Senior Patent Counsel

"Maximizing the Returns on Your Intellectual Endeavors"

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Overview of the Process for Obtaining a U.S. or Foreign Utility Patent

In order for the independent inventor to realize any financial return within the U.S. on his/her new, useful, nonobvious and heretofore confidential invention, the inventor usually must apply for and acquire the U.S. utility patent rights for the invention. These rights include a cause of action that, for the life of the patent, allows the inventor to go into a federal court and stop others in the U.S. from making, using, importing, selling, and offering to sell the invention. In return for these rights, the inventor must contribute to the U.S. knowledge base by filing with the U.S. Patent & Trademark Office (USPTO) a confidential, legally complex and carefully drafted application for these rights (Note: This is why the invention must, except for a few types of specifically allowable disclosures {e.g., a foreigner's filing of a patent application in their native land less than one year prior to the filing of the U.S. patent application}, be kept confidential until the patent application is filed). The application must: (1) reveal to one skilled in the technology of the invention how to make and practice the invention, (2) distinctly claim and define that which is patently novel in the invention, and (3) be judged by the USPTO to have met the statutory requirements for the invention's patentability. If these requirements are met and the applicant has paid the required fees, the USPTO will grant a patent to the inventor and make the application's contents available to the public.

Confidential Invention Disclosure to the Patent Attorney

For the independent inventor, the legal and administrative complexity of the process for obtaining a U.S. utility patent usually requires the hiring of a patent attorney or agent. Thus, the inventor's first step in this patent procurement process is to disclose confidentially to his/her patent attorney the background details of the invention. These details include explanations of: (a) exactly how the invention works, (b) what useful function or task the invention performs, (c) what problems are solved by the invention, (d) any advantages that the invention has over currently known technology, and (4) the circumstances associated with the conception of the invention. These details and others are usually provided, in part, by having the inventor complete a Confidential Invention Disclosure Form,
To download "Confidential Invention Disclosure Form" in MS-Word format. Click Here.
Instruction for Invention Disclosure Form to download and open with MS-Word.

Novelty Search

Because utility patent protection is only available for new, useful and nonobvious inventions, and because the legal expenses associated with applying for a patent can be large (i.e., $3,000 to greater than $10,000), it is often advisable to first make a relatively low-cost assessment as to whether it is likely that a patent will issue on the proposed invention. This involves investigating technology similar to the proposed invention to determine the state of the art in the area of the invention and what, if any, scope of patent protection may be available for the invention. If the search reveals no prior patents that substantially disclose the proposed invention, it is likely that a patent may be obtained for the invention (depending on how broadly the invention is claimed {discussed below} and assuming the invention meets the other statutory requirements for patentability, including usefulness and nonobviousness). This situation will serve to justify incurring the greater expenses associated with preparing a formal patent application. (Typical fees for a patentability search are $250.00 to $600.00 {Note: a crude, preliminary assessment can be made essentially for free by searching the online databases of post-1977 U.S. patents which are available at internet sites such as the IBM Patent Server at http://www.delphion.com/boolquery}, with the legal fees for the preparation of an opinion letter being $400.00 to $1,000.00 depending upon how much time is required to draft a representative claim to the invention).

Preparation and Filling of the Patent Application

The patent application has two primary sections: the specification and the claims. The specification is essentially a detailed description of the invention, including drawings if necessary, showing what the invention does, how it works, and disclosing its advantages over prior art. The description of the invention must meet certain legal requirements, including that it: (a) be thorough enough to allow a person skilled in the invention's field of technology to make and use the invention, (b) identify the invention's best mode of operation, and (c) provide a basis for and explanation of the terminology that is used in the following claims.

The claims of the patent application are carefully worded, legally structured sentences that vary in definitiveness, with each of these sentences attempting to distinctly define more closely than the others the patentable novelty of the invention. Thus, while one ideal claim might suffice, the patent application almost always contains claims that range from broad ones (which define the invention with the fewest details possible) to narrow ones (which set forth in more detail the specific elements of the invention).

