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Many questions arise in determining whether to seek patent protection
for new inventive technology. This memorandum sets forth some of
the information which one should know prior to pursuing an application
for a patent.
Frequently Asked Questions
What is a patent, and how can it protect my invention?
A patent is a document which describes the invention and concludes
with a series of paragraphs called claims, which are the legal definition
of the invention owned by the patent owner. A patent gives its owner
the right to exclude others from making, using or selling the invention
covered by the claims of the patent; it does not give the owner
the right to make, use, or sell the invention. This right to exclude
others is enforced by bringing a suit against an alleged infringer
in a United States Federal District Court. In a patent infringement
suit, this right to exclude is dependent upon the court determining
that the claims of the patent are valid and that the claims cover
the product or process of the infringer.
Patent claims vary significantly in scope. Patents on pioneering
inventions receive "broad" claims while other patents
on improvements may receive only "narrow" claims. Most
commonly, the claims allowed by the U. S. Patent and Trademark Office
are narrow in that they only address a specific embodiment of the
invention since other embodiments were previously a part of the
public domain.
Obviously, the broader the legal definition of the invention in
the claims, the more valuable the patent. However, even narrow claims
may be valuable if those claims are directed to features which give
the product significant commercial value.
Although the value of a patent is significantly influenced by the
breadth of the claims, the value is not solely determined by the
claims. A patent also provides secondary values. For example, a
patent or patent application may be of value as a marketing or advertising
tool; or support a manner of doing business or contracting by which
taxes are saved; or may add strength to a franchise or know-how
license; or constitute the foundation of a defense against a charge
of infringement of a third party's patent; or be the basis for winning
an interference with a competitor's patent application. Further,
many narrow patents also earn substantial royalties or may require
a would-be infringer to make design modifications which reduce the
sales appeal of his products.
The decision on whether or not to file a patent application should
be based upon an assessment of the likelihood of obtaining patent
protection, the scope of that protection, the commercial potential
of the invention, the various different values of the particular
type of patent to be obtained, and the uses to which the patent
may properly be put in the industry to which the particular invention
relates.
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How much will it cost to prosecute a patent application?
The cost of obtaining a patent varies tremendously with the complexity
of the technology of the invention. Obviously, a patent application
on an invention with no moving parts will be much less expensive
than an invention with a hundred moving parts. The cost of a patent
might well be compared to the cost of purchasing an automobile.
Estimates cannot be quoted without a thorough review of the disclosure
of the invention. Exact figures can never be quoted simply because
the process of prosecuting a patent application can take many turns
and therefore the steps which the applicant must take to obtain
a patent cannot accurately be predicted. In the following discussion,
estimates have been given for each of the main steps in patent prosecution
- the procedure for obtaining a patent. However, it should be understood
that these are only estimates and relate to typical cases which
are processed through a typical routine prosecution and do not get
involved in interference proceedings, appeals, or other unusual
procedures.
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What steps are involved in pursuing a patent?
- Initial Conference and Patentability Search
The first step in the patenting process is the preparation of
a written disclosure of the invention. This written disclosure
commonly includes one or more sketches or drawings of the invention.
At the initial conference between the inventor and attorney, the
attorney reviews the invention disclosure to determine whether
the invention is proper subject matter for obtaining a patent.
Further, the attorney discusses the invention with the inventor
to ensure that the attorney properly understands the invention
and the particular features which the inventor believes to be
novel. At that time, the attorney may advise spending no more
money and that no application be filed; or may recommend that
a patentability search be performed to determine whether the invention
is patentable or to assess the possible scope of the claims; or
the attorney may recommend that an application be pursued immediately
based on pending statutory bars or the inventor's knowledge of
the state of the art of the technology.
Often, the attorney recommends that a limited novelty or patentability
search be performed. Such a search includes the attorney preparing
a request for a patentability search together with a written disclosure
of the invention. The search request is then forwarded to an associate
in Washington who searches the technical literature in the U.
S. Patent and Trademark Office for prior patents and publications
relating to the novel features of the invention. The associate
then sends the closest prior patents and publications which he
finds in the search to the attorney for assessment of patentability
and claim coverage. As an alternative to using the services of
an associate, the attorney can himself perform an on-line search
for prior patents and publications.
The inventor may wish for the attorney to prepare a formal patentability
opinion or may wish to review the references himself to determine
the extent of novelty of the invention. The patentability search
provides at least two advantages. First, it provides an indication
of the patentability and the potential scope of claim coverage
of the invention. Second, it allows the attorney to draft a better
patent application by preparing claims which are more focused
on the invention in view of the prior patents and publications
located in the search.
