Americans are innovative people, coming up with new and better products and processes all of the time. In 2011 alone, the government received over 535,000 patent applications. People should understand the U.S. patent application process, referred to as "patent prosecution" by patent attorneys and others in the field, or risk losing the value of their inventions, or potentially worse, infringing on another person's patent.
Of the three major IP protections — patents, trademarks and copyrights — protecting patents is the most important, the most complicated and the most costly. Fortunately for you, our firm works with patents in almost every industry, including electronic and biomedical products, consumer products, and oilfields. We have represented large corporations to machine shops, from R&D teams to individual inventors. Whenever good ideas can be turned into inventions, we stand ready to assist.
Patent Prosecution - Patent Search, Patent Application, and Office Actions
The process of seeking a patent is called "patent prosecution" and can be performed by anyone - no attorney is required. However, laymen who have never sought a patent are well advised to hire representation. If an idea really is worth millions of dollars, then skimping on the protection of it by trying to it on one's own cannot be considered a wise move.
You can hire a patent agent or patent attorney to assist you. A patent agent is not an attorney, but has a technical degree and is registered with the USPTO. A patent attorney is an attorney that has the technical background, but can also represent clients in court. The advantage of a patent attorney is that he is, at least theoretically, more likely to prosecute applications so the resulting claims can withstand a legal challenge in courts. This is not always borne out in practice, but is something consider when choosing patent representation.
Patent Prosecution of a US-issued patent begins with a Patent Consultation, then a Patent Search, the filing of a Patent Application, responses to Office Actions by the United States Patent and Trademark Office (USPTO), and then any needed clean up and a payment of the Issue Fee. There are additional steps to file for patent rights in other countries, but the process described is for the U.S. filing only.
The Patent Consultation
We start with a consultation. The consultation can be via Skype, phone, in our office, or our client's (if he's in the DFW area). The cost is typically $75 (more if we are going to the client's office).
During the consultation, we try to get a good handle on the nature of the invention, ascertain that the invention is ready to be patented, or if the inventor waited too long, determine whether the invention should be protected by use of the Patent Cooperation Treaty in an international process, or the usual process before the United States Patent & Trademark Office.
We will also evaluate who the actual applicants are, as opposed to the inventors (they are not always the same), as well as the business structure for the endeavor. This part of the evaluation helps determine the cost of the fee to file an application, as the Patent Office has three different costs to file, depending on the size of the organization filing, the income of the inventors or owners of the invention, and other details.
During a consultation, we go over the patent process, and provide a written contract for our client to evaluate. All work with clients are pursuant to a written contract, which outlines all of the expected expenses for the prosecution of the patent, from the application filing to the issue fee at the end of a successful prosecution. We will also discuss the difference between a plant, design, and utility patent, and why clients should strive to file non-provisional patents over provisional patents. (The process from this point forward assumes a non-provisional utility patent.)
To perform a patent search, we need to have as many details as possible, but we do not need every detail of every aspect of the invention. More details are better, of course, but it is common to perform the search while the documentation necessary for the patent is still being formalized. We do need to have at least obtain some understanding during the consultation.
Clients sometimes wonder if they should have brought a non-disclosure agreement for our patent attorney to file. We are happy to sign those when it makes a client more comfortable, but it is also true that Warren Norred is always under a duty of non-disclosure both as a Professional Engineer and member of the State Bar of Texas.
The Patent Search
At Norred Law, the first step of patent prosecution is almost always a Patent Search. There are many reasons to conduct a Patent Search, including:
- To ensure that we aren't wasting a client's money. Some patent attorneys will say that a Patent Search is an unnecessary use of client's money - it is just the opposite. When you skip the patent search, you wind up paying many thousands of dollars for an application that raised expectations and did nothing but put attorney fees in the hands of the writer, and wasted perhaps years of an inventor's time that could have been put to better use.
- To ensure that our clients are not infringing existing patents. There are few things more disheartening than to file a patent application, allow a client to start manufacturing his invention, and then have the client receive a cease-and-desist letter from the holder of a patent that covers the invention. Worse yet, the failure to conduct a Patent Search means that a client is now more vulnerable to the claim of 'willful infringement', meaning that the patent holder may look for triple damages in his suit against the inventor who choose to bypass a search.
- To write a better patent application - knowing the level of detail and "crowdedness" of patents in an area assists us to write patents that reflect what patent examiners expect. Performing a Patent Search provides that level of familiarity with the up-to-date patents in an area.
The result of a Patent Search is typically a two- or three-page letter that provides the keywords and result of our search. All our patent searches two important elements:
1) Freedom to Operate - Inventors who are patenting an invention must ensure that they are not infringing someone else's patent. When an attorney is employed to conduct this search, the result is a "Freedom to Operate" opinion. This part of our patent search, conducted by a qualified attorney right here in the United States (and not by some legal sweat shop in India that tosses your confidential information around like a good Dilbert joke), provides a defense any charges of willful infringement (and higher damages) to those who are sued for infringement. This is a matter of due diligence for any manufacturer, distributor or seller of new goods. This part of the Patent Search makes this step well worth the time and effort, as it helps protect the inventor from the treble damage 'willful infringement' claim in a law suit.
