Patent Application Process
The costs associated with patenting of inventions
How Much Does a Patent Cost?
A patent application will be prepared for a fixed fee depending on the complexity and quality of the invention disclosure. USPTO fees are not included in this fixed fee.
Applicants can expedite examination of patent applications by filing a request for prioritized examination and paying an additional fee. A prioritized patent application is normally examined within a year of the filing date.
Applicants must know that the likely total cost of the entire process to obtain a patent can be considerable because it also includes legal fees of patent procurement after the filing of the patent application and the fees for the publication and issue of the patent.
Do I Need a Utility or Design Patent?
See the frequently asked question section that describes what can be patented in each category and what actions may lead to the loss of the rights to the invention.
What is a Small Entity?
To receive a discount rate of a small entity, you must be an individual inventor or a small business, which has not sold the rights to the invention to a big organization. The USPTO defines a small entity as an independent inventor, small business, or nonprofit organization. The small business must have fewer than 500 employees, including affiliates. Those small entities that have transferred their rights to large organizations, or must transfer those rights under a contract, cannot receive the discount. If you are a small entity, the government gives you a 50% discount on many of the costs associated with the filing and procuring of patent applications.
What is a Micro Entity?
Patent filers can qualify for the micro entity status to receive a 75% discount on many of the USPTO fees associated with the filing and procuring of patent applications. To qualify as a micro entity, you must qualify as a USPTO-defined small entity, not be named as an inventor on more than four previously filed US non-provisional patent applications, and your gross income must not be more than three times the median household income in the previous year from when the fee(s) is paid. You also must not be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor.
Legal Costs Associated with a Patent Application
We provide Legal Services at fixed fee arrangements as well as hourly rate arrangements. We may request retainer amounts in advance of performing any work to cover at least half of the expected costs of patent preparation and/or prosecution. The remaining half and official fees are normally due upon completion of work.
To issue a patent, the USPTO charges a fee. We charge a fixed fee for preparation and filing of patent documents related to the issue of the patent.
Unlike many firms, we will prepare simple patent drawings at no extra cost. However, more complex drawing (especially in the mechanical field) may require services of an experienced drafter.
Assignment of Rights to the Application
If the inventor(s) wants to assign the rights to an invention, we will prepare and record in the USPTO an assignment for a fixed fee to effect the assignment of rights. Currently, the USPTO does not charge anything to record an assignment.
What Happens During and After Filing of a Patent Application?
What is Filed?
An application is drafted based on the disclosure of the invention and together with other required documents is submitted electronically to the USPTO. An application is typically drafted within a month of the disclosure receipt unless there is an urgency to file earlier. If the time constraints do not allow for a non-provisional application to be prepared and filed before the deadline, we strongly recommend filing a provisional application to preserve your priority filing date.
What Happens After Filing?
The Patent Office will examine the application to determine whether the invention is novel and not obvious. Typically, the examiner will send us a letter rejecting all or some claims of the application in view of the prior art. At this stage, we must respond to the letter. A typical response may include a meeting with the examiner (personal or telephonic) to discuss his/her position and what measures can be taken to overcome the rejections. After that we will prepare and submit arguments, and/or amendments to the claims, specification, and drawings, in accordance with the agreement reached at the meeting. This process is called patent prosecution.
How Long Does the Process Take?
Unless an expedited prosecution is requested and paid for, the entire process, from the filing of the patent application to the issue may take from 1 to 3 years (depending on the field of the invention).
Other Options for Filing of Patents
Patents granted by the United States of America carries a “right to prohibit others from making, using, offering for sale, and selling the invention in the United States or importing the invention into the United States.” Thus, a patent issued by the USPTO only protects the invention in the U.S. If you wish to protect your invention in other countries, we can prepare and file a PCT application. This application must be filed within one year from the date of filing a patent application in the United States. Please see the web page of this site explaining the process of filing a PCT application. You can also write or call us for more information.
If you have a complete description of the invention, preparation of the provisional application would require only a few days. Filing the provisional application will add to the overall costs of patenting your invention. A provisional application is valid for one year, within which a non-provisional patent application claiming priority of the provisional application must be prepared and filed in order to take advantage of the priority date of the provisional application.
What We Would Like You to Provide in Order to Use Our Services
Start with information about your plans and a brief description of what you have invented (without divulging any details).
If upon review of your information we determine that there is no conflict of interest, you will be asked to sign a legal service agreement that includes details for the legal services provided.
After receiving and considering the legal service agreement, you can sign, scan and email it back to us. If you already have a description of the invention, it would be great if you could also prepare hand sketches or drawings. In your description, please indicate how you think the invention is improving existing technologies or processes, and what problem it solves. We will provide you with an invention disclosure form that can help you organize your thoughts in a patent like manner.
