Frequently Asked Questions (FAQ)

What is the difference between a patent agent and a patent attorney?

The US Patent Office recognizes and will deal with only two types of individuals for the purpose of prosecuting (meaning conducting legal proceedings or making legal) a patent application: (1) the inventor who may represent himself or herself before the Patent Office, and (2) a patent practitioner who could be a Patent Attorney or Patent Agent.

In terms of prosecuting a patent application, both the agent and attorney are equally qualified in the eyes of the Patent Office. The only difference is that agents can not represent their clients if the case is litigated in the Court of Appeals or in court proceedings for an infringement law suit. Examples of prosecuting actions are writing the patent application, determining inventorship, writing amendments, appealing before the Board of Appeals and Interferences, reissuing applications, reexaminations, and making the drawings (though often this is farmed out to experienced draftsmen). Both patent attorneys and patent agents can perform these actions.

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How much does a patent cost?

An attorney typically charges $8,000 - $15,000 for writing up a utility non-provisional patent application (more for a complex utility patent application) whereas a patent agent charges $1800 - $5000 (more for a complex patent application). Please see the front page for the cost of other types of patents. In addition, the Patent Office charges fees for various services it provides and actions it performs. Below are examples of some common charges as of February 2015. Please note that US Patent Office fees are subject to change.

The fees depend on the payment category or entity the inventors qualify for. Currently there are three fee entities: large entity, small entity and micro entity. Companies with 500 employees or more constitute a large entity (also referred to as non-small entities). A small entity includes individual inventors, small business concerns employing fewer than 500 employees, and non- profit organizations such as academic institutions that did not assign or have an obligation to assign their patents to a non-small entity. Small entities receive a 50% reduction in most patent application related fees relative to large entity fees. A micro entity qualifies for a 50% discount on patent related fees relative to the small entity fees. There are two ways to qualify for a micro entity: 1) based on income and 2) based on education.

Qualifying for a Micro Entity based on income entails A) having a prior year gross income of less than three times the US household median income ($51,900 in 2013) and B) “Neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed U.S. patent applications, excluding provisional applications and international applications under the Patent Cooperation Treaty (PCT).” Further details can be found at: http://www.uspto.gov/web/offices/pac/mpep/s509.html

Qualifying for a Micro Entity based on education entails transferring ownership or being under obligation to transfer ownership of the patent to an academic institution. For further details, see: http://www.uspto.gov/web/offices/pac/mpep/s509.html.

As of February 2015, the filing fees (including the basic filing fee, search fee and examination fee) charged by the Patent Office for utility and design patents are as follows:

Large entity Small entity Micro entity
Utility $1600 $730 $400
Provisional $260 $130 $65
Design $760 $380 $190

In addition, the Patent Office charges fees for: amendments, examination, reexamination, search, application size fee, excess claims, extension of time, revival, appeal fees, patent issue fees, statutory disclaimers, and maintenance on patents.

For more information see http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule.

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How do I apply for a patent?

The first determination that should be made is whether the invention is in sufficient shape and form to be patented. For a patent to be granted it must be enabling, meaning that the invention must be described in sufficient clarity so that a person skilled in the art can reproduce it without undue experimentation. Once the invention can be described in such a manner, an application may be filed. The application has three key components: specification, drawings, and claims. These components must be written in a format that is acceptable to the Patent Office as described in the Manual of Patent Examining Procedure. The Patent Office will deal with two types of individuals: the inventor(s) and a patent practitioner whom the inventor authorized to file the application.

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How do I know if my invention is patentable?

It is important to see this from the viewpoint of the US Patent Office. The patent examiner must follow the elaborate and often cumbersome procedures outlined in their manual. In the section titled Patenting 101, I outline the main reasons patents get rejected. The most common reason is prior art patents and publications. The patent applicant is obligated to disclose to the Patent Office any prior art references that he or she is aware of relevant to examining the application. In addition, the examiner will conduct his/her own search for references. The applicant will want to do a search prior to filing the application to a) comply with the Office requirements and b) determine the existence of prior art that would cause the examiner to reject the application.

While even extensive searches cannot guarantee that all the relevant references are found, a basic search has, in my experience, a good likelihood of at least uncovering references that indicate obvious unpatentability. A basic search costs $400 - 700 while a more thorough search costs from $700 to several thousand dollars.

The decision on which search to commission hinges on 1) the amount of money involved in the invention and 2) the urgency to file. If the inventor is trying to make a go/no go decision and has little money to spend, a basic search to rule out non-patentability would make sense. On the other hand, if the potential benefit to risk ratio is high, and if the cost of the search is small compared to the overall cost, an in-depth search may make more sense. For example, if the invention is for a drug to cure cancer that could make millions, several thousand dollars are peanuts in the grand scheme of things. If additional expensive research would be required to develop the drug, the overwhelming concern would be to determine patentability as quickly as possible.

