Patents protect the utility of new and useful inventions as well as ornamental designs of articles of manufacture. In particular, utility patents cover machines, products and processes (including methods of doing business), and design patents protect the visual impression or “look” of an article of manufacture. A patent enables its holder to prevent others from making, selling or using the subject matter covered by the claims of the patent.
Prior Art Searches
We strongly recommend a search for related patents be conducted in the United States Patent and Trademark Office (“USPTO”) before preparation and filing of any patent application. Although not infallible, a thorough preliminary search is a reasonably reliable indicator of the patentability of an invention. The cost of performing a prior art search and providing a written analysis thereof depends the complexity of the technology in question and the number of patent references produced in the search results.
Provisional Patent Applications
The USPTO offers inventors the option of filing a provisional application for patent. A provisional patent application is designed to provide a low cost initial patent filing in the United States. Provisional patent applications have become a popular means for applicants to secure early filing dates in rapidly evolving spheres of technology such as the Internet, telecommunications, software and biotechnology. They also enable an applicant to use the one-year pendency of the provisional application to develop commercial interest in the technology disclosed in the application.
A provisional application for patent need not follow any particular format. That is, it may be filed without a formal patent claim, oath or declaration, or any prior art disclosure. It provides a way to establish an early effective filing date for a later-filed non-provisional patent application, discussed below, and allows the term “Patent Pending” to be applied to goods or services covered by the provisional patent application disclosure. Perhaps most importantly, the filing of a provisional patent application preserves an applicant’s right to seek foreign patent protection so long as the applicant files the provisional patent application before any public disclosure of the invention (advertisement, sale, etc., discussed below)
It is important to understand that provisional patent applications are not examined on their merits and automatically become abandoned on the one year anniversary of their filing date. Consequently, a provisional patent application does not provide an inventor with any enforceable patent protection for the invention described in the application. To obtain formal patent protection for the invention and also claim priority to the provisional application’s effective filing date, the provisional application must be converted into a non-provisional patent application (discussed below) during the one-year pendency of the provisional application. Conversion of a provisional patent application into a non-provisional patent application usually involves considerable time, effort and cost.
Currently, the USPTO filing fee for a provisional application is $100.00 for individuals, non-profit organizations, universities and for-profit corporations of less than 500 employees, including affiliates (“small entities”) and $200.00 for for-profit corporations of 500 or more employees, including affiliates (“large entities”).
The “disclosure” of a design patent application consists almost entirely of drawings which graphically represent the article of manufacture covered by the application. Consequently, the bulk of the cost associated with a design patent is the expense we incur in retaining a professional draftsman to prepare drawing figures consistent with USPTO drawing requirements and will vary from one invention to another. Estimates of professional draftsman’s costs and fees for preparing suitable design drawings for particular inventions are available upon request. The subject matter that is protectable by design patents has recently been expanded to include computer generated desktop icons. If a website includes novel icons, it may be possible to protect the icons via a design patent.
Non-provisional (Utility) Patents
The legal fees associated with preparation and prosecution of utility patent applications vary considerably depending upon, among other things, the type of patent protection sought, the sophistication of an invention’s underlying technology and the level of a patent applicant’s participation in the process.
Additionally, a utility patent application will be published by the USPTO 18 months after its filing date unless the applicant requests in writing that the application not be published and does not later file a corresponding application in a foreign country.
For utility patent applications, the federal government presently requires filing fees of $500 for small entities and $1000 for large entities.
NOTE: During the pendency of any patent application, an applicant may mark any technology covered by the application with the designation “Patent Pending.” If an application for patent issues as a U.S. patent, but not before then, the patentee should mark the technology covered by the patent with the designation “U. S. Patent No. X,XXX,XXX” to recover maximum money damages in a patent infringement action.
Public Disclosures and Sales
If you wish to file only a U.S. patent application, please remember that the application must be filed within ONE YEAR of the date of first public disclosure of the invention. A public disclosure may assume a variety of forms such as public use of the invention, printed or electronic (including online) publications describing the invention or an actual sale or offer to sell a product made according to the invention.
If international patent protection is desired, most countries other than the U.S. condition patentability of an invention on “absolute novelty.” This means that, except for a very few limited exceptions, there can be no public disclosure of an invention anywhere in the world prior to filing of a patent application for the invention. Therefore, your international patent rights will not be jeopardized if you file either a U.S. patent application (provisional or non-provisional) or a Patent Cooperation Treaty (“PCT”) international patent application prior to any public disclosure of the invention.