What is a Patent?
A Patent, inthe sense of a United States Patent, is a grant from theUnited States Government of the right to exclude others frommaking, 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 thepatent by notifying infringers or potential infringers that they may not make, use, orsell the invention during the term of the patent. The inventor or assignee may sellor license the inventor's patent. If necessary to protect the patent, the inventoror assignee may sue infringers in federal court for damages and to enjoin furtherinfringement.
How do I obtain a patent?
Patents are obtained by"prosecuting" a patent application through the UnitedStates Patent and Trademark Office (the "PTO"). Although the inventor mayprepare the application himself, most applications are prepared by a patentattorney or a patent agent. (A patent agent is a non-lawyer who isadmitted to the PTO and may prosecute applications for others. A patent attorney canprovide 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 territorythe inventor is staking out. The PTO assigns the application to an examiner, whodetermines initially whether all or part of the claims are allowable,that is, whether a patent may issue for those claims. The PTO officially responds tothe application with an Office Action, which generally requiresa response from the inventor. The response may include amendments to the applicationand arguments to the examiner explaining why the examiner should allow the patent toissue.
Ultimately, a successful application results in a Noticeof Allowance and the issuance of a patent.
Do I need to have a patent search done?
As with all legal matters, a good lawyer mustsay, "it depends." A search will cost much less than prosecuting anapplication, and will generally tell you what the scope of your patent would be. Ifthe results of the search tell you that your patent would be too narrow to be economicallyuseful, you can save the cost of applying for a patent. However, a search is notmandatory, and if you proceed with the application, the cost of the search will be anadditional part of the overall cost of the process.
Searches are important because patents issue only on "new" inventions. Ifthere are a lot of similar inventions already patented, the scope of your patent will benarrowed because you cannot claim the already-claimed territory. If the availableterritory becomes too narrow, it will not be worth spending thousands of dollars to obtaina patent. Thus, if your invention is in a field where there are a lot of relatedproducts already (a better hubcap, for example) doing a search is usuallybeneficial. Further, the search results are useful in the patent applicationprocess, so the cost of the search is not wasted if you do proceed with a patentapplication.
While a search is generally advisable, you should determine whether to do a search inconsultation with your patent attorney.
What about the cost?
The total cost of the patent applicationprocess depends on several variables, including whether you are a "smallentity," whether you do a search, how many claims you have, and how muchback-and-forth communication with the PTO is required. Costs include fees the PTOcharges as well as attorney fees. You can make a general estimate of total costbased 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 definedin 37 C.F.R. (Code of Federal Regulations) § 1.9, or a small business concern as definedby the Small Business Administration in 13 C.F.R. § 121.201).
Basic Application Fee: $355
(Includes three independent claims and up totwenty total claims.)
Additional independent claims: $40
Additional dependent claims: $9
Issue fee: $620 (due afternotice of allowance)
(Example: A "standard" small-entity utility application will incur $975 inPTO 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. PerryMcConnell, P.C. and are not reflective of or binding on any other law firm.
Patent search: Includes search, review ofsearch results, and opinion letter to client. R. Perry McConnell, P.C. performssearches on an hourly fee basis.
Patent application preparation: R. Perry McConnell, P.C.usually prepares patent applications on an hourly fee basis. Fee does not include PTO filing fees.
Responses to PTO Office Actions duringprosecution: R. Perry McConnell, P.C. bills fees for these responseson an hourly basis. Flat fees are difficult to set due to the unpredictability ofwhat will be required to respond to the PTO.
Additional Fees:
Drawings: The PTO has strict guidelines for patent drawings whichgenerally require that formal drawings be prepared by a professional draftsman. Because the PTO will examine an application based on "informal" drawings, thisexpense 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 figuresrequired to depict the invention, and cost in the range of $120-150 per plate.