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How do I decide if and when to file for a patent?

I strongly recommend that the inventor file for a patent only in the context of an overall business objective. Good reasons for filing are the prospect of gaining a reasonable return on investment from licensing or gaining a competitive advantage. The process is lengthy and pricey and filing a patent application without a compelling rationale tends to end in a waste of time and money even if the process does result in an issued patent; too many patents now gather dust in the archives of the USPTO.

Assuming that it is in the inventor's best interest to file, the inventor then needs to consider when to file. If only one invention with a clear set of claims is involved, the application should be filed as soon as the invention can be described in an enabling form. Often times, however, additional patentable subject matter evolves over time and the original ideas change significantly or become abandoned. For these situations, the Patent Office has a procedure set up for filing the original idea then filing a "Continuation in Part" to patent subsequent improvements that the inventor may make over time to the original invention. If the invention is in an active and competitive field like biotechnology or computer software, it may be best to file an application for the original invention as soon as possible, then file subsequent continuations as soon as they become patentable. If there is little competition and "improved" inventions are in the works and appear promising, it may be preferable to wait until the improvements become enabled.

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What information do I need to provide to start a patent application?

If the inventor chooses to have a patent practitioner file the application, the process typically starts with signing a power of attorney authorizing the practitioner to represent the inventor before the Patent Office. As complete a description of the invention as possible is needed. The patent practitioner can then write up the specification and the claims for the patent application. The drawings can initially be simple sketches but need to describe the invention in sufficient clarity for enablement purposes. The inventor (or inventors if more than one) will need to sign an oath or (most commonly) a declaration. Once claims are allowed, the Patent Office may require professionally drafted drawings which usually requires a professional draftsperson.

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When should I file a provisional patent application versus a non-provisional application?

In the course of the developing their invention, the inventor(s) may want to 1) test their invention to determine whether or not it works for the intended purpose and 2) assess the market value of the invention. This information is often needed to make a decision whether to continue to pursue the invention but acquiring this information generally requires exposing it to the public. Without patent protection, such an exposure risks having the invention copied and even patented by someone else.

A provisional application offers a low cost option to protect the invention for 12 months which gives the inventors time to develop their invention and assess market appeal. A provisional route also makes sense if the risk, uncertainty or cost of further pursuing the invention is high and the inventor wishes to explore licensing the invention rather than further pursue the development by himself/herself. More information on provisional patents can be found at the link below: http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent

Provisional patent applications cannot be renewed or extended. To continue his/her protection and the patent process, the inventor must file a non-provisional patent application before the provisional application expires. The inventor may decide that the invention does not look sufficiently promising and abandon the process. Conversely, if the inventor has determined during the 12 month pendency of the provisional application that the prospects are positive, the cost of the non-provisional patent potentially becomes an investment in his/her business.

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How long does it take to get a patent and what can I expect in the patent prosecution process?

It is very common for a patent application to be initially rejected. (See Patenting 101 for reasons.) The rejection can be reversed by the practitioner or inventor by arguing against the reasoning of the examiner or by amending the claims to make them acceptable to the examiner. If the examiner disagrees with the practitioner's arguments he will issue a final rejection which narrows the options of the applicant in that only amendments suggested by the examiner that bring the application to acceptance are allowed. However, under certain circumstances, a reexamination request or a continuation application are options that can reopen the prosecution of the patent application. Also the final rejection can be appealed to the Board of Appeals and Interferences. If that fails, the application can be further appealed to the DC District Court or the Federal Circuit Court. Due to high backlogs at the Patent Office, the current average length of time for awarding a patent is two to three years. This does not include continuations or appeals which would further prolong the process. Completion of the process takes longer in high activity areas such as computers and biotechnology.

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Does my invention need to work or demonstrate commercial success in order to be awarded a patent?

The standard for obtaining a patent on an invention is that it be enabling, i.e., a person skilled in the art can reproduce the invention based on the description provided in the patent application without due experimentation. Enablement of an invention can thus be demonstrated by means of an adequate description. If so, the invention is considered to have been constructively reduced to practice as opposed to actual reduction to practice which involves building a prototype of the apparatus or demonstrating the process.

The reason that the Patent Office does not require an actual reduction to practice is that this is often simply impractical. The patent examiner will review the description and claims to make sure that the features and components add up and no outlandish claims are made that have no basis in reality, however.

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