Information on the Patent Process
What is a patent?
includes a "specification" containing a description of the
invention, a set of drawings which illustrates the invention, and
one or more "claims" which define the legal rights of the
Who needs a patent?
Anyone who has
an invention that is worthwhile to sell and is likely to be copied
by a competitor can benefit from a patent. The patent gives the holder
a legal monopoly to make, use, and sell the invention for a period
of about 17 years. Of course, the sales of the invention should be
enough to justify the expense of the patent process.
Do I need an attorney?
you do. Even with such books on the market as "Patent It Yourself,"
it is nearly impossible for even the brightest individual to write
a patent. It takes a vast amount of knowledge of the patent process
and skill at writing patent applications to be effective. To demonstrate
the difficulty of writing a patent, consider that the Patent Office
requires all attorneys and agents who do business with it to take
a very difficult exam. Many people who have studied hard take the
exam two and three times before they can pass it.
How much does this all cost?
The cost of
the entire process of obtaining a patent for a simple invention
including fees payable to the Patent Office and to the attorney
will be at least $7,000, assuming that your patent is allowed on
a first examination. If the claims are not accepted on the first
examination, the cost will increase. The complexity of the invention
will increase the cost of writing the patent. Maintenance fees are
also required after 3.5 years. Details about fees are found in Patent
What are the steps in obtaining a patent?
The first step
in obtaining patent protection is the patent search. The patent search
is performed to determine if there are any "prior-art" patents
that anticipate your invention. This is an important step because
you may waste a lot of money if your invention already exists in someone
else's patent application. You may perform a search yourself or have
an attorney do it. Two types of patent searches are available. The
first is a paper patent search which is conducted in the patent office
search room by my patent searcher. The second is an internet search
which is conducted by myself. Your probably wondering if you can get
by with an internet patent search. You can, if it was not feasible
to manufacture your invention before 1976. The internet patent search
database only goes back to 1976. Click here
for cost of patent searches. After a search has been performed,
the attorney will review the prior-art patents in light of your invention
to see if your invention merits the filing of a patent application.
Devices that are not patented are also relevant for determining the
merit of filing a patent.
The second step is writing and filing a patent application on behalf
of your invention. You must also pay a filing fee to the Patent Office.
After the patent application has been received by the Patent Office,
an examiner will be assigned to review the application. He will perform
his own patent search, and then review the invention in light of the
patents found during his search. The examiner will issue the results
of his review in an "office action," 9 - 36 months after
The office action will include a decision on the validity of the claims.
The claims will be accepted, objected to, or rejected. If all the
claims are accepted (this happens in about 1 in 10 applications) then
the patent will be ready for issue. If even one claim is rejected
or objected to then the attorney must file an amendment with the Patent
Office. The amendment will usually include revision of the claims
and sometimes an argument defending the breadth of the claims as stated.
The examiner may not appreciate the claims without an argument defending
When the examiner receives the amendment (this can be 2-6 months after
mailing), he will review the revised claims and arguments. He will
make a decision on whether he agrees with my revised claims and arguments.
If he does, he will issue a "notice of allowance"; if not,
he will issue a second office action. The second office action may
contain the same or additional grounds for rejection of the claims.
At this point you may consider letting the attorney change the claims
to circumvent the examiner's grounds for rejection.
If the examiner continues to reject all claims on the basis of obviousness,
or if you think the examiner's interpretation of the claims are too
narrow, then the attorney will file an appeal. The appeal is brought
before three "examiners-in-chief." They will read a brief
that the attorney has prepared on your behalf and a brief filed by
the examiner, then render a decision on allowability of the claims.
There is a real chance to get an allowance on appeal; the examiners-in-chief
do not "rubber-stamp" the examiners' grounds for rejection.
Filing of a Patent Application Creates Duties on Your Part
prior art must be disclosed to the Patent Office.
The Patent Office needs to know if you have any information which
may be relevant to the examination of your patent application. This
can include newspaper or magazine articles you have read, patents
or other publications you may be aware of, and so on. This information
can also include descriptions of products you've seen on the market.
Disclosing relevant information is your duty; failure to do so could
result in fraud charges against you. You must inform the attorney
of all prior art that you have knowledge of before he files an "Information
Filing must occur within 1 year of offer for sale or publication.
Under the patent laws, you are barred from obtaining a patent if you
have offered your invention for sale, or if you published, or publicly
disclosed the invention more than one year before the date of filing.
You are also barred if you are not the actual inventor.
You must disclose the best mode for executing the invention.
The Patent Office requires you to disclose the invention with the
best structural and functional disclosure that you can think of at
the time the application is filed. This includes both the drawings
and the written description. The disclosure must allow a person of
ordinary skill in the art to make a copy of the invention without
You must "foreign-file" within one year of the U.S. filing
Many foreign countries have a rule that the invention must never have
been publicly described or sold before filing there. However, under
the Patent Cooperation Treaty, there is a one-year grace period to file patent
applications in most major foreign countries, measured from the date
of the U.S. filing. This allows you to "foreign-file" even
if you publicly disclosed your invention or offered it for sale after
you filed in the U.S. (acts of this kind before the U.S. filing date
will act as a bar to some foreign filing.) Canada has a one-year grace
period for acts of the inventor. Design patents (these patents are
concerned with the aesthetic appearance of the invention) must be
foreign-filed within six months, not one year.
Special Note: The GATT agreement has affected U.S. patent laws.
The term of patents filed after June 7, 1995 is 20 years from the
date of filing, which also dates back to the date of the earliest
filed application, if the application relies on any earlier filed
"parent" application. A "provisional" application
may be filed without claims, but includes all the disclosure of a regular
application. The filing fee for a provisional application is only
$65 (with micro entity status) as opposed to $400 (with micro entity status) for a regular application; the attorney fee
to prepare a provisional application is about three-quarters of that
for a regular application.
A provisional application is a good choice if you want the right to
mark your invention "patent pending," but are unsure about
the commercial success. Provisional applications have all the rights
of a regular application but are not examined. A regular application
must be filed within one year of the provisional application to preserve
your rights to the invention.
The fees involved in obtaining a patent are detailed in Patent
Free Initial Consultation
As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.
Credit cards accepted.