What is a Patent?
A Patent, in
the sense of a United States Patent, is a grant from the
United States Government of the right to exclude others from
making, using, or selling the invention described in the patent in the United States.
The patent expires twenty years from the date the patent application is filed,
although the patent will not be effective until it issues.
Once the patent is obtained, the inventor (or the inventor's assignee) may enforce the
patent by notifying infringers or potential infringers that they may not make, use, or
sell the invention during the term of the patent. The inventor or assignee may sell
or license the inventor's patent. If necessary to protect the patent, the inventor
or assignee may sue infringers in federal court for damages and to enjoin further
infringement.
How do I obtain a patent?
Patents are obtained by
"prosecuting" a patent application through the United
States Patent and Trademark Office (the "PTO"). Although the inventor may
prepare the application himself, most applications are prepared by a patent
attorney or a patent agent. (A patent agent is a non-lawyer who is
admitted to the PTO and may prosecute applications for others. A patent attorney can
provide legal advice and representation in addition to representation before the PTO).
The application includes a description of the invention and claims.
The claims define the breadth of the invention; that is, how much territory
the inventor is staking out. The PTO assigns the application to an examiner, who
determines initially whether all or part of the claims are allowable,
that is, whether a patent may issue for those claims. The PTO officially responds to
the application with an Office Action, which generally requires
a response from the inventor. The response may include amendments to the application
and arguments to the examiner explaining why the examiner should allow the patent to
issue.
Ultimately, a successful application results in a Notice
of Allowance and the issuance of a patent.
Do I need to have a patent search done?
As with all legal matters, a good lawyer must
say, "it depends." A search will cost much less than prosecuting an
application, and will generally tell you what the scope of your patent would be. If
the results of the search tell you that your patent would be too narrow to be economically
useful, you can save the cost of applying for a patent. However, a search is not
mandatory, and if you proceed with the application, the cost of the search will be an
additional part of the overall cost of the process.
Searches are important because patents issue only on "new" inventions. If
there are a lot of similar inventions already patented, the scope of your patent will be
narrowed because you cannot claim the already-claimed territory. If the available
territory becomes too narrow, it will not be worth spending thousands of dollars to obtain
a patent. Thus, if your invention is in a field where there are a lot of related
products already (a better hubcap, for example) doing a search is usually
beneficial. Further, the search results are useful in the patent application
process, so the cost of the search is not wasted if you do proceed with a patent
application.
While a search is generally advisable, you should determine whether to do a search in
consultation with your patent attorney.
What about the cost?
The total cost of the patent application
process depends on several variables, including whether you are a "small
entity," whether you do a search, how many claims you have, and how much
back-and-forth communication with the PTO is required. Costs include fees the PTO
charges as well as attorney fees. You can make a general estimate of total cost
based on the following information.
!! PTO fees are subject to annual revision each October.
PTO Fees:
("Small entity fees -- multiply by two for "large entity" fees. A
"small entity" is an individual inventor, a non-profit organization as defined
in 37 C.F.R. (Code of Federal Regulations) § 1.9, or a small business concern as defined
by the Small Business Administration in 13 C.F.R. § 121.201).
Basic Application Fee: $355
(Includes three independent claims and up to
twenty total claims.)
Additional independent claims:
$40
Additional dependent claims:
$9
Issue fee:
$620 (due after
notice of allowance)
(Example: A "standard" small-entity utility application will incur $975 in
PTO fees).
You should also be aware that the PTO charges
"maintenance fees" at 3.5, 7.5, and 11.5 years after the patent issues.
Those fees are subject to change, but they currently are:
3.5
- $425
7.5 -
$975
11.5 - $1,495
(again, double these numbers for non-small-entity status)
Attorney Fees:
!!Attorney fees will vary; the following are fee guidelines used by R. Perry
McConnell, P.C. and are not reflective of or binding on any other law firm.
Patent search: Includes search, review of
search results, and opinion letter to client. R. Perry McConnell, P.C. performs
searches on a flat-fee basis with fee set after initial consultation with client,
depending on the complexity of the invention.
Patent application preparation: R. Perry McConnell, P.C.
usually prepares patent applications on a flat-fee basis with fee set after initial
consultation. Fee does not include PTO filing fees.
Responses to PTO Office Actions during
prosecution: R. Perry McConnell, P.C. bills fees for these responses
on an hourly basis. Flat fees are difficult to set due to the unpredictability of
what will be required to respond to the PTO.
Additional Fees:
Drawings: The PTO has strict guidelines for patent drawings which
generally require that formal drawings be prepared by a professional draftsman.
Because the PTO will examine an application based on "informal" drawings, this
expense does not have to be incurred until the notice of allowance is received.
Costs to the client for formal drawings vary with complexity and the number of figures
required to depict the invention, and cost in the range of $120-150 per plate.
