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FAQ
What is the difference between a patent agent and a patent attorney? The US Patent Office recognizes and will deal with only two types of individuals for the purpose of prosecuting (meaning conducting legal proceedings or making legal) a patent application:
In terms of prosecuting a patent application, both the agent and attorney are equally qualified in the eyes of the Patent Office. The only difference is that agents can not represent their clients if the case is litigated in the Court of Appeals or in court proceedings for an infringement law suit. Examples of prosecuting actions are writing the patent application, determining inventorship, writing amendments, appealing before the Board of Appeals and Interferences, reissue applications, reexaminations, and making the drawings (though often this is farmed out to experienced draftsmen). Both patent attorneys and patent agents can perform these actions. The cost of prosecuting a patent using a patent agent is about half of that of a patent attorney. An attorney typically charges $5,000 – $15,000 (and upward) for writing up an initial patent application whereas a patent agent costs $1800 – $5000 (more for a complex patent). An attorney typically charges $5,000 – $15,000 (or more for a complex patent) for writing up an initial patent application whereas a patent agent charges $1800 – $5000 (or more for a complex patent). In addition, the Patent Office charges fees for various actions that it performs. Below are examples of some common charges as of April 2006. US Patent Office fees are subject to change. Note that a small entity includes: individual inventors, small business concerns employing fewer than 500 employees, and non profit organizations such as academic institutions that did not assign or have an obligation to assign their patents to a non small entity. Small entities receive a 50% reduction in most patent application related fees. (a) Basic fee for filing each application for an original patent, except design, plant, or provisional applications: (b) Basic fee for filing each application for an original design patent: (c) Basic fee for filing each application for an original plant patent: (d) Basic fee for filing each provisional application: (e) Basic fee for filing each application for the reissue of a patent: In addition, the Patent Office charges fees for: amendments, examination, reexamination, search, application size fee, excess claims, extension of time, revival, appeal fees, patent issue fees, statutory disclaimer, and maintenance on patents. For more information see links . The first determination that should be made is whether the invention is in sufficient shape and form to be patented. For a patent to be granted it must be enabling, meaning that the invention must be described in sufficient clarity so that a person skilled in the art can reproduce it without undue experimentation. Once the invention can be described in such a manner, an application may be filed. The application has three key components: specification, drawings, and claims. These components must be written in a format that is acceptable to the Patent Office as described in the Manual of Patent Examining Procedure. The Patent Office will deal with two types of individuals: the inventor(s) and a patent practitioner whom the inventor authorized to file the application. How do I know if my invention is patentable ? It is important to see this from the viewpoint of the US Patent Office. The patent examiner must follow the elaborate and often cumbersome procedures outlined in their manual. In " Patenting 101 , " I outline the main reasons patents get rejected. The most common reason is prior art patents and publications. The patent applicant is obligated to disclose to the Patent Office any prior art references that he or she is aware of relevant to examining the application. In addition, the examiner will conduct his own search for references. The applicant will want to do a search prior to filing the application to a) comply with the Office requirements and b) determine the existence of prior art that would cause the examiner to reject the application. While even extensive searches can not guarantee that all the relevant references are found, a basic search has, in my experience, a good likelihood of at least uncovering references that indicate obvious unpatentability. A basic search costs $100-300 while a more thorough search costs from $400 to several thousand dollars. The decision on which search to commission hinges on 1) the amount of money involved in the invention and 2) the urgency to file. If the inventor is trying to make a go/no go decision and has little money to spend, a basic search to rule out non-patentability would make sense. On the other hand, if the potential benefit to risk ratio is high, and if the cost of the search is small compared to the overall cost, an in-depth search may make more sense. For example, if the invention is for a drug to cure cancer that could make millions, several thousand dollars are peanuts in the grand scheme of things. If additional expensive research would be required to develop the drug, the overwhelming concern would be to determine patentability as quickly as possible. How do I decide if and when to file for a patent? I strongly recommend that the inventor file for a patent only in the context of an overall business objective. Good reasons for filing are the prospect of gaining a reasonable return on investment from licensing or gaining a competitive advantage. There are many patents that were filed and awarded only for the sake of glorifying the name of the inventor. They now gather dust in the archives of the US Patent Office. Assuming that it is in the the inventor's best interest to file, the inventor then needs to consider when to file. If only one invention with a clear set of claims is involved, the application should be filed as soon as the invention can be described in an enabling form. Often times, however, additional patentable subject matter evolve over time, and the original ideas change significantly or become abandoned. For these situations, the Patent Office has a procedure set up for filing the original idea then filing a "Continuation in Part" to patent subsequent matter that stems from the original invention. Where the invention is in an active and competitive field like biotechnology or computer software, it is best to file an application for the original invention as soon as possible, then file subsequent continuations as soon as they become patentable. If there is little competition and "improved" inventions are in the works and appear promising, it may be preferable to wait until the improvement is enabled. What information do I need to provide to start a patent application going? If the inventor chooses to have a patent practitioner to file the application, the process typically starts with signing a power of attorney authorizing the practitioner to represent the inventor before the Patent Office. As complete a description of the invention as possible is needed. The patent practitioner can then write up the specification and the claims for the patent application. The drawings can initially be simple sketches but need to describe the invention in sufficient clarity for enablement purposes. The inventor (or inventors if more than one) will need to sign an oath or (most commonly) a declaration as described in the links . Once claims are allowed, the Patent Office will require professionally drafted drawings which usually requires a professional draftsperson. When to file a provisional patent application and when to file a non-provisional application? A key advantage of filing a provisional application is to protect the invention while assessing the market value of the invention. In the course of surveying potential customers about the need for the product, a provisional application protects the invention and puts potential infringers on notice. The provisional route also makes sense if the risk, uncertainty or cost of further pursuing the invention is high and the inventor wishes to explore licensing the invention rather than pursue further the development himself. How long does it take to get a patent and what can I expect in the patent prosecution process? It is very common for a patent application to be initially rejected. (See Patenting 101 for reasons.) The patent examiner needs only a "prima facie" (the appearance) of unpatentability. The rejection can be reversed by the practitioner or inventor by arguing against the reasoning of the examiner or by amending the claims to make them acceptable to the examiner. If the examiner disagrees with the practitioner's arguments he will issue a final rejection which narrows the options of the applicant in that only amendments suggested by the examiner that bring the application to acceptance are allowed. However, under certain circumstances and for a fee, a reexamination request or a continuation application are options that can reopen the prosecution of the patent application. Also the final rejection can be appealed to the Board of Appeals and Interferences. If that fails, the application can be further appealed to the DC District Court or the Federal Circuit Court. Due to high backlogs at the Patent Office, the current average length of time for awarding a patent is three years. This does not include continuations or appeals which would further prolong the process. Completion of the process takes longer in high activity areas such as computers and biotechnology. Does my invention need to work or demonstrate commercial success in order to be awarded a patent ? The standard for obtaining a patent on an invention is that it be enabling, i.e., a person skilled in the art can reproduce the invention without due experimentation. If so, the invention is considered to have been constructively reduced to practice as opposed to actual reduction to practice which involved building a prototype of the apparatus or demonstrating the process. The reason that the Patent Office does not require an actual reduction to practice is that this is often simply impractical. Nevertheless, the lack of actual reduction to practice puts the inventor at a disadvantage in some situations if an interference* is declared. While interference practice is complicated, the inventor who shows diligence in actually reducing the invention to practice receives priority over the inventor who did not even if the other inventor filed earlier (http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2138_01.htm#sect2138.01). * An interference takes place if two different inventors working for different enterprises filed for the exact same invention within a year of each other. |
