Frequently Asked Questions

Patents

What does the term ‘patent pending’ mean?
The term ‘patent pending’ means that an application for patent has been filed or that a patent for the invention has been issued and is in force.

When can I put ‘patent pending’ on my product?

As soon as you file your application, including a provisional patent application.

What is False Marking?

False marking refers to putting the term ‘patent pending’ on a product that is not covered by a patent or for which there is no currently pending application.

If my patent expires for failure to pay the maintenance fee, do I need to take the term ‘patent pending’ off my product?

Yes.

After the term of the patent, do I need to take the term ‘patent pending’ off my product?

Yes.

Is a prior art search necessary?

The USPTO does not require a search be performed. Ultimately, the Examiner will conduct his or her own search. However, the applicant will often be in a better position having performed a search. It may reveal that another has already invented something similar or exactly the same. The search may allow the patent attorney to draft claims that distinguish over prior art that is closely related. For a comprehenisve discussion about patent searching, please read my article, “How to Perform a Patent Search”.

Should I keep my invention “secret”?

You should generally not disclose your invention to anyone other than a patent practitioner. However, you may disclose your invention to another company provided an authorized representative of the company signs an enforceable Non-Disclosure Agreement (NDA). It is also important not to publish an article revealing your invention.

What happens if my invention is publically disclosed / offered for sale?

If you do publicly disclose your invention or offer the invention for sale, you may still be eligible for patent protection in the United States so long as the information was made available not more than one year before the filing date.

What are some advantages to patent protection? 

The main advantage to a patent is that you can prevent others from making, using, and importing the invention for the length of the patent term.

What information should I provide to you?

Drafting a high-quality patent application is a team effort between the inventor and the patent attorney. Since you are the inventor, you will know much more about the invention. It would be expected that you provide a write-up of your invention along with several drawings.

How long does the process usually take? 

The drafting process will usually take 4 to 6 weeks.

How much do you charge for preparing and filing a patent application?

For a non-complex invention, the fee is $4,000. Drawings are additional, and cost $75 per page (usually 4-6 pages).

How much do you charge for a novelty patent search?

Except for business method inventions, $1,000. For business methods, $1,200 since a search of non-patent literature will have to also be performed.

How much do you require up front? 

We require 50% of the amount owed up front and the remainder upon filing.

Do you require a written fee agreement be signed?

Yes.

What forms of payment do you accept?

We accept personal check, money order / cashier’s check, and wire transfer. We also accept credit cards — Visa, Mastercard, Discover, American Express, JCB.

How do you take a credit card payment?

Please call the office with your credit card information or stop by to have your card processed.

Can I prepare my own drawings? 

Simple flowcharts and block diagrams usually can be done without a drafsman using Microsoft Visio ® or similar software product. Drawings depicting screen shots may require the services of a draftsman since they can be difficult to construct. Mechanical inventions usually require the services of a draftsman.

After filing, how long does the application take to be examined? 

The amount of time is dependent on the USPTO. Currently, it takes at least 18 months for the Examiner to start the examination process in most arts. It will then usually take another year or more before the patent issues.

Is it true that usually a patent application is rejected on the first try?

Yes. Most patent applications are rejected on the first try.

What are my chances of the Patent Office granting a patent for my invention?

It is always difficult to figure the likelihood of success. Overall, perhaps 2 out of every 3 applications for utility patents are allowed. However, this statistic includes all sorts of inventions of various different technologies and complexity. Furthermore, some issued patents have claims that are insufficiently broad to have much value.

What other fees might I expect after filing? 

Once the patent is examined, it will usually be necessary to respond to various points that the Examiner has made in one or more Office Actions. Each response will require another attorney’s fee. If the Examiner indicates that the patent is allowable, the Applicant is required to pay an issuance fee. While the patent is in force, the Applicant is required to pay periodic maintenance fees.

How much do you charge to prepare a response to an Office action?

It depends on the difficulty of the response. Usually, it will cost at least $1,200. An appeal brief is at least $2,500 (not including USPTO fees).

