GENERAL PATENTS FAQ’s

A patent is a document that discloses an invention to the public. In exchange for disclosing the invention to the public, the U.S. government grants the inventor rights to exclude others from making, using, or selling the invention claimed in the patent for a period of 20 years.

There are a few types of Patents: Utility Patents, Design Patents, and Plant Patents. Utility Patents protect “new and useful” inventions or discoveries, while Design Patents protect “non-functional, ornamental designs”. Plant Patents protect man-made genetic variations of plants and their seedlings. Most inventions and discoveries are protected as Utility Patents.“On average, it takes 2-1/2 years to complete the application process for a patent in the U.S., according to data in the infographic generated by online patent law service SmartUp. Mechanical engineering patents are likely to take longer, with average wait times clocking in at almost 33 months.” -Entrepreneur Magazine

Earlier this year we put together an infographic that goes over the most commonly asked questions about patents that was published on  Entrepreneur Magazine .This infographic describes the IP landscape in the wake of the new 2013 America Invents Act. The image illustrates the increase in patent applications filed from 2008-2013, as well as shows where the majority of these patents are coming on global, US, and individual levels. It also includes a segment that details the corporate players in the patent game, specifically which companies, government agencies, and universities are filing the most patents. The graphic then continues to layout the time frame for actually obtaining a patent, and provides information about which industries have the longest waiting period. Time will tell what effects the new legislation will have on the data presented.The answer to this question would depend on a number of factors including, for example, the complexity of your invention, the type of your invention, the attorneys fees and whether or not you decide to start with a provisional patent application filing before you undergo the full patent application process. The costs could be greatly increased when pursuing international patent rights.

For the purposes of this article, we will assume that your attorneys work with SmartUp and that you begin your utility patent process with a Provisional Patent Application for a software invention in the USA.

For a quality provisional patent, which secures your patent priority rights for one year, you will not need to pay more than $899 + Gov’t Fee. If you qualify as a micro-entity, your government fee may be reduced to just $65. Else, you will likely be paying a $130 government fee.

Thus, a total $964 is all you would need to budget to maintain your patent pending status for 1 year.

The ‘next step’, would be to follow with a non-provisional patent application that claims patent priority to the provisional patent application. For 2014, our rate is approximately $5000 + Gov’t Fees for the preparation, filing, and representation of your patent application throughout it’s examination under power of attorney. This will have you set for another 1.5 years after the application has been filed, yet still pending examination.

Once examination begins (the average ‘pending examination’ time is 18 months as of USPTO records for 2013), it will likely be that the Examiner would request to hold an interview to discuss the patentability of the application. It would also be likely that we would need to address any objections that the Examiner has to the application (known as an Office Action). This may occur approximately 2 years after your initial provisional patent filing, and I would budget an additional $3000 for the Examination process, including government and attorneys fees.

After the Examination process, you may be granted a patent. Note: A Patent Grant it is never guaranteed! The USPTO has sole discretion in deciding which patent applications are awarded patent rights! Your application hinges on the following question: How much do the Patent Examiner’s like the novelty and non-obviousness of your invention? If your application is granted, you will be expected to pay ‘maintenance fees’ to the USPTO every 3.5 years post allowance for the first 11.5 years of your 20 year patent term. I would budget and additional $5k for this for micro and small entities. The Total in Securing a Patent, including a provisional?

Provisional Filing: $964
Non-Provisional Filing: $5400
Patent Examination: ~$3000
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Grand Total:
Approximately $9000 over the course of 3 years with SmartUp! Once you’ve been awarded a patent, you can expect to pay an additional ~$5000 to the government over the course of your 20 year right to exclude others from making, using, or selling your patent invention! This is really reasonable considering the is a right to a ‘monopoly’ of an item of utility in a capitalist society.

If you are interested in more detail related to your situation it is best to speak with an attorney.

TYPES OF PATENTS

A patent is a document that discloses an invention to the public. In exchange for disclosing the invention to the public, the U.S. government grants the inventor rights to exclude others from making, using, or selling the invention claimed in the patent for a period of 20 years.

A patent grants an inventor rights to exclude others from making, using, or selling the idea claimed in the patent for a period of 20 years. A non-provisional patent application begins the examination process to determine if an idea is eligible for patent grant. This examination process (known as “Patent Prosecution”) can be long, highly technical, and expensive.

