If you are a businessman, no doubt you want to commercialize your invention and bring your product to market as fast as possible.  You may want to begin marketing and soliciting orders even before you are able to complete production.  But again, this strategy can lead to trouble later on if you decide to apply for patent protection.

I always recommend that my clients file something with the patent office before publishing anything about their invention and before taking orders for or selling  their invention.

In the United States

In the United States, publication of your invention anywhere in the world acts as an absolute bar to patentability one year from the date of publication.  In other words, under United States law there is a one year grace period after publication, during which a patent application can still be filed.  After that grace period expires, if no patent application has already been filed, no valid Untied States patent can be obtained.

Public use of your invention or offering your invention for sale in the United States (not anywhere in the world) also acts as an absolute bar to patentability after one year.  Therefore, the same one-year grace period applies to all of these activities in the United States.

The Patent Office (PTO) may not necessarily know about public use or sale of your invention, or about an obscure publication of your invention somewhere in the world. Therefore, you might be able to obtain a patent by failing to disclose these matters to the PTO.  Nevertheless, the resulting patent would be invalid.  Although the USPTO may not discover the publication or sale, it is very likely to be discovered if your patent is ever litigated.

In litigation, your opponent has access to powerful discovery tools, including the right to compel testimony under oath and to compel the production of relevant documents.  When the publication or sale is discovered, it is game over.  Your patent will be held invalid and you will not be able to stop others from infringing it.  Failing to disclose these material events is also unethical conduct.

Foreign Countries

The laws of other countries vary and I am not an expert in international patent laws.  However, foreign countries generally do not have any grace period.  Rather, most foreign countries have a rule of absolute novelty.  Any public disclosure, anywhere in the world, eliminates your right to apply for a patent in those countries.

You can publish your invention, file a United States patent application a year later, and receive a valid United States patent.  But you cannot generally receive a valid foreign patent.  Even one day after you publish is too late.  Your foreign patent rights are gone.

Recommendations

I always recommend that my clients file something with the Patent Office before releasing information to the public or demonstrating or offering their invention for sale.  Hold off on publication until after you at least file a provisional application.

Applications can be filed in foreign countries on the basis of a United States provisional application, typically within one year of the filing date of the U.S. application.  A foreign application claiming the priority of a United States application will date back to the original filing date of the U.S. application, which means that the foreign application will still be valid if you have published something in the interim.

Not publishing is the foolproof solution.  But, if you must publish or offer for sale before filing an application, there are steps that can be taken that may avoid loss of patent rights.  If you give a speech or presentation, do not hand out printed materials such as notes, or if you do, collect them again after the presentation.  A private presentation is not considered available to the public and generally will not be considered a publication.

If you publish a paper, limit your description of the actual invention.  If the invention is not described in the publication, it will not bar your patent rights to the invention.  If there is an offer for sale, your patent rights may be preserved if you are continuing to develop the invention and the offer for sale is of a solution to a problem, and not a particular completed product.  If you want to use your product, do it in private.  Secrecy alone will not necessarily prevent a public use from acting as a bar to issuance of a patent.

At the very least, your business should be aware of these issues and have policies in place to address them.  Inventors should fill out invention disclosures in a timely manner, and these invention disclosure should be reviewed and turned into patent applications relatively quickly, with an eye on potential publication dates and the like. I will expand on some of these issues in later posts.  Any questions?  Please leave them in the comments.

So what use is a patent application that is never examined and goes abandoned in 12 months?  Well, a full nonprovisional utility application can be filed claiming priority to your provisional application before it goes abandoned.  If this is done, any claims in your nonprovisional application that have support in your provisional application are entitled to the earlier filing date of your provisional application.  An early filing date is very important because only inventions made before yours can be cited against the patentability of your invention in the Patent Office.  If you plan to file foreign applications, these can also be filed claiming priority to your U.S. provisional application before it expires.

A provisional application can therefore be used as an inexpensive means for preserving an early filing date for later U.S. or foreign full applications.  Of course a full utility application can also be used to save a filing date for the U.S. and for foreign applications.  So why file a provisional application first?  There are several reasons.