A favorable patentability opinion based upon a patentability search
is no guarantee, however, that the invention is patentable. The
examiners at the Patent Office are very knowledgeable about the
technology of the invention and each examining unit has its own
collection of prior art patents and publications. The patentability
opinion is based only on the prior art found in the search or
otherwise known by or provided to the attorney, who may in fact
not have possession of the most pertinent prior art. Thus, the
patentability opinion should be viewed by the inventor only as
supportive, and not determinative, of patentability. The inventor
should not rely on the search as uncovering all prior art relevant
to patentability.
Even when the inventor has extensive knowledge of the prior technology
in the field of his invention, a novelty search is still advisable.
First, it is impossible for the inventor to know all of the prior
patents and published technology, since many patents and publications
do not reach the marketplace. Second, there are many "paper
patents" on inventions which never reach the marketplace
and therefore are not accessible to the inventor. A patentability
search generally requires four to five weeks. Since the attorney
is requesting that his associate perform services on the inventor's
behalf, an advance retainer is required to ensure that the attorney
can reimburse the associate performing the search immediately
upon receiving an invoice for the search.
2. Preparation and Filing of the Patent Application
The cost of preparing and filing the patent application depends
upon the time required for the attorney to prepare an accurate
and thorough writing that describes and claims the invention.
That time, in turn, depends upon the complexity of the invention.
A patent application for even a moderately simple invention will
cost several thousand dollars because of the information that
is required by the U. S. patent laws to be included in the patent
application. The charge for preparing the patent application is
in addition to the cost of the patentability search and opinion.
Certain expenses are also incurred in addition to the attorney's
fees. A filing fee must be paid to the Government and usually
patent drawings must be prepared to accompany the application.
The base filing fee for a small entity (less than 500 employees)
is $355; for large companies, $710. Additional government filing
fees of $100 - $500 may be incurred if considerably more claims
are included in the application than are allowed for the base
fee. Depending on the nature of the invention, patent drawings
may be required. A sheet of patent drawings normally costs $50
- $150. Of course, the number of sheets of drawings will depend
upon the complexity of the invention.
It is customary to ask for an advance prior to preparing the patent
application. This advance is used to pay for the patent drawings
and the Patent and Trademark Office filing fees. Any remainder
is applied toward the legal fees incurred in writing the application.
Any remaining charges for the preparation and filing of the application
are then invoiced when the application is submitted to the inventor
for execution prior to filing the application with the U. S. Patent
and Trademark Office.
Normally, the preparation and filing of a patent application requires
approximately three months after the patentability search and
opinion have been performed. This is a typical period and the
time required may be reduced if circumstances demand it.
The inventor can be of assistance in minimizing the cost of the
preparation and filing of a patent application. In particular,
the inventor can be most helpful by completely thinking through
the invention and providing the most detailed disclosure of the
invention possible to the attorney. Much of the time spent by
the patent attorney includes gaining a thorough understanding
of the invention and obtaining sufficient detail to properly prepare
the application in accordance with the rules and regulations of
the U. S. Patent and Trademark Office. When the patent attorney
must "engineer" the invention, or continuously encourage
the inventor to provide additional technical information, or when
the inventor adds additional disclosure after the application
has been prepared, the cost of the patent application increases
dramatically. Once the application has been drafted, it can be
very expensive to rewrite the application to include additional
disclosure or make extensive changes in the description of the
invention. Although the inventor may have access to his own facilities,
equipment, or personnel to assist in the drafting of the patent
drawings, this normally is not recommended since it requires that
the patent attorney spend time teaching the inventor or the inventor's
personnel the specifications required for patent drawings by the
U.S. Patent and Trademark Office.
The statutes and regulations of the U. S. Patent and Trademark
Office require that the inventor and patent owner disclose to
the Patent and Trademark Office the closest prior patents and
publications relating to the invention and known to the inventor
and patent owner. The U. S. Patent and Trademark Office encourages
that an Information Disclosure Statement be filed with the Patent
and Trademark Office within three months after the patent application
has been filed. This Information Disclosure Statement may include
a short description of each of these prior patents and publications.
Such an Information Disclosure Statement will vary in cost depending
upon the number of prior patents and publications to be reviewed
by the patent attorney for inclusion in the Information Disclosure
Statement.
