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Title 35 of the United
States Code
 Note:
An application for a design or utility patent or a
provisional patent application is not a patent.
Until the Patent Office issues a patent, no patent
rights exist!
For
the applicant filing a first patent application in
the United States, who also desires patents in
other nations, the general rule is do not sell,
offer for sale or disclose publicly your invention,
before the necessary documents are filed in
accordance with the relevant international
treaties. Inadvertent disclosures will bar patents
in most countries. It is also advisable to not
sell, offer for sale or disclose publicly any
information about the invention for those
applicants who plan to file United States
applications.
The
three major classifications of United States
Patents are Utility, Design and Plant
Utility
Patents can describe:
(1) mechanical inventions
(2) electromechanical inventions
(3) electrical inventions
(4) electronics
(5) chemical inventions
(6) manmade microorganisms
(7) pharmaceuticals
(8) processes for making or using any of the
above(1)-(7), and
(9) methods of doing business.
Non-provisional utility
applications
Design applications
Thoughts about provisional
applications
Provisional application
process
Non-provisional utility applications
Illustrative
time line and costs for an applicant filing a
utility application for a "simple" mechanical or
electromechanical invention in the United States
Patent and Trademark Office.
Step 1
Conduct
a prior United States patent novelty search.
Mr.
Pearce's opinion regarding the potential patentability of an invention
accompanies the search report. The fee for this service is payable
in advance, and generally, the minimum charge for this service
is at least US$1170.00.
a) Counseling The Creative® does represent creative
intellectual property owners who have conducted their own patent
novelty search. However, the patent novelty search provides a
starting point for the Application for Letters Patent, and some
prior patent searches are better than others. Recent cases dictate
the desirability of a well rounded patent novelty search.
b) For those who have filed a provisional
application, Counseling The Creative® does
prepare and prosecute utility applications for
Letters Patent flowing there from.
Step 2
If you think
the probability of patentability is favorable, Mr. Pearce prepares
an Application for Letters Patent which claims and enables the
invention. Before preparing the application, a US$1800.00 retainer
is required. Thereafter, depending upon the complexity of the
"simple" invention another US$1800.00 to US$5400.00 will
be required, before the application is filed in the United States
Patent and Trademark Office.
a) If necessary a professional draftsman prepares the
required drawings disclosing the invention. Two to five pages
of drawings are usually needed. Depending on the complexity of
the drawings, the draftsman's charges range from US$200.00 to
US$600.00 per page.
b) Counseling The Creative® does
represent creative intellectual property owners
who have their own draftsman.
c) The Patent Office requires filing and processing fees.
USPTO Fees
Step 3
Within
12-30 months, a patent examiner will respond to the application.
The examiner may deny patentability at this time.
Step 4
A
response to the first office action is filed in the Patent Office.
This document is a factual/legal argument attempting to convince
the Patent Examiner of his erroneous reasoning in rejecting claims
of patentability. The more arguments raised by the examiner the
more counter-arguments the law requires an applicant to set forth
in rebuttal. In view of the US Supreme Court Case of KSR v.
International Co. v. Teleflex Inc., et al., 127 S. Ct. 1727
(U.S. April 2007), where the Supreme Court changed the rules of the
game for Applicants (the prior rules had been in place for more than
twenty years), the costs to prosecute Patents became more expensive
after the KSR International Co. Decision. And in recent years, the US
Patent Office has also changed the rules associated with prosecuting
patents – making it more expensive for Applicants. The retainer for
preparing this response can range from US$1050.00 to about US$6300.00.
a) Depending upon the applicant's
business judgment, additional Patent Office fees
may be required pursuant to United States
Statutes. USPTO Fees
Step 5
After
another 3 to 24 months the examiner issues the second office action.
