More About The Patenting Process

This letter is directed to general information relating to patents in the United States. If you are new to the patenting process, please read this general information.

When the layperson thinks of getting a patent, they are usually referring to what patent attorneys call a utility patent. A utility patent is directed to an invention, such as an article of manufacture, machine, chemical composition, or a processes and business method. Simply put, a utility patent is a right granted by the United States government to exclude others from practicing the invention. It is monopoly which typically lasts for 20 years starting from the day of filing. In exchange for teaching the public your invention, you have 20 years to exploit the invention to make money.

A utility patent is not to be confused with a design patent, which sounds confusingly similar. A design patent is directed to just the "ornamental appearance" of an object and is useful in preventing competitors from imitating the unique visual appearance of an article of manufacture. Simply put, design patents are useful in preventing knockoffs which look the same but aren't made by the same manufacturer. Design patents have a term of fourteen years from the issue date and, in comparison with utility patents, are relatively inexpensive.

To be patentable under the utility patent statutes, an invention must be "new, useful and nonobvious." The patent application does not consist of a form filed with a governmental agency, but rather a full description of the invention and background materials relating thereto sufficient to "enable one of ordinary skill in the art to make and use the invention." A patent application, therefore, typically contains drawings, a discussion of the prior art, a detailed description of the preferred embodiment and claims. The patent application must be prepared and written in such a specific way that it is acceptable to the United States Patent and Trademark Office (USPTO).

The claims are the heart of the patent and define the monopoly the inventor would like granted by the government in exchange for a full disclosure of the invention. The claims are essentially a specific description of the invention in the English language and must conform to certain structures and methods which the USPTO accepts. Claims are found at the back of the patent and are numbered. The claims are carefully crafted such that they are allowable over the prior art yet are broad enough to give the inventor the broadest monopoly possible.

Once a utility application is filed it enters the prosecution stage where it typically takes a year or two for the USPTO to assign an Examiner to review the application and provide a response which we call an Office Action. The prosecution of a patent refers to the process where the Applicant (you) and the Examiner go back and forth trying to agree on how broad or narrow your claims need to be to be "allowable." Sometimes arguments are used that distinguish your invention differently from the prior art and sometimes the claims need to be "amended" such that they are allowable.

It might be desirable to conduct a preliminary patentability search prior to filing the utility patent application. Patentability searches typically cost about $1,000.00 to $1,500.00 and take approximately one week to complete. While you are not required to perform a preliminary patentability search, in most cases we recommend one be performed. The results of the search help to show the Applicant (you) what prior art may be relevant to the scope of your potentially allowable claims. The search might reveal a prior art patent which completely anticipates your invention, or the search might reveal there is very little prior art. You are then able to review the prior art and determine whether you want to proceed further with the utility application. It helps to mitigate risk to know of a potential problem sooner rather than waiting a couple years to get the first Office Action and be surprised with a relevant prior art reference. In either case, knowing the prior art in the beginning allows the patent attorney to draft the claims such that they are allowable over the prior art yet provide the broadest possible protection.

It is also possible to file a provisional patent application, in place of a regular utility patent application, in order to secure an early filing date. Provisional applications may be filed in an informal format, and do not require patent claims. The provisional application must be followed by a regular utility application within one year in order to claim the benefit of the provisional application filing date. It is often desirable to file a provisional application as a first step and later file a utility application if the invention warrants it. Once a provisional patent application is filed, you can then assert your invention is "patent pending." After the provisional application is filed and a utility application is desired, provide at least several months for the patent attorney to start drafting the utility application before the one year time period ends.

One advantage of a provisional application is that the term of 20 years from the filing date will mark from the filing date of the utility application, while prior art will be defined by the filing date of the provisional application. On the other hand, for filing priority, related foreign applications will need to be filed within one year of the provisional application filing date.

The real benefit of the provisional application is that your invention is on file with the USPTO and you can claim priority to it if a dispute arises between you and another entity claiming they invented the same invention first. The United States determines ownership of a patent based upon who invented first, regardless of when they filed a patent application while the rest of the world uses a first-to-file rule. However, filing a provisional (or even a utility) application is best done sooner rather than later to avoid any potential disputes.

Once you have authorized us to proceed with the preparation of a utility patent application, the normal procedure for preparing a utility patent application is to have detailed drawings prepared by a patent draftsperson. The USPTO has specific guidelines with respect to shading, margins, reference numerals, etc. Drawings prepared by our draftsperson cost approximately $150 per page. Once completed, they are reviewed by the inventor for accuracy and completeness. The written specification is then prepared in light of the drawings. This process often takes at least six to eight weeks to complete. The cost for preparing the utility patent application will be approximately $5,000.00 to $9,000.00 for a simple invention, plus additional costs we must pay. For instance, costs include drawings ($150/sheet) and PTO filing fees which start around $500 and increase depending on the number of claims and the size of the ownership entity.

Once the utility application is filed with the USPTO, we will receive an official Filing Receipt advising us of the official filing date and the serial number assigned by the USPTO. We may not receive an Office Action from the USPTO for several years following filing of the application. When an Office Action is received, it is probable that some or all of the claims will be rejected. This does not mean that the invention is not patentable, but is rather just part of the process of securing a patent. Upon receipt of the Office Action we have the opportunity to amend the claims and/or submit arguments distinguishing your invention from the prior art.

Responses to Office Actions should be filed within three months of the mailing date of the Office Action. Hopefully, the application will eventually be allowed. At that time an issue fee is payable to the USPTO. A patent will then issue approximately three months after payment of the issue fee.

We typically advise clients to budget several thousand dollars for prosecution costs subsequent to filing the utility patent application. Prosecution costs can vary greatly depending on the state of the art, examiners, etc.

After the patent has issued, maintenance fees are due six months before the 4th, 8th and 12th anniversaries of the patent issue date. The amounts of the maintenance fees depend on possible qualification of the Applicant as a "small entity" which usually means less than 500 employees. The fee schedule is also subject to revision every three years by the USPTO.

Below is a list of the typical costs of a patent throughout its 20 year life. This list is provided for guidance on estimated costs such that the Applicant can budget appropriately:

- Preliminary Patentability Search $1,000.00 - $1,500.00

- Provisional Patent Application $1,000.00 - $2,500.00 & Filing Fees $110.00

- Utility Patent Application $5,000.00 - $9,000.00 (simple invention) & Drawings ($150/ sheet) & Filing Fees (small entity) $500.00+

- Responses to Office Actions $2,000.00+ (depends upon cited prior art by the Examiner and the prosecution process)

- Issue Fee upon Allowance (small entity) $1,055.00

- Maintenance Fees (small entity) $490.00 at 4 years, $1,240.00 at 8 years, and $2,055.00 at 12 years

If you contemplate filing any foreign applications claiming priority from the provisional application filing date, the related foreign applications will also need to be filed within one year of the provisional application filing date and is preferably filed at the same time as the U.S. utility application. If you wish to file any foreign applications, please let us know the countries in which you are interested, and we will advise you of the particular requirements, alternative approaches, and estimated costs of applying for patents in such countries.

While the United States determines inventorship according to first to invent, priority of filing dates is always important and sometimes crucial, especially in cases of interference or litigation. Furthermore, the application will be barred from filing if the invention has been publicly disclosed, either by publication, by public use or by offer of sale, more than one year before the actual date of filing in the United States Patent and Trademark Office. Another important consideration is that if patent rights in certain foreign countries are desired, the United States application must be filed before any such public disclosure.

I hope that you will find the foregoing information helpful. If you have any further questions, please do not hesitate to call me.

Best Regards,

Marc Martino

< Return to Articles