Do I have to use your law firm to respond to an Office action?

No, there is no obligation to do so. You may instead have another law firm respond to the Office action.

After the patent issues, are there any other fees due?

Yes. All utility patents are subject to maintenance fees, which must be paid to maintain the patent in force. Currently, these fees are due 3 1/2, 7 1/2 and 11 1/2 years from the issue date.

Please also note that there is surcharge for late payment of maintenance fee.  A patent will lapse if the patentee fails to pay the maintenance fee within 6 months from the due date.

Do design patents require payment of maintenance fees?

No.

In what parts of the world is a U.S. patent enforceable?

The United States only.

Should I file patent applications in other countries? 

Most inventors do not file in foreign countries. The cost is often prohibitive, and unless the assignee will do business outside the US, foreign patent rights may not be beneficial. However, there are certain instances when foreign filing can be advantageous.

Is there an ‘international patent’?

No.

What is the Patent Cooperation Treaty (PCT)?

The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO), between more than 140 countries. The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”. The filing fee for a PCT application fluctuates due to currency exchange rate changes. It is currently about $3,500.

What other ways are there to file a patent application in another country?

Under the Paris Convention, it is possible to file in one or more member country and receive the benefit of the U.S. filing date. Such filing must be done within 12 months of the U.S. filing.

Where can I get a list of the current USPTO fees?

Here.

How much do you charge for a design patent application?

The usual fee is $1,500 + drawing fees ($75 per page, usually about 4 to 6 needed) + government filing fee.

What happens after a patent application is filed?

After an inventor files a patent application, several key events occur. Additionally, there will be additional costs / fees along the way. The following summarizes the post-filing process.

EFS Receipt

Assuming that your application was filed using the Patent Office’s Electronic Filing System, an electronic receipt including a serial number and filing date will be immediately provided. Ask your patent attorney for this information, and make sure you maintain it in confidence.

“Patent Pending”

As soon as you file a patent application (including a provisional application), you may (and should) mark any product that would be covered by the patent were it to issue with the term “Pat. Pending”.

Official Filing Receipt

Shortly after filing, the application will undergo a preliminary review. The Patent Office will look over the application forr formal matters. It is important to carefully review the Official Filing Receipt to ensure that the inventorship information is correct. Bring any errors to the attention of your patent attorney for corrective action.

Notice to File Missing Parts

Any errors found by the Patent Office during the formalities review will be noted on a Notice to File Missing Parts. These must be corrected within two months (which can be extended for a fee). The most common problem is with drawings that are not in an acceptable format.

Patent Application Publication

This will occur 18 months after the earliest filing date. So, if the application claims the benefit of a provisional application, publication will be 18 months from the provisional filing date. Otherwise, it will occur 18 months from the non-provisional filing date. (The only exception to publication is if your application was filed with a Non-Publication Request).

In most cases, the following events will occur after about 18 months or more from the filing date. However, once the examination process starts, the Patent Office will expect timely responses from the applicant.

Restriction / Election of Species Requirement

In many cases, the examiner will issue an initial Office action in which it is asserted that the application claims more than one invention which is patentably distinct from another (restriction) or the application would cover more than one variation (species). The applicant is then asked to elect a group of claims to initially have examined. Thewithdrawn claims can later be filed in one or more Divisional applications at any point to the final disposition of the parent application. Even if the applicant disagrees with the examiner, the applicant must elect a group of claims to prosecute. The restriction / election of species requirement can be challenged by filing a response or petition arguing that it is improper.

Non-Final Office Action(s)

In most cases, the first Office action on the merits will reject all pending claims. It is important to understand that you must respond to the Examiner’s rejection in full within the statutory time period (six months) or the application will go abandoned. After three months, an extension of time fee will be required. To prepare a response, your patentattorney will charge a fee, which depending on complexity, is usually between $1000 and $1500. This amount could be less if the Office action is relatively easy to respond to and the subject matter is non-complex, but it could be higher if the Office action is very detailed (long) and the subject matter is difficult. Usually, it will be easier for the patent attorney to draft a response if he or she drafted the application. Responses to the Office Action can be done by amending the claims, arguing without amending, or a combination of amending the claims and arguments. In certain cases, “evidence” can be submitted in the form of an Affidavit from an expert in the field (such as experimental data showing an unexpected result).