Extended Patent Term

First of all, the term of a patent lasts 20 years from the filing date of the utility application (although additional time can be added to the term in the case of patent office delay).  Filing a provisional patent essentially extends the term of the patent up to a year beyond when it would otherwise end, since the 20 years is calculated from the filing date of the full application and not the provisional application.  Of course the patent will not issue as quickly either, since examination does not begin until the full application is filed.  However, a patent is often more valuable on the back end of its term than on the front end.

Extra Time for Decision-making

The other main reason to file a provisional application rather than a non-provisional is simply that you need more time before filing the non-provisional application.  For example, sometimes a business may need some time to see if they can bring on board the investors they need.  They can file for inexpensive provisional application on their technology, which allows them to use the words “patent pending” and shop it around to potential investors or licensees.

If it works out and they have the funding to pursue a full application, they can do so having preserved their early date.  If they decide not to proceed, they can simply allow the provisional application to lapse without publishing.

Another common scenerio is that a business will want to get an early date on some new technology it has developed.  However, it is unclear whether there  may be further development of the technology in the near future.  If so, they will want to protect that as well, and perhaps merge the new developments into the existing application. Doing so can be messy and expensive with non-provisional applications.  With a provisional application, any new developments can simply be filed as an additional inexpensive provisional application.

When it comes time to file a nonprovisional application, the non-provisional can claim priority to as many provisional applications as necessary.  Each claim will receive the date of the earliest provisional application with support for that claim.  In that way, it is possible for each development to receive the earliest possible filing date.

A provisional application can also be used if you are unsure whether to file a patent application at all.  Perhaps you are considering keeping the tehcnology a trade secret or abandoning it.  A provisional application saves an early date in case you decide some time in the next year that you would like to proceed.  If you do not, simply allow your provisional application to go abandoned and it will never be published.

So, any time you are not sure if you want to spend the time and money on a full nonprovisional patent application or whether there will be additional developments you will want to include in your nonprovisional application, filing a provisional application is a good choice.

Many inventors initially have difficulty understanding the claims of a patent application or issued patent.  It doesn’t help that claims are required to be a single sentence (which may stretch to a page or longer) and contain specialized legal jargon. Yet an understanding of claims is perhaps the most important factor, in my experience, in an inventor’s ability to help me prosecute their application. Fortunately, it is possible to become comfortable with the concept and practice of patent claims with a little give and take between an inventor and his or her attorney.  This post should give you a good grounding in the topic and any remaining questions should be easily answered by your attorney.

Description and Example

At the end of every patent application or issued patent is a section beginning with the words “I Claim:” or “We Claim:” followed by a numbered list. Each number in the list is a separate claim, and each describes an invention that the inventor(s) claims to be his or her own and entitled to patent protection.  The claims define the invention that is or will be protected by your patent. When determining whether someone has infringed your patent, a court will look to the claims of your patent and see if the allegedly infringing product or process falls within the scope of one of the claims.  If not, it does not infringe, regardless of what is in the other portions of the patent.  For this reason, it is the claims of your application that the Examiners at the USPTO examine for patentability.

A claim has 3 parts, a preamble, a transitional phrase, and a body.  For purposes of illustration, here is an example claim:

1.         A writing implement for use on paper, comprising

a hexagonal wooden shaft with a central cylindrical hole,

graphite filling the central cylindrical hole in the hexagonal wooden shaft, and

an erasor on one end of the hexagonal wooden shaft.

The Preamble

In this example, the preamble is “A writing implement for use on paper”.  This is an introduction and the content is generally not essential.  It is best used to frame the invention in an Examiner’s mind.  This preamble could have been “A writing implement” or even just “an apparatus.” It generally does not affect whether an application is found to be patentable or whether a patent is found to be infringed.

The Transitional Phrase

The transitional phrase in the example claim is “comprising.”  It transitions between the preamble and the body of the claim and affects everything that comes after it.  By far the most commonly used transitional phrase is “comprising,” which means, essentially, “including.”  In other words, the claimed invention must have the things in the body of the claim, but it is not limited to those things- it can also have additional unlisted elements.

