Bernstein
& Associates
Attorneys
At Law, P.C.
6600 Peachtree Dunwoody Road, N.E.
Embassy Row 400,
Intelligent Innovation
Managementsm
Patent, Trademark, Telephone
(770) 671-1755
and Copyright Law Facsimile
(770) 671-1161
Related Business Matters www.globaliplaw.com
OVERVIEW OF THE PATENT PROCESS:
REQUIREMENT, TIMING AND COSTS
This page provides a brief, general
overview of the patenting process. Each step precedes the next and we always
consult with the inventor before proceeding to the next step.
I. The Patent Search
The
purpose of the patent search is to determine the likelihood of an invention
being allowed in the United States Patent Office. A patent may not be obtained
for an invention that is disclosed by existing patents or other documents. As
part of this process, we will:
• have
a patent search performed to identify existing patents that may have disclosed
your invention or an invention that is sufficiently close as to prevent your
obtaining protection,
• analyze
the results of the search, and
• provide
our opinion on the likelihood of being able to obtain a patent.
The
cost of a search for a mechanical invention is usually in the range of $1,000-1,700,
depending on the complexity of the invention and the patents found from the
search. Chemical, software and electrical inventions may be higher, depending
on the invention, frequently in the range of $1,500-3,000. The search takes
about four weeks to complete.
The
purpose of preparing and submitting a patent application is to obtain the right
to exclude others from making, using and selling your invention for the time
period beginning with the issuance of the patent and ending 20 years from the
date of filing the patent application. In exchange for this right, the inventor
must disclose how the invention is made and works. The application provides a
detailed description of the workings of the invention, the invention’s
significance, preferred design and any alternative designs. A set of drawings
which depict the invention is submitted as part of the patent application, if
necessary.
Since
patent applications are original documents, not just forms, the attorney or
agent who drafts the application must carefully set forth the invention in
technical terms that are set forth by the Patent Office. Typically, attorneys
work by the hour during this drafting process and consult with the inventor to understand
fully all the aspects of the invention and the inventor’s intentions. In this
way, a strong application can be drafted that will hopefully be allowed.
The
cost of preparing and filing a patent application varies over a wide range,
depending on the detail and complexity of the invention and the number of forms
or alternatives possible. Typically, applications can cost in the ranges as
follows: Mechanical $4,500-6,500,
Chemical $5,500-8,000, Electronics $5,000-10,000, Biotechnology $8,000-14,000 or
software $7,000-14,000, or more. Please bear in mind that these are only broad
estimates and that fees will vary depending on the number of embodiments of the
invention to be described, the complexity of the subject matter, the
availability of inventor review, etc.
Drawings
may be required, which are drafted by our patent draftsman according to the
strict requirements of the Patent Office. Drawings are done at a rate of about
$75 per sheet. The filing fee for individual inventors or small companies is a minimum
$375, depending upon the number of claims filed. The drafting process can take
a month or more, depending on scheduling and the level of disclosure provided
by the inventor. Three months after a patent application is filed, the
applicant is responsible for filing a disclosure statement making the Patent
Office aware of any information which may be relevant to the examination of the
application. This usually costs about $150 - 250.
III. The Examination
The
purpose of examining the patent application is to help ensure that the
invention satisfies the standards set by the Patent Office for patentability.
Ninety percent of patent applications are initially refused by the Patent
Examiner. The process of examining an application usually requires that the patent
application be amended and arguments made to persuade the Examiner that the
invention is patentable. We recommend that you budget between $300-1,500 for
typical amendment work, even though less or more may be required in unusual
cases. A first examination can take anywhere from 10-16 months, on average,
after filing. Biotechnology, software and business method inventions are being
examined about 18-24 months after filing. We will advise you of the examination
and discuss preparing a response prior to taking any action.
IV. Issuance
In
the event the application is allowed, the issue fee is $680 and accompanying
legal fee for preparation of the issue documents is approximately $450. There
are also “maintenance fees” due after the patent issues in order to keep the
patent in force. These fees are due 3½, 7½ and 11½ years after the patent
issues.
While
there is no guarantee that the Patent Examiner will find an invention to be
patentable, a well‑drafted application and amendments will help to ensure
patentability. It is our goal to protect your invention and, if patentable, to
obtain the strongest patent possible covering the invention. You should be
aware that this is an investment you may make in your invention. There is no
refund during this process if the application is eventually finally rejected.
A different type of patent that may be available, depending on the invention, is a design patent. A design patent protects the ornamental nonfunctional features of an invention, such as the curved Coca Cola bottle design. An application for a design patent is a simpler process than for a utility patent since the claims in a design patent application are essentially drawings. The charge for preparing and filing a design patent application is approximately $1,800-2,200, plus draftsman’s charges. This figure would include filing fees and attorney fees. This figure would not include costs for responding to office actions or for filing an information disclosure document.
VI. Points
to Consider
A. Prior Disclosure and
B. Confidentiality. It is important to maintain an invention in confidence until a patent application is filed. In you must make a disclosure of the invention prior to filing an application, then you should have a secrecy agreement signed before making any such disclosure. We can provide a secrecy agreement for $175, which includes extra copies and/or a disk for future use. Please note, however, that we strongly recommend that you file a patent application prior to making any disclosures of the invention, to establish your priority in the invention and avoid the loss of any potential patent rights.
C. Disclosure Document. As a preliminary matter, we can file a Document Disclosure with the Patent Office, which provides strong evidence of your conception of the invention as of the date of recordation in the Patent Office. Please note that a Disclosure Document filing is not a patent application, its receipt date can not become the effective filing date of a later filed application, and a patent application must be filed in order to obtain patent protection on the invention. The cost of a Disclosure Document filing is $150, including the filing fee.
We
accept Visa, MasterCard and American Express as alternative methods of payment.
We request our fee in advance for patent searches, and will request an advance
on our services in the event that you would like us to prepare and file a
patent application. Please give us a call if we can be of further assistance.
Click
here if you have a Patent
Question you would like us to answer.
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