 

A Provisional Patent legally establishes the date from which an inventor claims priority to any potential patent rights for his or her idea. Though it begins the “Patent Pending” process, it does not begin the examination process, nor does it grant the inventor a right to exclude others from making, using, or selling his or her idea. Rather, a Provisional Patent is a quick and inexpensive means for an inventor to claim patent priority to his invention. This is important since the first inventor to file his idea with the USPTO wins the priority to the patent rights for the idea! Moreover, it provides an inventor with time to decide whether or not he would like to pursue the more resource intensive endeavor of Patent Prosecution for formal Patent grant.

 

When the inventor decides to begin the Patent Prosecution process, he must convert his provisional application for patent to a non-provisional patent application. The USPTO treats the filing date of the inventor’s provisional application or patent as his priority date for the examination process of the subsequent non-provisional patent application. A provisional patent application is the only legally recognized means by which an inventor can establish a priority date that is earlier than the filing date of his or her non-provisional patent application.

 

During the Patent Examination process of a non-provisional application, your patent attorney advocates your patent rights to the USPTO and persuades the Examiner, under a strenuous proceeding that has 1000 pages of rules (not exaggerating!), to grant you a patent on the application. The Examiner then decides whether or not to grant you a patent. If they Examiner declines, then your patent application goes ‘abandoned’. If the Examiner believes your invention is novel and non-obvious (inventive), then you’re granted a patent. There are appeal procedures in place to contest the Examiner’s patentability opinion.“On average, it takes 2-1/2 years to complete the application process for a patent in the U.S., according to data in the infographic generated by online patent law service SmartUp. Mechanical engineering patents are likely to take longer, with average wait times clocking in at almost 33 months.” -Entrepreneur Magazine

A provisional patent application is a 12-month place-holder for a utility patent. The USPTO allows you to label your invention as Patent-Pending during this 12 month period. If a utility patent is not filed within the 12-month period, your spot in line is lost! Once the utility patent is filed, your utility patent filing claims the patent priority date as the provisional filing date. The patent priority date is the date from which you have a legal claim as the first inventor to have invented the subject matter of your patent application. As such, the patent priority date is an important factor for the examination process through which the utility patent undergoes.

 

The provisional patent application never gets examined for patentability, it only serves as a place holder for examination – however, the patent examiner will carefully scrutinize the content of the provisional patent application during the non-provisional patent application process. So it’s important to have your provisional patent application compliant with all applicable laws in order for it to preserve the patent-priority claim – otherwise, the Examiner can withdraw the patent priority claim and inventors are put in a bad spot, thinking they were patent-pending during the provisional patent process when in fact their patent pending status gets withdrawn upon the examination of the non-provisional utility patent application!

 

So, a provisional saves your spot in line for a utility patent. It is especially important in our first-to-file patent system. It is especially important as you market and as you share your invention/idea with engineers, developers, or those with deeper pockets than you! It always preserves your claim to the invention as those engineers/developers further improve on the invention.A USPTO provisional patent application simply secures your ‘spot in line’ or patent priority date to a later patent application filing.  After you file a provisional application, you will have one-year to follow with a non-provisional (full) patent application to maintain the patent priority date secured by the non-provisional.  It’s important to secure your patent priority date since the inventor with earliest patent priority date may be the only one to win any potential patent rights to an idea in a FIRST-TO-FILE patent system.

 

Here are two weakness of the the provisional patent application:

 

If you have a provisional patent application securing a spot in line, and a third party files a non-provisional on a similar/same invention after your provisional filing date, their application will enter examination before yours and the patent examiner will not have access to your provisional filing to ‘reject’ their non-provisional application until you convert your provisional to a non-provisional.  To make matters worse, if the third party files for a non-provisional with an ‘accelerated examination’ request the USPTO, there is a chance that they might be granted a patent before you even have a chance to convert your provisional to a non-provisional.   This puts the burden on you to monitor the patent filings and inform the patent examiner of your earlier filing date – this is time consuming, prone to problems, and can cost you more than having filed a non-provisional in the first place; and

Often times, provisional patent application don’t give you secure coverage for international rights.  Not every country has a provisional filing system, and claiming priority to a provisional in an international patent, or PCT application, means that the provisional application claimed has all of the elements that a non-provisional patent application would have per international standard – which, in the US, is not required by law.