So in the example, the invention is ANY writing implement that has a shaft with graphite in its cylindrical hole and an eraser on one end.  It doesn’t matter what else the writing implement has- it still falls under the claim.  Even if the writing implement is also magical and dances and casts spells, it still is encompassed by the claim. This is known as “open-ended” claim language.  The reason “comprising” is used instead of a more accessible word like “including” is that it has been interpreted consistently by courts for many years, leaving no ambiguity as to its meaning.

In contrast, the transitional phrase “consisting of” is close-ended claim language and limits the claimed invention to exactly the elements listed in its body- no more, no less.

The Body

The body is the “meat” of the claim.  It teaches all the elements that must be present to make up the invention. Each claim is examined on its own for patentability, so each claim must contain elements that satisfy the requirements of patentability, including novelty and nonobviousness.  The goal of an inventor should be to make the claims as broad as possible while still including all the elements necessary to make it patentable.

Claim Scope

Take a look at the example claim.  Are there ways in which it is unnecessarily restrictive? Does it contain more than is needed for the claimed invention to be patentable? Of course, pencils have already been invented, so this claim would not, in the present day, meet the requirements for patentability at all.  Additional (novel and nonobvious) elements would have to be added to the claim for it to be patentable- the claim would have to be made narrower in scope.

But let’s pretend it’s 100 AD and pencils have not been invented.  No problem with novelty or nonobviousness.  Is the claim as broad as it could be?  Probably not.  Why does the shaft have to be hexagonal?  A cylindrical or triangular shaft would probably work too, so why exclude them?  Note that with the original example claim, a pencil with a triangular shaft would not fall under the claim and would not infringe a patent that issued with only that claim, because it would not contain a hexagonal shaft.

So to improve the claim, we might just remove the word “hexagonal,” since the patentability of the claim will not turn on the shape of the shaft.

But, what if you’re not the first person to invent a pencil-like writing instrument?  What if other people are inventing new types of writing implements every day and there is no way for you to even be sure what others have invented before you (a sitaution more like the modern day)? Maybe some crude pencils have been invented, and maybe even some pencils that are very similar to yours except that they have round shafts.  You’re not sure whether they have, but you think your hexagonal design is superior to a cylindrical shaft design because it gives a better grip.  Should you include “hexagonal” or not?  It may be vital to patentability, or it may not be necessary.  You don’t want to limit yourself to hexagonal shafts if you don’t have to.

The solution is to write two claims.  The first one reads just like the example claim, except the word  “hexagonal” is removed.  The second one reads as follows:

2.          The writing implement of claim 1, wherein the wooden shaft is hexagonal.

This is called a “dependent” claim, because it “depends” from claim 1- it requires all the elements of claim 1.  But, it also adds an additional element- that the shaft must be hexagonal.  This covers you both ways.  If no one has invented a round-shafted pencil and you don’t need “hexagonal” to get a patent, you have a claim without it, the Examiner will allow both claims, and your patent will cover pencils with all differently shaped shafts.  But what if someone else did invent a pencil just like yours, but with a round shaft, and filed a patent application for it?

Well, the Examiner may find this round-pencil invention in his or her search, but not find any hexagonal pencils.  Then, the Examiner would reject claim 1 as lacking novelty or being obvious, in light of the round pencil.  But the Examiner would allow claim 2.  Although you can amend your claims during prosecution, if you had not originally included claim 2, the Examiner would not have searched for a hexagonal pencil.  After claim 1 was rejected, you still would not know if a claim like claim 2 would be allowed.

Claim 2 is even more important to have if the Examiner does not find the round-pencil invention.  What happens when a big company steals your pencil idea and sells exact copies of your hexagonal pencils? You sue, but the company raises the issue of this earlier invention that it has found (after spending big bucks on a thorough search).  This earlier invention invalidates your claim 1.  Fortunately for you, you have claim 2, which is not invalidated, and which is also infringed.  So you can still win your lawsuit and collect damages, thank to the inclusion of claim 2.

That is why most applications are drafted with one or more “independent” claims that include the minimum possible subject matter that may be patentable.  Then they include a series of “dependent” claims, each of which adds more and more elements, narrowing the scope of each claim, but increasing the probability of patentability.  Here is an example:

3.       The writing implement of claim 1, wherein the erasor is made of a rubber compound.

4.       The writing implement of claim 3, wherein the erasor is made of india rubber.

5.       The writing implement of claim 4, further comprising a sleeve that attaches the erasor to the wooden shaft.

6.       The writing implement of claim 5, wherein the sleeve partially surrounds the erasor and an end of the wooden shaft.

