Patent Services FAQ

What are the most important points I need to know about patents?
There is nothing like our product on the market; do we really need a patent search?
If I get a patent, does that mean I can make my product?
What is the difference between a design and utility patent?
How long will it take for my patent application to get examined?
Can I expedite examination?
Is the idea worth patenting?
What are the most important things I should know about foreign filing?
What is the total cost of getting a patent?
How much does it cost to maintain my patent portfolio?
Are their patents that you do not do?
What are the most important points I need to know about patents?

Here are “three traps” that snare companies and prevent them from getting patents:

  • Once you disclose a your invention publicly (i.e. not confidentially), or offer something for sale that uses you invention, you have one year to file a U.S. patent application, or you loose the opportunity. Hidden use counts (for example, your “secret sauce” is in software or hidden within your product).
  • Once you disclose your invention publicly, you immediately loose the right to file a patent in most foreign countries (Canada being an exception) unless you first file your U.S. patent application or PCT application.
  • Even if you disclosed an invention in a patent application, once that inventive concept is known in the public for more than a year, the inventive concept can be used against you in future patent applications that depend on information not found in the original patent application.
There is nothing like our product on the market; do we really need a patent search?

A patent search is like a map to a mine field. You wouldn’t want to walk through a mine field without a map? You would be surprised what an well executed in-depth patent search can turn up. It is not unusual for a patent search turns up something unexpected.

I hate to see people waste money. A patent search can potentially save you the time, trouble, and the cost of filing and fighting for a patent application that may be doomed to failure.

A good, well executed patent search can help to define the boundaries of what is patentable and what is not. A well executed patent search makes for a much better patent application.

If I get a patent, does that mean I can make my product?

Unfortunately, a patent does not give you the right to make anything!

A patent gives you the right to prevent others from making or using what your invention.

For example, say company A invented a touch screen and patents it. One of your engineers gets the idea that she can put create a click feeling (called haptic feedback) when a user touches the touch screen.   Your engineer’s idea is new and not obvious but requires company A’s touch screen.

  • Can your get a patent on your engineer’s idea?
    Answer: Yes.
  • Can you make or use your invention:
    Answer: No,

The answer is no because Company A has a patent on the underlying technology. However, since your patent protects a commercially desirable feature, you can always work out a cross licensing arrangement with Company A.

What is the difference between a design and utility patent?
  • A utility patent protects unique structure and functional combinations.
  • A design patent protect industrial design; i.e. the appearance.

Examples: 

For More Information:

Read my Five Minute Patent Bootcamp™ article about design patents.

How long will it take for my patent application to get examined?

On average, according to US Patent Office (USPTO) statistics, it now takes an average of 18 months before your patent application will be examined. However, that number doesn’t tell the whole story. Some examination units take about one year, others take five years. For example, the examination group that handles audio electronics has a first examination estimate of 48 months.

Can I expedite examination?

Yes. There are several ways:

  • Expedited Patent Examination (Track I): 2-3 months for first examination. At the time of filing the patent application, we submit a form (petition) and pay a fee to expedite examination For small entities (companies with less than 500 employees) the fee is just over $2000 in addition to the regular patent filing fee.
  • 12 Month Accelerated Examination Program: 2-3 months for first examination. The US Patent Office will grant accelerated examination in exchange helping the examiner. Under this program, you submit a special in-depth search and a support document (generally 60-100 pages), that identifies the nearest references and analyzes, claim-by-claim, what the references teach and why the claim is patentable.
  • Petition to Make Special Age: 2 months – 1 year for first examination. If one of the inventors is 65 or over, we can petition to have the application expedited. The petition is automatically granted.
  • Various Pilot Programs: The US Patent Office institutes various pilot programs to encourage certain practices or areas of national interest. For example, while it existed, I successfully had six patent applications accelerated under the green technology pilot program. I keep up to date on these programs to help expand your options.
Is the idea worth patenting?

Whether to patent an inventive concept or not is a business decision. Here are some key questions:

  • Is this a feature that will attract customers?
  • Is it worth preventing your competitor from making or using this feature?
  • What does the patent search tell you? Is it a clear yes (nothing exists like it), or is it murky (crowded field with many similar ideas)?

I find it helpful to look at a patentable feature in terms of return on investment. If you can quantify the value of the uniqueness of the feature or product, is it worth at least five times your investment in a patent?

Some huge cautions, and this is based on personal experience:

  • Don’t dismiss an idea because it does not fit into you current product line-up. Look at the overall value of the invention.
  • Don’t dismiss an idea because it seems trivial or simple. As you well know, customers are not always predictable, and this may well turn out to be the winning feature.
What are the most important things I should know about foreign filing?

Here are the most important things you should know about foreign filing:

  • If you intend to file a foreign patent application, make sure you first file either a U.S. provisional or non-provisional, or a PCT application before you publicly disclose your invention or publish information on the underlying concepts. If you disclose your invention publicly, before you file your U.S. patent or PCT application, you loose the right to get a patent in most countries.
  • You have twelve months to file a foreign application or a PCT application after you first file your U.S. patent application or U.S. provisional application if you want to get the benefit of the filing date of the U.S. patent application.
  • A PCT application gives you 30 months after the filing date of your original application to file a patent application in most countries. For example, if you file a U.S. patent application and 12 months later file a PCT application, you have an addition 18 months to file a foreign application in most countries.
What is the total cost of getting a patent?

In a nutshell, based on my current pricing the cost of  getting a typical patent averages just over $10,500. The typical patenting process can be broken down as follows:

  • $1500-$1750: Patentability Search & Opinion
  • $4750-$7500: Patent Application Drafting and Filing
  • $730: U.S. Patent Office Filing Fees ( company < 500 employees)
  • $2250 Office Action Response
  • $730 Issuance Fee (includes $250 my fee)

$9960 to $12,960 Total

for Track I acceleration, add $2090

Assumptions:

The above figures assumes only one office action reply, which is true in major of patent applications I have prosecuted. However, it is possible that the application could have multiple office actions and require a request for continuing examination (RCE). Each office action reply can be $500 to $2500 depending on the nature of the reply. Typically, a substantive complex reply with an examiner’s interview is $2250.

 

How much does it cost to maintain my patent portfolio?

Utility Patents:

The U.S. Patent Office requires that you pay three maintenance fees over the life of the patent to maintain it. The fees are as follows:

  • $800 3-1/2 years after the patent issues
  • $1800 7-1/2 years after the patent issues
  • $3700 11-1/2 years after the patent issues

For the most accurate information, refer to the current fee schedule at the U.S. Patent Office.

Design Patents: 

Design patents protect the industrial design of your products. They do not have maintenance fees.

Are their patents that you do not do?

I do not do patents that are out of my area of expertise. For example:

  • I am not a chemist so I would not do a patent that is purely a chemical process, compound, or formula.
  • I do not do biological patents.

There are certain other areas that I choose not to get involved in. This is not a judgement against others, but simply my own ethical beliefs.

  • I do not do patents that harm or kill other living creatures. For example, I do not do weapons patents. I do not do patents for inventions in the hunting, fishing, or livestock industries.
  • I do not do patents that promote violence.
  • I do not do patents that involve eavesdropping or spying.
  • I do not do patents that encourage gambling.
  • I do not do patents that involve the production of alcohol or other legal recreational drugs.

Have more Questions?

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Patent Knowledge Center

I have written a series of articles designed to help you, the busy executive, program manager, or decision maker, understand key aspects about patents called Five Minute Patent Bootcamp™. Each article is no more than a five minute read, written in plain English. Each article is designed to help you make informed decisions when it comes to protecting both your product inventive concepts and your industrial design.

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