Flat Rate Patent Pricing

If the patent examiner decides that more than one invention is claimed, they can require the applicant to choose a single invention to be examined.

If this happens to you, you have the option to file a new patent application, called a divisional application, to get at least some of the unexamined claims examined. A divisional application shares the same drawings and written description (i.e. specification) as its “parent” application, but has some or all of the claims that were restricted from examination.

A divisional application issues as a separate and independent patent from its parent. Because the divisional application shares the same drawings and written description as it’s parent application, it is examined as if it were filed on the same day as its parent.

Your flat rate patent pricing for a divisional application includes preparation of all documents necessary for filing a patent application.

A continuation patent application shares the same drawings and written description (i.e. specification) as its parent application but has a new set of patent claims (i.e. the legal description of the patent). A continuation can claim a broader invention than its parent or a completely different invention than its parent so long the written description and the drawings adequate describe what is contained in the claims.

A continuation patent application  issues as a separate patent with its own patent number. Because the continuation application shares the same written description and drawings as its parent application, it is examined as if it were filed on the same day as its parent.

Say that after you file a patent application, your engineers or product managers come up with some new brilliant innovations. Since these were not disclosed in the original patent application, you will not be able to claim them. This is because the U.S. Patent law is very specific about not adding “new matter” or new ideas to an existing patent application.

Depending on when the information in the original patent application was publicly disclosed or offered for sale, you may be able to file a new patent application called a continuation-in-part.

The continuation-in-part patent application can include drawings and written description from its parent application as well as new drawings and new written description.  The continuation-in-part will usually have claims that depend only on the original material and other claims that depend at least in part on the new material.

The continuation-in-part issues as a separate patent with its own patent number. Any claims that depend only on the description and drawings of the parent, will be examined as if they were filed on the same day as the parent application. Claims that depend at least in part on the new material will be examined using the continuation-in-part’s filing date.

Flat rate patent pricing for the preparation of a continuation-in-part includes preparing all documents necessary for filing the patent application. This includes preparing additional formal drawings and adding new text to the patent specification as required.

A PCT application does not issue as a patent. A PCT aplication is essentially a placeholder for foreign filings. The PCT application allows you to file a patent application in 148 member countries up to thirty months after the filing date of your original application.

Some important things you need to be aware of.

• The PCT application must be filed within 12 months of the filling date of the original application.
• For most foreign countries, the original application must be filed before you disclose your inventive concept publicly.

The U.S. Patent Office typically will issue an Office Action on 80% to 90% of all patent applications. Some Office Actions require a relatively simple response. Here are some examples of simple responses.

• The Examiner has allowed some of the claims and rejected others. You elect to take the allowed claims and cancel the rejected claims. I formally respond to the rejection taking the allowed claims and canceling the rejected claims.
• The Examiner issues a restriction requirement because he or she believes that the application is claiming more than one invention, and is requiring us to choose one of the inventions. I formally respond to the restriction requirement.

Depending on the examination group, 80% to over 90% of patent applications will get an Office Action.

Typically, an Office Action will reject the patent claims for either novelty (i.e. some other application has all the structural elements of the claim) or for obviousness (i.e. a combination of patent applications have all of the structure and functional elements of the claims and the examiner believes it would be obvious to combine them).

These type of office actions typically require a fairly sophisticated response and I find it helpful to speak to the examiner either by phone or WebEx by formal interview.

Typically I charge $2500 for a response with a formal examiner’s interview.

The U.S. Patent Office gives inventors 65 and older a break. If one of the inventors on an application is 65 or over, I file a petition stating the inventor is over 65 and I have in my possession proof of this (a copy of the inventor’s passport or driver’s license on file, for example).

The petition is automatically granted and this results in the application being given priority for examination. This can significantly speed up examination. Under this program, I typically had applications examined anywhere from two to twelve months after filing. This is in contrast to the U.S. Patent Office average of eighteen months.

Overall the U.S. Patent Office has made great strides at reducing the time it takes to get a patent application examined. At one time, you could expect to wait almost 2-1/2 years, on average, to get an application examined. Now, the average is approximately 18 months. However, there are some examination groups that still have large backlogs. For example, patent applications in the audio, media, or film industries can still take up to five years to get your patent application examined.

Fortunately, the U.S. Patent Office has several solutions. One of them is call Prioritized Patent Examination or Track I Patent Examination. You simply file a petition and pay a fee. For small entities (i.e. companies with less than 500 employees), the fee is $1736 petition + processing fee. This is in addition to the regular filing fee of $664.

Typically, patent applications under the prioritized patent examination or Track I patent program get examined within two to three months of filing.

In exchange for this super speedy examination, you agree not to have over 30 total claims and four independent claims in the patent application. This is usually not an issue.

I do not charge anything extra, to fill out the petition form, as a way to encourage my clients to take advantage of this great program. I have enjoyed a 100% success rate with this program. For more information, see my article on Accelerated Patent Examination.

The U.S. Patent Office requires three patent maintenance fees be paid during the life of an issued utility patent in order to maintain it. Failure to pay the patent maintenance fees will result in the patent expiring.

These patent maintenance fees are due before the 3-1/2, 7-1/2, and 11-1/2 anniversary of the patent’s issue date. They can be paid anywhere from six months before the due date and there is a six month grace period after the due date (with a penalty).

When a patent application is allowed, the U.S. Patent Office requires payment of an issue and publication fee. Currently the issue fee is $480 for small entity (i.e. companies with under 500 employees). Currently the publication fee is $0.