7.       The writing implement of claim 6, wherein the sleeve is made of metal.

8.       The writing implement of claim 7, wherein the sleeve is corrugated.

Etc., etc. Each claim in this set is narrower than the one before it, because it requires the elements of the claim before it and some additional element. However, each claim is also more likely to be patentable, if these added elements are not well known.

Summary

There is a lot more to claim drafting than this. Only by attending classes both in law school and afterwards, and by working on hundreds of applications, did your patent attorney gain a solid understanding of the best way to draft claims to protect an invention.  But understanding the basics, as taught in this post, should make it much easier to understand and evaluate the work your patent attorney does and to help and advise him or her. If you have any questions or think there is anything I could add that would be helpful, please let me know in the comments.

On the other hand, inventors sometimes want to prevent competitors from knowing the contents of their application until they have the security of an issued patent.  In that case, it is possible to file a Request for Non-Publication at the same time your application is filed.  Your application then will not be published at all, unless you later rescind the Non-Publication Request.  Only when your application issues as a patent will it be published.

Note that non-publication is not compatible with foreign applications.  You should not file a Non-publication Request if you intend to file the application in other countries besides the United States.  If you do file a Non-Publication Request and later decide you wish to file in foreign countries, you must rescind the request and allow your application to be published.

Please speak to your attorney about whether you should file a Non-publication Request before filing your application.

One option is to send a letter notifying them of your pending patent application.  Reputable businesses are likely to respect your patent rights and will want to avoid a possible infringement suit in the future.  This can be particularly useful if your application is published.  If you send them a copy of your published application and a patent subsequently issues with similar claims, you may later be able to get damages for infringement during the time period between when you notified them of the application and when your patent issued.

Talk to your attorney for more details and for the proper wording of the letter for your situation.  In some instances, the best solution may also be to do nothing and bide your time until the patent issues.

After you have decided that you need a patent and have selected a patent agent/attorney to represent you, the next step in the application process is preparing the application itself. You can find more information on what goes into a patent application in a future post.

Typically, you send the information you have on the invention to your patent attorney, and he or she will go over it, ask you questions about the invention, and prepare a draft application.  After you review it for accuracy and approve it, your attorney will file it. At this point, the day your application is filed becomes the filing date for your application. This is an important date, as I will explain in detail below.

The Waiting Game

Next, you wait for your application to get picked up by an Examiner.  This takes a long time, because there is a large backlog of applications at the Patent Office and your application has to get in line at the back.  The Patent Office is hiring as many new Examiners as it can, but it can’t keep up with the rising number of new applications.   This backlog has grown to over 600,000 applications, as of 2008.

How long it will take for your application to work its way through the backlog depends on the type of invention.  Typically you will wait over 2 years before you receive word from the Examiner.  I will provide more information on the length of this wait in a future post. In some cases, you may be able to skip ahead in this line by requesting accelerated examination.

Examination

In the Examination process, the Examiner reviews your application for compliance with the law. If your application is ready in every way to be issued as a patent, you will be sent a Notice of Allowance informing you that your patent will be issued upon payment of the issue fee.  However, applications are very rarely initially found to be in condition for allowance.  Almost always, the first paper you receive from the Examiner will be an Office Action informing you that your application is presently inadequate and has been rejected.

The first Office Action

The Office Action may reject or object to your application because your drawings are prepared improperly, because your claims are confusing or unclear, or because certain parts of the text of your application are not prepared according to the formal requirements of the Patent Office.  But the heart of most rejections is a finding that your invention is not novel or is obvious in light of the work of others.  Much of the Examiner’s job is to search through patents filed before the filing date of your application and papers published before the filing date of your application to determine whether your invention has previously been invented by someone else, or is only an obvious variant of previous inventions.

Do not be intimidated! Many inventors who are not familiar with the application process become discouraged after reading the Examiner’s explanation of why their application has been rejected.  Often Office Actions are full of legal jargon and impenetrable logic.  The Examiner will almost always try to make it seem that your application has no chance of success.  Yet, most applications do end up as patents.