More often than not, at this juncture, Counseling The Creative®
will receive a Notice of Allowance. In due course, the applicant's
Letters Patent will be issued. The Patent Office requires an Issue
Fee and a Publication Fee. USPTO Fees
a) If the applicant's Letters Patent
are not granted at Step 5, United States law
provides for alternative procedures for
potentially securing Letters Patent
Once
again, the above indicated price ranges are for the
prosecution of an application disclosing a simple
invention, such as, a better mouse trap, an
improved coffee maker, a ball point pen, a baby
bottle or a spark plug changer. Applications
claiming and enabling massive electromechanical
systems, electronics, computer software, methods of
doing business, chemicals or pharmaceuticals, to
name a few, require much more time to prosecute.
Thus, these types of Letters Patents are more
expensive to procure.
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Design applications
Design
patents issue to the ornamentation of an invention
rather than the invention's function or
utility.
Step 1
Depending
upon the ornamental design and the applicant's
business judgment, a prior Design Patent Novelty
search is not usually cost effective. More often
than not, the client will expend more in conducting
the search than it will cost to file an application
for a Design Patent.
Step 2
Mr.
Pearce prepares an application for design patent that claims and
enables the applicant's invention. Counseling The Creative®
requires a US$570.00 retainer, before Mr. Pearce commences preparation
of the creative design application.
a) If necessary a professional
draftsman prepares the required drawings
disclosing the invention. One to five pages of
drawings are usually needed. Depending on the
complexity of the drawing, the draftsman's
charges range from US$100.00 to US$200.00 per
page.
b) Counseling The Creative® does
represent creative intellectual property owners
who have their own draftsman.
c) The Patent Office requires a filing fee.
USPTO Fees
Step 3
The
Patent Office generally requires 12 to 24 months
time before issuing a decision on the Application
for Design Patent. Generally, the Design Patent is
granted. If it is not granted, Mr. Pearce will
estimate his fee for filing a response to the
Patent Examiner's rejections.
a) The Patent Office requires an Issue
Fee. USPTO Fees
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Thoughts about provisional
applications
Under
the General Agreement for Trade and Tariffs (GATT),
United States Law now provides the option to file a
provisional application. As previously set forth,
the filing of a provisional application does not
generate any patent rights! Much of the prevailing
thought, especially that espoused on the World Wide
Web, leads many to think the provisional
application is the latest panacea of American
Patent Law. After review of the following, you may
reach a divergent conclusion.
Filing
a provisional application will establish and
allow:
a) A United States filing date and an
International Priority date showing the
invention was conceived before the filing of the
provisional application in the USPTO.
b) "Patent pending" can be attached to the
invention.
c) For anyone planning to file utility
applications for Letters Patent in nations other
than the United States, the establishment of the
International Priority date can be of vital
importance. Most jurisdictions, with the
exceptions of the United States and the
Philippines, grant utility patent rights on the
first to file basis rather than the United
States' first to invent standard.
d) Reduced filing fees apply for a
provisional application.
Consequences
of filing a provisional application:
a) The USPTO does not examine a provisional
application.
b) Filing a provisional application commences
the one year statutory period for filing both
the United States and international utility
patent applications flowing from the provisional
application. If the United States and
international utility patent applications are
not filed before the expiration of one year
after the filing of the provisional application,
then all United States and international utility
patent rights which may have flowed from the
subject matter set forth in the provisional
application, escheat to the public domain and
may be lost by the applicant.
c) Filing a provisional application cannot provide the creative
applicant with the benefit of receiving the First Office Action
from the USPTO, before filing utility applications in jurisdictions,
other than the United States. Depending upon the international
jurisdictions selected, the filing expenses associated with
international applications can easily exceed US$60,000.00.
d) When filing a provisional application,
United States law mandates that the provisional
conform to the relevant statutory patent law,
except that a claim is not required. Thus, the
provisional application includes a drawing and a
specification that must disclose the utilitarian
best modes of using the invention as well as
enable those skilled in the relevant art to
practice the invention, without requiring them
to conduct undue experimentation.
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Provisional Application
process
Illustrative time line and costs for an
applicant filing a provisional application for a
"simple" mechanical or electromechanical invention
in the United States Patent and Trademark Office.
