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 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.
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.
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.
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.
- 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.