The Response

You get up to three months to respond to the Office Action, or up to six months with payment of extension fees that escalate each month after the third.  Your attorney will prepare a Response to the Office Action, addressing all of the Examiner’s arguments.  This Response may explain why the claimed invention is different from the previous inventions, or “prior art” that the Examiner cites against the application.  It may also amend the claims to make clearer how the invention differs from the prior art. Any objections to the drawings or to the form of the application will also be resolved.

The Examiner will then consider the Response and either maintain the previous rejections or withdraw one or more of them.  If the rejections are withdrawn, the Examiner may then allow the case and send a Notice of Allowance.  More frequently, the Examiner will take another look at the prior art and send a new Office Action with a new reason for rejecting the application. Usually you will wait about two months after your Response before receiving a reply from the Examiner.  If timing is a concern, your attorney can call the Examiner and see when your Response will be reviewed.

The Second Office Action

If the Examiner realizes that the previous rejection was just wrong, the new Office Action will be non-final.  However, if the rejections are maintained or if the new Office Action was necessary only because of some amendments that your attorney made to the claims, this second Office Action will be final.

After-Final Practice

After a final rejection, your attorney may send another Response arguing that the application should be allowed.  However, if the Examiner is not convinced, you will not receive another Office Action.  Furthermore, amendments to the claims are not allowed if they would change the scope of the claims and require a new search for the Examiner.

To avoid your application becoming abandoned, you must either file a Request for Continued Examination (RCE) or a Notice of Appeal before your 6-month time period for response expires.  An RCE allows entry of further amendments and requires the Examiner to give you a new Office Action.  Usually that Office Action will be non-final, and the cycle will repeat.  An RCE is used if you would like to continue to work with the Examiner.  A Notice of Appeal appeals the decision of the Examiner to the Board of Patent Appeals (Appeal Board), where a panel of expert judges will review the Examiner’s rejections and determine if they are in accordance with the law.

Time

Between submission of the briefs and the Board’s decision, an Appeal typically takes about two years from start to finish.  This is a length of time during which you will not have a patent to enforce.  There is always the possibility that prosecution will be reopened, but by the time you find out, you typically will already have incurred the expense and delay of preparing and filing an Appeal Brief.  Therefore, if you need an early patent (for example due to an infringing product), it may be best to file an RCE if allowance is likely.

With the use of a request for a pre-Appeal Brief conference (discussed here ), it is possible to file a Notice of Appeal, receive a decision on whether prosecution will be reopened, and then file an RCE if it is not.  If there appears to be a clear error, this allows you to relatively quickly have that error corrected, or else file an RCE and proceed to the quick allowance you can get.

Note that, if it becomes necessary, an RCE can be filed at any point in the appeal process before a decision is reached.

Expense

An Appeal carries government fees of $510 for small entities, plus the cost of preparing and filing an Appeal Brief and Reply Brief.  This can be a hefty sum, close to $2500 even for an inexpensive attorney.  An RCE, on the other hand, carries $405 in government fees and requires submission of an amendment, which may cost as much as an ordinary Response.  Thus, the cost would be closer to $1500.  However, an appeal leads to a final resolution of the allowability of all claims (you can appeal a Board decision, but that procedure is very expensive ($10,000 and up, up, up) and therefore rare).

So in the short run, an RCE is the cheaper option. But in the long run, it may be more expensive.  If the Examiner finds new prior art or otherwise decides to reject some of your claims, it may be necessary to prepare and submit additional responses.  If you can only reach an agreement with the Examiner on some of the claims you want, it may be necessary to file a continuation application to attempt to get a patent for the remaining claims.  So, unless an RCE will result in allowance of all the claims you are going to want (which is not unusual), it is likely to be a more expensive option in the end.

Finality

When you file an RCE, the Examiner can always give you a new rejection, regardless of what they may have told you in an interview or Office Action.  Sometimes you may go in circles with an Examiner, always seemingly one RCE away from allowance.