Examiner Interview

It is often a good idea to have your patent attorney conduct an examiner interview. Most of the time, this occurs via a telephone conference with the examiner (and sometimes also the examiner’s supervisor). Proposed claim amendments can be submitted for examiner review. The substance of the interview is then entered into the record. In some cases, an agreement can be reached to allow the case, though most examiners will no longer do this. Note that your patent attorney will usually charge a fee for conducting the examiner interview. However, this can well be worth the expense, if it helps expedite examination.

Final Rejection

If the Examiner is not persuaded by the response, the next Office action could be a Final Rejection. (In some cases, however, the examiner will not make the action final – giving applicant the opportunity to respond again without limitation.) Response to a Final Rejection is tricky. Examiners do not have to enter an after-final claim amendment, and most will not do so. The applicant may wish to respond to the final rejection only with arguments by filing a Request for Reconsideration. Additionally, the Examiner may have indicated allowance of certain claims. (Sometimes, the Examiner will indicate that some claims are allowable in a non-Final Rejection). At that point, you would have to decide whether amend the claims such that the allowable subject matter is incorporated into the independent claims so that the case would be in condition for allowance. It is not at all unusual for the Examiner to issue 3 or 4 (or more) Office actions prior to final disposition of the case. Thus, it is critical for the applicant to properly budget. Often the most valuable patents will require the most effort. On the other hand, be sure to carefully review the prior art found by the Examiner to ensure that your invention is truly patentable. If it is clear that the prior art cited by the Examiner is very close or actually on point and you cannot amend around it, you will have to abandon the application.

Request for Continued Examination (RCE)

Luckily, there is a way to continue the examination process after receiving a Final Rejection. This is by filing a Request for Continued Examination (RCE). However, there is a fee to do so. When an RCE is filed, the applicant can include amendments and arguments. There is no limit on the number of times an applicant can file an RCE, so, in theory, the prosecution process can continue indefinitely.

Appeal to Board of Patent Appeals and Interferences (BPAI)

At any point after receiving a final rejection or being twice rejected, the applicant can appeal the case to the BPAI. However, there is considerable expense to doing this. The filing-associated fees include a Notice of Appeal fee and an Appeal Brief filing fee. Since preparing an appeal brief is a lengthy process, most patent attorneys charge several thousand dollars for this. Appealing the case is often a good idea when it appears that the examiner will not change his or her mind and when the patent involves subject matter that is valuable.

Notice of Allowance

If the examiner determines that your application should be issued (or the BPAI made this determination), the Patent Office will issue a Notice of Allowance. You must pay the issue fee within three months. This cannot be extended.

Issuance

After payment of the issue fee is made, you will receive a date on which the patent will issue. Patents issue each Tuesday of the week. There is no fee for the patent to be issued. You will receive an original copy of the patent (with a ribbon).

Maintenance Fees

All utility patents are subject to maintenance fees, which must be paid to maintain the patent in force. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from the issue date.

Other Costs and Considerations

In addition to the above, there can be other prosecution-related fees and costs. The most common additional expense involves “late fees”, fees to prepare and file petitions, and costs for correcting drawings.

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Trademarks

What is a trademark?
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

What benefit does federal trademark registration provide?

Federal trademark registration provides several benefits, including:

  • Constructive notice nationwide of the trademark owner’s claim.
  • Evidence of ownership of the trademark.
  • Jurisdiction of federal courts may be invoked.
  • Registration can be used as a basis for obtaining registration in foreign countries.
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

When should I use the ®, ™, and SM symbols?

Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to. The federal registration symbol, the R enclosed within a circle, may be used once the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.

The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.