3. Prosecution of the Application Before
the U. S. Patent and Trademark Office
Once the application has been filed with the U. S. Patent and
Trademark Office, it is sent to a particular group of examiners
who examine all inventions in a given technology. Thus, the examiners
are familiar with the general technology of the invention. Typically,
the application does not reach the patent examiner for six months
after the application has been filed. Once the examiner receives
the application, he reviews the application and particularly studies
the claims. The examiner then performs his own patentability search
by reviewing the prior patents and publications which are located
in the technical library of the Patent and Trademark Office. Once
the examiner completes this search, he prepares a critique of
the application called an "office action". In this critique
or office action, the examiner lists the prior patents and publications
located during his patentability search and may raise certain
objections to the application. These objections may be to the
formalities of the application such as the description or drawings,
but most often relate to a rejection of the claims. Frequently,
all of the claims in the patent application are rejected based
on the results of the patentability search performed by the examiner.
The inventor should not be alarmed when all claims are rejected.
It is important that the patent attorney prepare the initial claims
as broadly as possible to ensure that the inventor receives the
broadest claims possible. It is expected that these claims may
be amended, i.e., narrowed, after the examiner has performed his
search and rendered his opinion concerning the patentability of
the claims. Often, this first office action is not received by
the inventor and his attorney until about a year after the application
has been filed.
Once the attorney receives the office action, accompanied by copies
of the prior patents and publications located by the examiner,
the attorney studies the office action and prior patents and publications
in order to prepare a response. It is not unusual that the examiner's
patentability search, which is supposed to be most exhaustive,
may locate more relevant prior patents and publications than those
found in the more limited patentability search.
Although it is possible to abandon the patent application at this
point in the prosecution because of the office action, normally
the decision is made to respond to the office action by amending
the application in order to place it in better form for the issuance
of a patent. The response to the office action normally includes
amending the application and particularly the claims to distinguish
them from the prior patents and publications cited by the examiner
in the office action. The response also includes a discussion
of the differences between the invention and the prior publications
and patents located by the examiner. Often, the attorney includes
legal arguments as to why the particular claims, as amended, should
be allowed by the examiner. Since the office action is normally
received approximately one year after the application has been
filed and the attorney is given three months to respond to the
office action without incurring extension fees, the expense of
responding to the office action is not incurred until approximately
15 months after the application is filed.
The filing fee paid at the time of the filing of the application
ensures that the applicant will receive two office actions from
the examiner at the U. S. Patent and Trademark Office. Thus, if
the application and claims are not placed in allowable form in
the response filed after the first office action, the applicant
is entitled to a second office action. Normally the second office
action is a "final" office action, meaning that a response
to the final office action must place the application in condition
for the allowance and issuance of the patent or the application
will become abandoned unless the inventor files an appeal or a
continuation application. A continuation application requires
an additional filing fee and entitles the inventor to two additional
office actions. It should also be appreciated that additional
fees may be required by the U. S. Patent and Trademark Office
such as additional claim fees, recording fees, and extension fees.
The charges for the prosecution of a patent application are billed
as the work is performed. If the application is finally rejected
by the U. S. Patent and Trademark Office an appeal may be taken.
However, only a small percentage of applications proceed through
the complete appeal process. The appeal process may be quite lengthy
and expensive, and is relatively complex. For these reasons, that
process is beyond the scope of this memorandum.
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What sort of fees are involved in getting a patent issued?
Once the examiner is satisfied that the claims have been properly
drafted and distinguish the prior art, he will allow the application
and issue a document called "Notice of Allowance and Issue
Fee Due". On receiving the notice of allowance, the inventor
must pay an issue fee to the U. S. Patent and Trademark Office which
in turn sends the application to the printer for publication. Normally,
the U. S. Patent and Trademark Office issues a patent five to eight
months after the issue fee is paid. The issue fee for small entities
is $620. For large companies, the issue fee is $1,240.
The inventor should also be aware that after a patent issues, the
U. S. Patent and Trademark Office requires that certain maintenance
fees be paid to keep the patent in force. Those fees are currently
due 3-1/2, 7-1/2, and 11-1/2 years after the patent has issued and
are currently $910, $2,090 and $3,220, respectively for large companies,
and half of these prices for small entities. It is anticipated that
these fees will be significantly increased in the future.
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How long is my invention protected by a patent, and how
long does it take to get an issued patent?
The issuance of a patent grants to the patentee a monopoly on that
invention that extends for the life of the patent. That is, the
patentee has the exclusive right to prevent others from making,
using, selling, offering to sell, and importing the patented invention.
It is this right that can be exploited commercially. Before the
law changed on June 8, 1995, patents had a life of seventeen years
from their issue date, provided the three maintenance fees were
timely paid. Patents issuing on applications filed after June 8,
1995 will also require maintenance fees, but will have a term of
twenty years from their filing date. Because the average time that
elapses between disclosure of the invention to the attorney and
the issuance of the patent is approximately three years, the change
described above is not likely to significantly affect the average
patent term.
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What is the alternative to paying for prosecution of a formal,
issued patent up front?