2) Patentability Opinion - The goal is to determine if a patent prosecution process will be successful, but nothing is ever guaranteed. We will refer to patents or prior art (existing products that one can find in the open market that may or may not be protected by patents) that we found. We will provide examples of the keywords that we used in our search, and often include particular aspects of the inventions we found, to allow our clients to see why we come to the conclusions we provide, and give our clients an opportunity to look more closely at products that might stop an application.
Cost of a Patent Search
Norred Law usually charges $1200 for a patent search as outlined above, but depending on complexity, the cost of our patent searches has ranged in the last year from $750 to $2500 for various reasons, usually complexity, speed, and commercial value. We will suggest more time performing a search on a product that is being sold and may be actively infringing a patent than an invention that is not in production or likely to infringe.
Most inventors that we work with want and need a patent search that covers both patentability and the "freedom to operate" questions, but you should make sure that anyone you work with both knows the difference, asks you exactly what you are looking for, and provides you with the answer to the questions you were asking. Of course, we can only do our best in a reasonable amount of time for a reasonable cost. As a client, you would not want to pay $10,000 for a patent search that searches every invention in every country, so be aware that the searches are always limited and imperfect. (Of course, if you want a $25,000 patent search, we are here to serve!)
Filing the Patent Application
Assuming that the Patent Search provides a reasonable chance of success and a client wishes to continue, our office then has to have all the details of the invention, including all drawings and bill of materials. As Warren Norred earned a Masters in Electrical Engineering and owned an engineering firm for more than a decade, and still maintains his Professional Engineering license, clients can be sure that he'll understand their invention if given a good explanation, and more importantly, be able to explain it to a patent examiner who works for the USPTO.
An application includes several elements, including an oath, a specification, a set of drawings, an abstract, and claims. To file at the least expensive level, an applicant must include a certification regarding entity size.
Additionally, every application must be classified by subject matter - utility, design, or plant. If you are reading this, it's most likely you are considering a utility patent (a new and inobvious apparatus or method), as opposed to the appearance of an object (design patent) or a new type of rose (plant patent).
Patent applications can be provisional, or non-provisional. Provisional patents are temporary place-holders that establish a date of invention and keeps your place in line at the patent office. However, most provisional patents are not sufficient to perform the task, as they rarely have the full disclosure that is required, because the later-filed non-provisional patent application has to depend completely on the invention as disclosed in the provisional patent, IF the inventor wants to rely on that provisional application filing date.
Filing fees range from $200 to $1600, but are usually $400. The attorney fees for a utility patent usually range from $4k to $7500, depending on the invention and the number of drawings involved. Drafting an application typically takes a month, but the time can be condensed as necessary to meet the needs of an upcoming marketing plan or conference.
Expediting fees can double the cost of the patent application, but have a slightly higher chance of success.
Clients have a "patent pending" from the point that the patent application is filed, and should indicate as much on their products.
Responding to Office Actions
After the application is filed, the Patent Office will take two to three years to respond, unless we file the application under an expedited program. We are happy to update clients on the expected time for the Office to respond, based on the number of patent applications in the category of applications before it.
Applications are typically published for all the world to see at 18 months after filing. Applicants can ask for early publication or ask the Patent Office to refrain from publishing their patent applications until they issue. The advantage of earlier publishing is the ability to sue for pre-issue infringement depends on knowledge of the patent application.
Eventually, the Patent Office issues what we refer to as the First Office Action, so designated because it indicates that it is now engaged with the patent application. At this point, we respond to the First Office Action, and they will reply back, until we eventually receive a Final Rejection, or a Notice of Allowance.
Clients can expect to pay between $1500 and $2500 for each response to the Patent Office. This may happen just once, or many times. Typically it takes two responses, but circumstances control.
After a Final Rejection, an applicant can abandon the effort, file a Request for Continued Examination (RCE), or appeal the rejection. Applicants making money on their invention will tend to file an RCE, which gives the applicant essentially two more opportunities to convince the Patent Office to give them a Notice of Allowance, at the cost between an office action response and a new filing. Applicants not making money tend to abandon the endeavor. Appeals are more rare, and cost more.
When the Patent Office issues a Notice of Allowance, the applicant has two months to pay an Issue Fee. There is often some clean up on the drawings or claims. The total is usually less than $1000 to complete the process.
There are few things more enjoyable that occur in our office than presenting a new patent to a new inventor. Let us help you protect your patent and enjoy that experience! We're at 817-704-3984, and waiting for your call.