For the USPTO to examine a patent application, a required filing fee must be paid at the time the application is submitted. For a small entity (independent inventors and small businesses {<500 employees}) inventor, this filing fee is now typically $355.00, which is half of the fee paid by the larger, non-small-entity applicants. (Typical legal fees for the drafting of a patent application and its supporting paperwork are $3,000 to $10,000.00, depending upon the complexity of the invention).

Since the implementation of GATT in the U.S., an alternative to the standard patent application has come into existence - the provisional patent application (PPA). It was created to help provide uniformity in the duration of U.S. patent protection that can be obtained by U.S. citizens as compared to that conceivably available to foreigners. For the inventor who has not yet reduced his/her invention to practice and therefore does not have an invention date, the filing of a PPA (which has an initially lower filing fee of $75.00 for small entities and essentially requires only the filing of the specification section) establishes such an invention date, provided that a standard patent application is filed within the next twelve months. If the PPA is sufficient to support the claims of the subsequent patent application, the inventor waits until the last possible day to file it and then practices the invention for 20 years, the inventor will effectively have had 21 years to practice the invention -- the same duration that a foreign applicant, who claims priority to his/her earlier, native-land application, could have under similar circumstances. However, since the assumption of a viable 20 year product life for an invention is unrealistic for all but a few products, the PPA probably offers few benefits for most U.S. inventors, compared to other alternative means of establishing an invention date.

The Examination Process

After the patent application has been filed with the USPTO, a patent examiner carefully reviews the application in order to determine the invention's patentability. The examination workload and staffing of the USPTO are such that this examination process usually extends over a period of 12 to 18 months.

As a result of the American Inventors Protection Act of 1999 (AIPA), unless an applicant requests otherwise by filing and certifying that the invention has not and will not be the subject of an application filed in a foreign country, all patent applications filed on or after November 29, 2000 will be published eighteen months after the application's filing date (or earlier upon request).  The current plans are for these applications to begin on May 29, 2002 to be published electronically on the Internet at www.uspto.gov.  Such published applications will be prior art against later filed applications. 

To be patentable, an invention essentially must be: (1) useful, (2) novel, and (3) nonobvious. The novelty requirement is often consider to be the threshold test for patentability. It generally is satisfied unless: (i) prior to the inventor's invention date, the invention was actually reduced to practice or an application disclosing it was filed by one still diligently pursuing it, or it was patented by another or published anywhere in the world by others or publicly known or used in the U.S. by others, or (ii) prior to one year before the filing date of the inventor's patent application, patented or published anywhere in the world or in public use or on sale in the U.S. as a result of the acts of the inventor or others (Note: This effective one-year grace period for such acts of the inventor is unique to the U.S. patent laws; in foreign countries, such acts of the inventor would bar the inventor from obtaining a patent in their native land).

The probably more demanding, nonobviousness requirement is harder to objectively define. The typical way that an examiner shows obviousness is to cite a number of prior art references that, when combined as suggested by possibly another prior art reference, contain all of the elements of the applicant's invention. The applicant generally challenges the logic of the combination and identifies certain secondary considerations that suggest that the invention was not obvious (e.g., long duration of well recognized need for the invention, prior unsuccessful efforts of others to develop such an invention, degree of commercial success of the invention).

When the examiner has made his/her initial patentability determination, the USPTO responds by sending the applicant what is known as an "Office Action" containing its determination and the reasons for it. If the Office Action contains a rejection of the claims (which occurs on the first Office Action about 80% of the time) and there exist arguable grounds for contesting the examiner's determination, one typically files a "Response," usually in the form of an Amendment, to overcome the rejection. There are usually only two Office Actions and Responses before a final determination is made by the examiner as to the invention's patentability. If this determination is detrimental to the applicant's interests, it can be appealed -- a time consuming and expensive process. (Typical legal fees for responding to Office Actions are $500.00 to $3,000.00, depending upon the complexity of the arguments).

