Oradell Chamber of Commerce

Where do I begin

The first step when a party has an invention is to determine whether the invention is patentable. Normally, this involves a patent search in the United States Patent and Trademark Office which is conducted by the patent attorney. The patent attorney reviews the prior art revealed by the search and provides an opinion on patentability.

While a patent search is recommended, it is not obligatory. A party who is familiar with the field or has conducted his own search may elect to file an application without the benefit of an attorney search. While some cost savings may result, there is the possibility that earlier patent references may exist which result in rejection of the application in the Patent Office.  Furthermore, the patent search aids the attorney in drafting the application and claims to distinguish over the prior art.

The Next Step

If it is determined that the invention is patentable, the next step is to file a patent application.

Three Types of Patents

Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matter, or any new useful improvement thereof.

Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.

Plant patents may be granted to anyone who invents or discovers and/or asexually reproduces any distinct and new variety of plant

The attorney will begin work on the application upon receipt of an agreed upon initial retainer. Generally, the retainer is one-half of the fee for filing the application.

Filing the Patent Application

After the inventor has approved the application the balance of the legal fee, which also covers the government filing fee and associated costs, is due. In many cases, the application will be filed with the inventor’s informal drawings and formal patent drawings, if necessary, will be prepared and billed later.

The application will then be electronically filed with the USPTO and you will receive a serial number and filing date. After filing, the invention can be marked “Pat. Pending.” Applications are examined in the order in which they are received in the particular Patent Office examining group. It is anticipated that the application will be examined within one year of the filing date.

The Examination

The patent examiner reviews the application and determines whether the claims meet the requirements for patentability. In other words, the invention as described in the claims must be new, useful and unobvious. The non-obvious criteria involves reviewing the claims in light of the existing prior art in the Patent Office and making a determination whether the invention would have been obvious to one skilled in the art with the prior art available to him. Filing an application is not a guarantee that one will receive a patent since the Patent Office has the final say.

Office Actions

After the examination, the Examiner forwards the results of the examination in an Office Action to the inventor’s attorney together with the cited references. The inventor has three months to respond to the OA with an Amendment distinguishing his invention over the cited references, complying with any objections raised by the Examiner and amending the Claims where necessary. The patent attorney also argues the patentable distinctions of the invention in the format of a brief.

The patent attorney will bill separately for this Amendment and you will be advised of the cost in a separate letter which reflects the effort required to overcome the Examiner’s action. In some instances, the Examiner will allow the Claims and this minimizes the effort required by the patent attorney.

If no response is filed to the Office Action within the statutory time period, the application will go abandoned. It is however, possible to extend this time period up to six months by payment of monthly extension fees which increase by the month.

This added cost is not recommended unless it is absolutely necessary. A Patent Office response to the Amendment normally occurs within three to six months. After a final response, the attorney may speak to the Examiner to clarify issues and argue the merits of the claims.

Allowance

Upon allowance of the application, the patent attorney will process the application to issuance. A final cost occurs at this stage due to the government issues fees and attorney fees.

Rejection

If the application is finally rejected, rather than allowed, the inventor has the choice of filing an amendment after final rejection, appealing the final rejection, or filing a request for reexamination. A course of action should be determined in consultation with the patent attorney.

Patent Costs

• Consultation Fee $150
• Patent Search $1,150 – $1,500 depending on complexity
• Patent Application $2,500- $8,000 depending on type and complexity of application
• Government Filing Fee up to–$730* Government fees are reviewed periodically and are subject to change
• Amendment $650 – $1,350
• Issuance up to $960 (plus $400 attorney fee) Government fees are reviewed periodically and are subject to change
• Patent Drawings up to $150 per page.You will be billed by our draftsperson separately

The foregoing represents the normal procedure in patenting an invention. Further details and variations on the procedure if they occur, can be discussed with the patent attorney. You are encouraged to ask any questions which you might have with regard to the patenting of an invention.

This article provides general advice and is not to be a substitute for consulting with an attorney.

Richard A. Joel, Sr., Esq., is an attorney at Joel & Joel, LLP, in Oradell, New Jersey. Mr. Joel handles matters involving patents.

The information above is for general informational purposes only and is not intended and should not be considered to be legal advice or a legal opinion.

1. Investigate the Buyer and the Ability to Pay. Before conducting business with a prospective buyer, you should determine who the buyer actually is. Ascertain whether the buyer is a corporation, a limited liability corporation, a limited liability partnership, a limited or general partnership or an individual person and whether the buyer is conducting business under any other names. You have to determine whom you will be doing business with and whether you can trust the buyer. Trust your gut instincts. Next, investigate the buyer’s ability to pay. Provide the buyer with a credit application to complete. Obtain detailed information regarding the buyer’s assets, liabilities, bank accounts and references. Verify the bank account balances and assets and call the references. You may also want to obtain a credit report. With this information, you will be able to determine the level of risk in dealing with this buyer. To increase the probability of a satisfactory outcome, you may wish to make certain payment arrangement provisions to increase the likelihood of being paid. Such arrangements may include a cosignor, guarantee, surety, promissory note, bond, mortgage, deposit, security, down payment, trust arrangement or letter of credit. Of course, the depth of your investigation and requests will depend upon the risks and sums involved in each transaction.

2. Get it in Writing. In each transaction, you should have a complete and clearly written contract with all of the terms including the parties, subject matter, quantity, goods and/or services to be performed, price, and terms of payment. The contract should include provisions for any defaults and provide for interest, late charges and costs of collection including reasonable attorney fees. If there is to be a personal guarantee, cosigner or other similar provision, make sure that it is in writing. In providing your goods and services, you should obtain an acknowledgment from the buyer setting forth that the buyer has received the goods and/or services and is satisfied with them. If you do not have a written contract and an agreement is oral, memories and understandings of the parties may differ and problems may occur if there is a dispute. Remember, make sure you get it in writing.

3. Keep Good Records. You should make sure that you have an original copy of the contract and acknowledgment that were signed by the buyer. Keep copies of all correspondence and documents exchanged between you and the buyer. Send confirming letters for telephone conversations. Document all collection efforts. If you receive a check from the buyer, make sure that there are no notations that the check represents payment in full. Make a copy of any checks you receive from the buyer. A copy of the check is helpful in locating the buyer’s bank account if you should be forced to file a lawsuit and pursue the buyer through the legal process. Documents will be important if a law suit is necessary and can make the difference between winning and losing in Court or collecting on a judgment.

4. Watch What You Say and Do. Be mindful that anything you say or do can be an admission and used against you. Do not harass or threaten the buyer. It is not good business practice and may be illegal. You should keep it professional. If you do not heed this warning, you may subject yourself to unnecessary claims or liabilities.

5. Consult an Attorney to Determine Your Rights. If you cannot resolve a dispute with the buyer, you should consult an attorney. In discussing a matter with an attorney, you should provide a chronology of events and all of your documentation. The attorney will review the facts with you as well as the terms of the agreement and the responsible parties. An attorney can advise you of the strengths and weaknesses of your case and the prospects for enforcing the contract and collecting on your receivables. The attorney will review and discuss your options with you.

This article provides general advice and is not to be a substitute for consulting with an attorney.

Richard A. Joel, Jr., Esq., is an attorney at Joel & Joel, LLP, in Oradell, New Jersey. Mr. Joel handles matters involving commercial collections and other business related matters.

This is the Oradell Chamber of Commerce blog. We hope to post information that you may find interesting or helpful or both!