Step 1
Conduct
a prior United States patent novelty search.
Mr.
Pearce's opinion regarding the potential patentability of an invention
accompanies the search report. The fee for this service is payable
in advance, and generally, the minimum charge for this service
is at least US$1170.00.
a) Counseling The Creative® does
represent creative intellectual property owners
who have conducted their own patent novelty
search. However, the patent novelty search
provides a starting point for the Application
for Letters Patent, and some prior patent
searches are better than others.
b) For those who have filed a provisional
application, Counseling The Creative® does
prepare and prosecute utility applications for
Letters Patent flowing there from.
Step 2
Mr.
Pearce prepares the provisional application that sets forth the
best modes of practicing the invention as well as enabling those
skilled in the art to use the invention. Counseling The Creative®
requires a US$1800.00 retainer, prior to the preparation of the
provisional application. Thereafter, depending upon the complexity
of the invention another US$1200.00 to US$3300.00 will be required,
before the application is filed in the US Patent Office.
a) If necessary a professional draftsman prepares the
required drawings disclosing the invention. One to five pages
of drawings are usually needed. Depending on the complexity of
the drawings, the draftsman's charges range from US$200.00 to
US$600.00 per page.
b) Counseling The Creative® does
represent creative intellectual property owners
who have their own draftsman.
c) The Patent Office requires a filing fee.
USPTO Fees
Step 3a
If
Counseling The Creative® prepared the provisional application,
then approximately nine to ten months, after the provisional was
filed in the USPTO, Mr. Pearce's prepares a creative utility application
for Letters Patent. Depending upon the complexity of the utility
application, a retainer of US$2100.00 to US$4800.00 will be required;
or
Step 3b
If
Counseling The Creative® did not prepare the
provisional application, then approximately three
months before the International Priority date, Mr.
Pearce's prepares a creative utility application
for Letters Patent. Depending upon the quality of
the Provisional Application on file and the
complexity of the utility application to be filed,
a retainer of US$3600.00 to US$7200.00 will be
required.
a) The Patent Office requires a filing
fee. USPTO Fees
Step 4
Within
12 to 30 months a Patent Examiner will respond to the application.
The Examiner may deny patentability at this time.
Step 5
A
response to the first office action is filed in the Patent Office.
This document is a factual/legal argument attempting to convince
the Patent Examiner of his erroneous reasoning in rejecting claims
of patentability. The more arguments raised by the examiner the
more counter-arguments the law requires an applicant to set forth
in rebuttal. In view of the US Supreme Court Case of KSR v.
International Co. v. Teleflex Inc., et al., 127 S. Ct. 1727
(U.S. April 2007), where the Supreme Court changed the rules of the
game for Applicants (the prior rules had been in place for more than
twenty years), the costs to prosecute Patents became more expensive
after the KSR International Co. Decision. And in recent years, the US
Patent Office has also changed the rules associated with prosecuting
patents – making it more expensive for Applicants. The retainer for
preparing this response can range from US$1050.00 to about US$6300.00.
a) Depending upon the applicant's
business judgment, additional Patent Office fees
may be required pursuant to United States
Statutes. USPTO Fees
Step 6
After
another 3 to 24 months the examiner issues the
second office action. More often than not, at this
juncture, Counseling The Creative® will receive
a Notice of Allowance. In due course, the
applicant's Letters Patent will be issued. The
Patent Office requires an Issue Fee. USPTO Fees
a) If the applicant's Letters Patent
are not granted at Step 5, United States law
provides for alternative procedures for
potentially securing Letters Patent
Once
again, the above indicated price ranges are for the
prosecution of an application disclosing a simple
invention, such as, a better mouse trap, an
improved coffee maker, a ball point pen, a baby
bottle or a spark plug changer. Applications
claiming and enabling massive electromechanical
systems, electronics, computer software, methods of
doing business, chemicals or pharmaceuticals, to
name a few, require much more time to prosecute.
Thus, these types of Letters Patents are more
expensive to procure.
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