One advantage of an appeal is that a decision allowing your claims is final.  There is almost no chance that a new rejection will be issued once the Board has indicated claims to be allowable.  Although an Examiner can reopen prosecution after an Appeal Brief is filed, but before the briefs get to the Board (and indeed this happens frequently), the Applicant always has the option of putting the case right back into appeal without paying any additional fees.  That is why an appeal is frequently an excellent choice when you feel that an Examiner is giving you “the runaround.”

Continuation practice

If the Examiner offers to allow your application with a narrowing amendment, accepting that offer does not mean you have to necessarily give up on the possibility of broader claims.  If the narrowed claims are still useful to you, you can accept them and allow them to issue as a patent.  Before the final publication of that patent, you can file a continuation application.

This application gets the priority date of the original application and has the same Specification.  However, you can write new claims for it, or pursue claims from the original application that were not allowed.  Of course, the new claims must be supported by the original specification.  Continuation applications are usually considerably less expensive to prepare than original applications. These applications generally are taken up by the same Examiner as the original application and in a shorter amount of time, typically 6 months to 1 year.

When an issued patent is needed, it is common practice to accept the claims allowed by the Examiner and pursue further claims in a continuation application.  In applications with some allowed claims, filing an RCE followed by a continuation is probably more common than an appeal, which as noted can tie up the claims for years.

Summary

When deciding between an RCE and an appeal, you will want to weigh each of these considerations.  If you need a patent soon, have a reasonable examiner, and have the opportunity to take some useful allowable claims, an RCE is probably more appropriate.  If you have been around the block with the Examiner, are uncertain whether the Examiner will agree to allow claims, and/or do not need an issued patent with any immediacy, an appeal may be the better option.

I do not suggest you represent yourself

First things first- should you represent yourself?  There is only one good reason to do so- cost .  Filing yourself will save you attorney’s fees which can range from $5,000 to $20,000 or more over the application process.  But there are many reasons not to go it alone.  First, those cost savings may not be as great as they first appear.  You have to account for the cost of your own time.  At the minimum, you have to value your time at a lower value than the hourly rate of a patent attorney (generally $200 and up) to make it worth your while.

But you also have to take into consideration that patent attorneys are specialists in patent prosecution who may work on hundreds of applications in a year and as a result are more efficient than a lay-person.  Unless you are very familiar with all aspects of patent prosecution, including necessary forms and submission procedures and relevant case law and MPEP guidelines, it will probably take you at least twice as long as it would take a patent attorney to do the same amount of work.

Furthermore, it is not reasonable to expect that you will manage to obtain the same results as a good patent attorney.  As with any legal matter, familiarity and experience are critical.  It may be true that you know your invention better than anybody else, but you probably do not know the law better than anybody else, and knowledge of the law is critical to obtaining solid patent protection.

Any statement you make over the course of prosecuting your patent application can be used against you in the future, not just by the patent office, but also by infringers who seek to invalidate your patent years later. If you do not draft your claims correctly, or follow the suggestion of an Examiner and amend them too narrowly, you may find your patent provides you with little protection and is of no use to you other than as a decoration.  A single word may be the difference between protection and a lack thereof.

Worse, there may be no way of knowing whether you have made such a mistake or not.  Any test by an infringer may come years after your patent has issued.  Imagine the following scenario: you draft and file an application, successfully prosecute it and obtain an issued patent, and begin building your business in reliance on the protection your patent provides.    You bring in investors, sink your capital into manufacturing capcity, ink deals with distributors, and begin a marketing campaign.

Then you find a large corporation has stolen your idea and is marketing it in an identical fashion.  You threaten to sue and they refuse to negotiate, saying your patent is invalid.  The company sues you preemptively and the court declares your patent invalid.  In the meantime, you have gotten several more patents the same way.  Are they invalid as well?  Suddenly, the solvency of your business is in question.

When you invest in a good patent attorney to prosecute your patent applications, you pay a little money up front to potentially save you enormous amounts of money down the road. I would rather pay a good patent attorney to get me valid patents that stand up to scrutiny than pay a great patent litigator to save my butt in court after my patents are challenged.  As in many legal matters, you can pay a lawyer a little up front, or a whole lot down the line.

When should you do-it-yourself?