Your activities related to attempts to sell or sale of the invention, and with whom you talked about the invention are important for patenting. Please specify whether and when these activities have occurred. In general, US patent law prohibits issuance of a patent if more than a year before you applied for the patent any attempts to sell or sale have occurred or if the invention was described in a publication.
If you are applying for a patent in the USPTO, you will have to sign a statement promising to reveal all the facts about the prior art known to you that might affect the patentability of your invention. Hiding these facts can lead to the invalidity of your patent.
International Patent Application Process
Worldwide Patents Do Not Exist
I want to protect my invention worldwide. Is there a patent, which operates around the world?
Such a patent would be very valuable to the inventor. Unfortunately, there is no such a thing as a “world-wide patent”. If you want to protect your invention more than in one country, you must file an application for a patent in a country or region where you want to be protected. Patent Cooperation Treaty (PCT) is a process, which provides you with an opportunity to begin the process of obtaining patents for your invention in most countries by filing a single application. The second phase of the process is carried out in a country(ies) in which you wish to obtain a patent(s) for your invention.
Patent Cooperation Treaty (PCT)
What is the PCT?
Patent Cooperation Treaty is a multilateral treaty that was signed in Washington in 1970 and came into force in 1978 in most countries of the world (currently 148 states). It is administered by the World Intellectual Property Organization (WIPO), which is headquartered in Geneva (Switzerland).
PCT – Two Phases of the Process
What is the PCT process? PCT includes two phases: the international phase, which lasts from 18 to 30 months and the national phase, in which the application is processed in individual countries. The PCT provides for the process permitting to file one “international application” instead of several separate national or regional patent applications.
What Are the Benefits of the PCT Process?
By filing a single international application under the PCT, you can achieve what, without the PCT, requires submissions of applications in all countries where you want to get a patent.
Filing of an international application is done in one language, which is one of the official languages. For most applicants, this language is the language used by their national or regional patent office or the language used by the Patent Office representing their country.
International applications are filed in one location. Usually, it is the national or regional patent offices of the applicant or the patent offices acting in the interests of their country. The applicant can always file directly with the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva as the receiving office. Please note that some countries require the applicant to obtain a foreign filing license before filing a PCT application directly.
There is an established international application form. This form must be accepted by all national patent offices when the application enters the national phase. Thus, there is no need to become familiar with a variety of formal requirements of the countries in which the applicant wishes to obtain a patent. However, it is better to take into account patent practices of the particular country or countries in which the applicant wishes to obtain a patent. For example, if the United States is a major market for the applicant, it makes sense for the PCT application to be prepared by a patent attorney practicing in the United States.
Fees Are Collected in One Office
Fees associated with an international application are paid in one office and in one currency. Thus, there are no difficulties associated with the payments to various offices and in different currencies.
More Time for Decision
Before the applicant starts spending time and money on translations, national or regional fees, and patent attorneys in different countries, his/her goals may mature to a greater extent than would be possible without the PCT. The PCT process provides more time for decisions to be made. Moreover, before the applicant enters a national stage, he/she may take the advantage of an international search report, a written opinion from the International Searching Authority, and a preliminary report on patentability. These documents may provide some foundation on which to judge chances of success in obtaining patents.
More Time to Select Countries
Since the applicant has more time to make a decision, he/she could better assess the technical and economic value of patent protection and choose the specific countries where he/she wants to continue seeking protection for the invention. Thus, the inventor can save on the costs of translation into another language and other costs associated with obtaining a patent in countries, which are no longer of interest to the applicant.
Deferred Translations into Other Languages
If the international application is filed in a language that is not the same as the language adopted by the International Searching Authority and the language of the publication of the application, it must be translated into an appropriate language after the initial filing. A translation must be provided 7 to 19 months after the filing.
The result of an international search, which is favorable to the applicant, will strengthen the position of the application when it is being examined by various national or regional patent offices. Even though the result of the search is not binding on national patent offices, arguments for granting a patent in those countries or regions will become more convincing.
These arguments are even more compelling in the case of a favorable international preliminary report on patentability, which in accordance with the PCT procedures contains more material for the conclusion of patentability.
If the results of the international search and written opinion are only partially favorable, the applicant may amend the claims to increase the chances of obtaining a patent. If the results of the international search and written opinion are unfavorable in all respects, the applicant may decide not to spend money on filing in individual countries.
There is no need to provide each national or regional office with the original drawings or a notarized copy of the priority application. Many countries provide for a reduction in fees in the national phase.