U.S. law has been changed to allow the filing of provisional applications.
The purpose of the provisional application is to enable the inventor
to obtain a filing date without having to incur the expense of preparing
and filing a full-fledged patent application up front. It is important
to have an early filing date, as the filing date determines the
extent of "prior art" that can be cited against the patent
application. Provisional applications are not examined and are not
subject to the same rigorous standards of content and form as regular
applications, except that they must contain a complete and enabling
description of the invention. No patent can issue on a provisional
application, but a subsequent non-provisional application may claim
the provisional's earlier filing date if it relies on information
disclosed in the provisional.
If an inventor opts to file a provisional application, a standard
patent application must be filed within one year of the filing of
the provisional application, or the filing date will be lost. If
the inventor intends to file any foreign patent applications, they
too must be filed within one year of the filing date of the provisional
application. The provisional application effectively reserves an
earlier filing date, while allowing the inventor to postpone the
cost of the patent application for one year.
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How can I protect my invention outside the United States?
This memorandum is directed primarily to protection under U.S. law
and is not intended to provide any detailed discussion of foreign
patent protection. A U. S. Patent only protects the invention within
the United States and provides no protection in foreign countries.
Thus, foreign patent protection requires the filing and prosecution
of a patent application in each foreign country. Such protection
is beyond the scope of this memorandum. We would, however, be happy
to provide information concerning the cost of obtaining patent protection
in particular foreign countries. Please also be advised that there
are certain patent treaties which may be of assistance in providing
foreign patent protection.
Most foreign industrialized countries are members of the Paris Convention.
Under this Convention, an inventor can file his patent application
in a member foreign country up to one year after the filing of his
U. S. patent application (provisional, if any, or regular) and still
obtain the U. S. filing date for his foreign patent application.
Thus, normally, where patent protection is only sought in industrialized
countries, the filing of foreign patent applications is addressed
during the one-year period after the filing of a U. S. application.
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What other issues do I need to be mindful of when pursuing
a patent?
A patent cannot be infringed until after it has issued. Our patent
laws provide no remedies against competitors during the pendency
of the patent application. This is understandable because all patent
applications are held confidential in the U. S. Patent and Trademark
Office. Therefore, not only do potential competitors not have knowledge
of the application but, until the claims have been allowed by the
U. S. Patent and Trademark Office, there is no legal definition
of the invention by which to govern the competitors' activities.
Many inventors place the words "Patent Pending" on their
products during the pendency of the application. This places competitors
on notice that a patent application has been filed and that they
run the risk of losing the cost of their capital investment by producing
and selling a potentially infringing product. The Patent Pending
designation alerts the competitor that upon the issuance of the
patent, he may well have to stop the production of the potentially
infringing product, and he may be unable to recover the expense
of gearing up for production.
No United States Patent can validly issue on an invention if, more
than one year before the filing of the application for patent, the
invention was disclosed in a printed publication in any country,
or was on sale or in non-experimental public use or commercial use
in the United States. Thus, the inventor is prohibited from filing
a patent application on his invention if he has waited too long,
i.e., beyond this one-year statutory period. Therefore, care should
be taken to assure that this one-year grace period does not expire
before the U. S. application is filed. Any public or commercial
use of the invention should be disclosed to the attorney immediately
at the initial conference concerning the filing of a patent application.
If the applicant has waited too long, there is no reason to pursue
a patent application further.
Most foreign countries do not recognize this one-year grace period.
Therefore, most foreign countries require that an application be
filed before the first publication or sale of the invention anywhere
in the world. Therefore, if foreign patent protection is to be sought,
the U. S. patent application should be filed prior to the first
publication or sale anywhere, and the inventor should not rely on
the one-year grace period in the United States since that does not
save his foreign patent rights.
If there has been any disclosure in a publication, any offer to
sell or sale of the invention, or any public disclosure or commercial
use of the invention, the complete circumstances should be disclosed
to the attorney along with the disclosure of the invention. Failure
of the inventor to advise the U. S. Patent and Trademark Office
of such matters may well result in any issued patent being invalid
and unenforceable. The inventor is obligated to make such disclosures,
together with any known prior patents and publications, to the U.
S. Patent and Trademark Office during the prosecution of the application.
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Why should I consult a patent attorney?
This memorandum has been written to provide you with basic information
on pursuing patent protection in the United States. This memorandum
is not all-inclusive and is intended to provide you with only a
fundamental understanding of the prosecution process. This memorandum
is not intended to be a substitute for a thorough conference with
the patent attorney to ensure that you have all the information
required to make proper decisions concerning your pursuit of patent
protection.
We hope this memorandum has been of help.
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