So, you get the idea.  I do not think it is a good idea to prosecute your own patent applications.  When might it be okay to do so?  Well, when you are not worried about the problems I outlined above.  Maybe you are a patent attorney yourself.  Maybe you are not interested in going into business and only want official acknowledgment of your invention that you can hang on the wall.  Or, maybe you just don’t have any money and have no choice.  But unless you really are flat broke, in which case I wonder if you should be spending your money on government fees, you might be surprised how affordable good representation can be.

Alternatives

Find a good solo practitioner or small firm to that you are comfortable with (more on making this selection in the next post) and let them know that money is a concern.  Do as much of the work as possible yourself, but make sure everything is reviewed and submitted by your lawyer.  By doing this, particularly if you are familiar with the patenting process, you can cut costs a great deal.  You might be able to cut your costs to $6000 or $7000 over 5 or 6 years.

If you cannot afford that, you might be better served to get a provisional application filed.  This is relatively inexpensive, and may cost $1500 or less.  If you prepare the application yourself, it might cost as little as a few hundred dollars.  There is risk in this, though (more on that in a later post).  Once your provisional application is filed, you have a filing date and a pending application and can talk to others about your invention without worrying too much about your idea being stolen.  Investors will also take you more seriously with a pending patent.

Now, make the rounds.  Try to get someone interested in your invention.  You have 12 months from the date your provisional application was filed before you need to file a full utility application.  If you can bring investors on board before that time, you can use their money to pay for the application.  And more than likely they will recognize that this is a good use of their money and a solid investment.

In the next post, I will discuss the factors to consider in selecting your representative.  If I have overlooked anything in this post, let me know by email or in the comments.

Filing the application

For a small entity, a provisional patent application has a fee of $105. A utility application carries a $255 utility search fee, $105 utility examination fee, and $155 basic filing fee ($75 if filed electronically) for a total cost of $515 ($435 if filed electronically). Applications over a certain size, over a certain number of claims, or initially filed without documents are charged additional fees.

The total fee for filing a design patent application is typically $220 and the fee for filing a plant patent application $340.

Issue fees

Those fees all must be paid around the time of filing. Once examination is complete and your application is allowed, you must pay an additional government fee in order for your allowed application to issue as a patent. Right now those fees are $720 for a utility patent, $410 for a design patent application, and $565 for a plant patent. However, the fee you must pay is the fee in effect at the time of allowance, not the fee at the time you initially applied. As of November, 2007, the average pendency (time to issuance) of an application was 32 months . That is almost three years. Since the Patent Office increases its fees each year for inflation, those fees are sure to increase by the time your patent is ready to issue.

Examination

So between filing the initial application and paying the issue fee, you know you are going to be paying at least $1,155 in government fees for a utility patent filed electronically ($630 for a design patent or $905 for a plant patent). In addition, you will most likely incur some additional fees over the course of your application’s examination.

There is no government fee for responding to an Office Action. However, there are fees for extending the time for response, if more than three months are required, and for requesting continued examination (RCE) if a final rejection is received. Appeals also carry fees. Typically, at least one RCE or an appeal is required, depending on the circumstances. An RCE carries a fee of $405 and an appeal with an appeal brief carries a total fee of $510.

Thus the total amount of government fees from application to issuance for a utility patent application is at least $1,560.

Maintenance (Post-Issuance) Fees

Although the term of your patent is 20 years from the time of filing, a patent will expire before that time if regular maintenance fees are not paid. This ensures that patents that are no longer valuable to their owners are released into the public domain. The first maintenance fee is due 3.5 years after issuance and is $465. The second maintenance fee is due 7.5 years from issuance and is $1,180. The third and final maintenance fee is due 11.5 years from issuance and is $1,955.

The typical utility patent, from filing to expiration, will cost at least $5160. Of course, these amounts are paid over approximately a 15 year period. If at any time the patent no longer appears to be valuable, it can be abandoned, saving you any remaining fees. Thus, from a government fee perspective, patent costs are pretty reasonable. The modest charges are spaced out and need only be paid if you continue to anticipate that the value of the patent warrants the expense.

Please let me know if I have overlooked anything.  I will try to keep this page current as fees change.  This post was last updated in the Summer of 2008.

