search.
Fee for Services: $1,800 – 2,000 payable in advance for a search of average complexity.
Note: It is not required to perform a patent search before filing a patent application, but it is highly recommended.
Preparing a patent application and associated paperwork includes the steps of: studying the client’s disclosure; studying known relevant patents, publications, or other related materials; drafting the patent application including one or more claims based on the client’s disclosure; preparing patent drawings; preparing a power of attorney; preparing a declaration of inventorship form; preparing an information disclosure statement (if required), and filing the application and associated papers with the United States Patent and Trademark Office. The attorney’s fees for filing a patent application depends on the complexity of the invention and the field of technology involved.
In addition to attorney’s fees, there are also patent drawing fees of $100 per sheet, government filing fees of $785 (for a small entity of less than 500 employees), possible additional filing fees for additional patent claims, and possibly other fees. In order to provide you with a detailed estimate, we need to have an initial consultation with you, which we can do in person at our offices, or over the phone.
Once the patent application has been filed in the United States Patent and Trademark Office, you may mark your invention “patent pending”.
Once the patent application has been filed, it is assigned to a Patent Examiner. The Examiner will typically perform a search of the issued patents and published patent application publications in the United States Patent and Trademark Office to determine if the claims in your patent application are allowable. If all claims are allowable, the Examiner will issue a Notice of Allowance. However, it is very rare for an Examiner to find all claims allowable on the first examination of the patent application. In most cases the Examiner will draft an Office Action that provides the Examiner’s rationale for rejecting one or more claims. It is quite common in the first Office Action to receive a rejection of all claims. It generally takes one to two years after filing the patent application for the Examiner to respond with a Notice of Allowance or an Office Action.
When we receive an Office Action, we will evaluate the Examiner’s grounds for rejection and provide you with a written cost estimate for responding to the Office Action.
Prosecution of your patent application may include one or more telephone interviews with the Examiner to determine the most appropriate way to respond. A written response to the Office Action is filed with the United States Patent and Trademark Office, and may include amendments to the patent application, and/or legal arguments rebutting the Examiner’s grounds for rejecting your claims. A typical response to an office action costs $2,000-$2,500 in attorney’s fees.
Please note that the Examiner may provide multiple Office Actions, which must each be responded to in order to keep your patent application from becoming abandoned. In some cases, other services will be required during prosecution of your patent application, including, for example: responding to restriction requirements, conducting interviews with the patent examiner, filing a notice of appeal and an appeal brief, etc. Estimates of the fees for these services will be provided if such services become necessary to continue prosecution of your patent application.
If and when the Examiner determines that the claims in your patent application are allowable, the Examiner sends a Notice of Allowance. At this point, appropriate paperwork must be prepared and submitted to the United States Patent and Trademark Office along with the Issue Fee.
|Attorney’s Fees||$ 300|
|Issue Fee||$ 500 (for a small entity)|
|Estimated Total||$ 800|
Once the United States Patent and Trademark Office receives the paperwork and Issue Fee, your patent will generally issue within three months.
A utility or plant patent, once issued, will have a term of 20 years from the date of filing (not from the issue date). Keeping your utility or plant patent alive for its full term requires the payment of maintenance fees at certain times after the patent issues:
|3.5 years||$ 800|
The fees above are the current rates for small entities, and will likely increase by the time you will be required to pay them. In addition to the maintenance fees listed above, attorney’s fees of $300 will be required for each maintenance fee to prepare the necessary paperwork. Failure to pay a maintenance fee within six months of when they are due will result in your patent expiring.
A design patent has a term of 15 years from the date of issue without requiring any maintenance fees.