Fees for the Issuance and Maintenance of the Patent

After the examiner has agreed to allow the application to issue as a patent, the small entity inventor presently must pay the USPTO a patent issuance fee of $620.00, which is, in part, to pay for the expenses associated with preparing the application's contents for publication. Periodically during the life of the patent (up to 20 years from the date of filing for those applications filed on or after 6/8/95), the inventor must pay USPTO maintenance fees in order to allow his/her patent rights to continue to be in effect . These come due at times that are measured from the patent's date of issuance. Their amounts increase with time under the assumption that the inventor will realize greater profits on the invention the longer that it has been in existence. For the small entity inventor, these maintenance fees and their due dates are: @3.5 years: $425.00, @7.5 years: $975.00 and @11.5 years: $1,495.00.

Constructive Notice To Potential Infringers

Once a patent is granted, its number should be placed on the invention (i.e., Pat. 6,000,000) in order to give a potential infringer constructive notice of one’s patent rights.  Otherwise, the patentee will only be able to recover damages from an infringer from the day the infringer had actual notice of his/her infringement, rather than from the day the patentee began marking the invention.

Foreign Patent Coverage

To obtain foreign patent coverage, within twelve months of filing a U.S. patent application (i.e., one’s priority date), one needs to start applying for his/her foreign patent rights, this typically includes:

i)  Preparation and Filing of a PCT International Patent Application that is based on the U.S. application (Typical Legal Fee of $1,000 to $2,000, Filing Fee of approximately $2,300 or $3,100, depending upon whether one designates the USPTO or the European Patent Office (EPO) for one’s international novelty search),

ii)  Assuming that the results of the international search report are favorable and that one would like to postpone, from the 20th to the 30th month, from one’s priority date, the expensive step of entering the "national stage" of this process and the filing of the required applications in the specific foreign countries where one is seeking foreign patent rights, before the end of the 19th month from one’s  priority date, one will want to exercise his/her option to have the PCT authorities perform a preliminary patentability examination; this requires the filing of the necessary papers to "Demand" the preliminary patentability examination (Typical Legal Fee of $1,000 to $2,000, assuming no Preliminary Amendment is necessary, with a Filing Fee of $900 or $2,200, depending upon whether the USPTO or the EPO performs this examination),

iii)  Before the end of the 30th month from one’s priority date and assuming that the PCT preliminary examination report is favorable, one has to decide in which foreign jurisdictions he/she will actually file for national patent rights.  The costs involved at this step include individual, national filing fees (e.g., approximate fees: Canada - $1,150, EPO - $4,900, Japan - $3,700), possible translation costs, foreign patent agent filing fees, continuing legal fees for a U.S. patent attorney to supervise this work, and possible later fees involved with making any necessary amendments to the various foreign patent applications.  These "national stage" fees are by far the most expensive step in this process, and it usually is suggested to postpone them until the 30th month in order to give the inventor the maximum possible period of time to assess the marketability of the invention so that he/she can better determine as to whether these final expenses can be cost-justified.



Note:  Cited USPTO fees effective 11/29/00

Copyright © 1997-2001 Larry J. Guffey

[ Main Page ] [ Firm Profile ] [ Biographical Sketch ] [ Intellectual Property Resources ] [ MD Attorney Resources ] [ MD Entrepreneurial Links ]
Recent Published Papers ] [ The U.S. Trademark Registration Process ] [ The U.S. Copyright Registration Process ][U.S. National Phase of a PCT International Patent Application]

Disclaimer: The article's information is not legal advice. It cannot be such since legal advice must be tailored to the specific circumstances of each case, including its jurisdictional law which can vary greatly from state to state. However, it is hoped that the information provided in this article will be helpful to this site's visitors in familiarizing them with issues that may affect them