If you already have a general understanding of patents , and you have an invention that you think you may want to patent, this post will provide you with information that will aid you in making your decision. As always, I recommend that you consult a registered patent attorney before you make a decision one way or the other.

Alternatives

When deciding whether to patent your invention, you should keep in mind the alternatives. The main alternative is to keep your invention a trade secret . Although I will address trade secrets in greater detail later, they are essentially exactly what you would expect. There is no national registry of trade secrets like there is for patents, trademarks, and copyrights. To create a trade secret, you just don’t tell anyone about your invention. Anyone who you disclose it to should be made to sign a non-disclosure agreement and any secret material should be clearly labeled “Confidential” or the like.

An advantage of trade secrets is that they never expire. Disadvantages include that others are legally allowed to reverse-engineer your product, that nothing prevents others from coming up with your invention independently and selling it, and that secrets are just hard to keep. However, trade secrecy has worked pretty well for the Coke recipe, for example. Keeping an invention a trade secret is a big decision and should only be taken after consulting with an attorney regarding the full measures that must be taken and all the advantages and disadvantages as they pertain to your particular situation.

Reasons to apply for a patent

Knowing the alternative to patenting should give you some idea as to why people apply for patents. When the invention must be disclosed to many people or is difficult to keep secret, you might consider a patent. When your product is easily reverse-engineered, a patent application makes sense. And when another inventor is likely to independently come up with your invention sooner or later, you should lean towards patenting.

There are also other reasons to apply for a patent. If you do not want to make your invention yourself, a patent or patent application makes it much easier to shop your invention around. Once you have filed your patent application, you have gotten your filing date for patentability purposes and do not need to worry as much about disclosure. If someone steals your idea and you have a valid issued patent, you have them in a tough situation. A court judgment with a finding of willful infringement could leave them paying you triple damages.

A patent or patent application makes your invention much more attractive to buyers, licensees, and investors. A buyer or licensee will want to know they have the exclusive right to market your product without having to worry about copycats taking their market share. A buyer might even want your patent just for the right to enforce it in court against infringers, even if they have no plans to market your invention themselves. Investors will want to know their investment will be protected. If your invention is the result of an SBIR grant, the government will most likely require you to seek patent protection for this reason.

For these reasons and more, many inventors and small businesses choose to apply for patents as soon as they decide there is a strong potential market for their invention. There are many reasons why, if you decide to patent, you should do so without delay. But a big reason is that you will want the protection of a patent application early in the process of developing your invention. As soon as you have filed for patent protection, you can and should use “patent pending” at all times in relation to your invention. This will let others know you are taking the appropriate steps to protect your intellectual property. You can disclose information about your product somewhat freely to potential investors or buyers without worry and can bring together the people you need to take your invention to market.

Examination of patent applications typically takes at least 2-3 years. In the meantime, if product development does not pan out, you can always abandon your application without spending any more money. While costs can be high initially, particularly for individual inventors, the investment is frequently a sound one in the long run if your invention has a strong chance of market success. In addition, there are ways to preserve your patent rights while incurring minimal costs upfront. See here for a discussion of different types of patent applications. Many inventors with limited financing choose to file a provisional patent application at a low cost. This preserves their filing date for one year and allows them to shop their invention around before deciding to proceed with a full application.

Reasons not to file a patent application

One reason not to file a patent application is if you think your invention might not be patentable. It can be very expensive to obtain a patent. It can be just as expensive to go through the patent process and discover, in the end, that your invention is not patentable. Therefore, it is usually cost-effective to do a patent search before deciding whether to file an application. For around $500 a patent attorney can conduct a search to determine whether your invention meets the requirements for patentability.

However, searches are not fool-proof. Most search reports will contain a clause to the effect that, while the search is reasonably comprehensive, there may be other publications or pending, non-published applications that render your invention unpatentable. For more information on patentability, see here. If your invention may not be patentable, applying for a patent may not be cost-effective.

If your invention or product is definitely not patentable, you might be better off pursuing a different strategy. If practical, you could keep your invention a trade secret, but you could also focus on differentiating your product in the market through branding and advertisement. A good trademark can be very helpful towards that end. Or, a copyright might be more appropriate to protect your work.

If you have any corrections or would like to see additional material covered in this post, please let me know in the comments.