Frequently Asked Questions About the Patent Application Process

Inventors and start-up companies often have a number of questions during their first time through the patent application process. These questions often involve costs, timing, patentability, and clearing up some common misunderstandings of the patent application process. We have placed the most common questions and answers below. If your question is not addressed, please contact us today so that we can assist you.

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What is a patent?

A patent is a set of exclusive rights granted by a country to an inventor (or the patent owner) for a limited period of time in exchange for publicly disclosing an invention. The rights granted by the patent allow the inventor or patent owner to exclude others from making, using or selling the invention during the term of the patent. This right to exclude others allows an inventor or patent owner to protect their market from competitors and recoup research and development costs.

Patents are only one form of intellectual property, and they should not be confused with other forms, such as trademark, trade secrets, industrial designs, or copyright. Each of these forms of intellectual property can be used to protect your business interests as follows:

    • Patents protect inventions, which are solutions to a technological problem.
    • Trademarks protect names, designs and expressions that identify products or services.
    • Industrial design protects visual design of objects that are not purely utilitarian.
    • Trade secrets protect confidential information which is not generally known or reasonably ascertainable (e.g. KFC’s recipe of 11 herbs and spices).
    • Copyright protects an original work (e.g. musical, literary, art, sculpture, software code, etc.).

We can assist you to determine what type of intellectual property protection your business requires.

Who can apply for a patent?

A patent can be applied for by the inventors or an assignee who has obtained rights to the invention from the inventors. The patent application process will typically require all of the inventor’s signatures. An unavailable or unwilling inventor can pose problems in the patent application process.

Is my invention patentable?

In order for an invention to be considered patentable by a patent office, the invention must be:

  • Novel and non-obvious over prior public disclosures;
  • Useful; and
  • Patentable subject matter.

Novelty and non-obviousness are addressed by the patent office performing a search to determine the state of the art and whether the invention has been publicly disclosed. The patent office then determines whether the differences between the invention and the state of the art constitute steps which would have been obvious to a notional “person skilled in the art”.

Usefulness, or utility, requires that an invention have some identifiable benefit and is capable of being used. The utility requirement prevents the patenting of fantastical or hypothetical inventions, such as a death-ray gun or a perpetual motion machine.

Patentable subject matter requires that an invention be directed to “a new and useful process, machine, manufacture, or composition of matter”. Inventions typically satisfy the patentable subject matter requirement if they have a physical embodiment or results in something that is tangible. Software and business method patent applications can run afoul of this requirement if they are not carefully drafted by a professional.

If you would like to determine whether your invention is patentable, please contact us to consider obtaining a patent search.

Should I perform a patent search?

Performing a patent search can be helpful to determine whether your proposed invention is novel and inventive over publicly available material. Any previous patent or publication anywhere in the world that discloses the invention can prevent you from obtaining a valid patent. A patent search can allow an inventor and patent lawyer to make a reasonable assessment of the prospects for obtaining a patent prior to spending the money to prepare a patent application.

Patent counsel have access to more complex patent searching tools, but inventors can also use free tools, such as Google Patents, to perform their own preliminary search. Please contact us if you would like to obtain a patent search for your idea.

 

What is involved in preparing a patent application?

The first step of the process of preparing a patent application involves the inventor providing information to patent counsel or completing an invention disclosure form. This step may have been completed as part of the patent search. The invention disclosure will include a description and drawings (or photographs) of the invention that detail how the invention works. Other useful information includes how the invention improves over existing technology or how the invention solves a problem with existing technology.

The patent lawyer will then take this information to prepare a patent application that includes a description of the invention, claims that define the legal scope of protection, and drawings. The claims are the most critical part of the patent application and are written in a precise technical language in order to provide the broadest possible protection. The description and drawings are drafted to give effect to language of the claims.

Once the patent application is complete and approved by the inventors it can be filed in the patent office. Formal papers must be prepared in accordance with the requirements of the patent office to accompany the patent application upon filing. These can include, for example, an oath or declaration of inventorship, powers of attorney, and assignment documents.

How much does it cost to file a patent application?

First question clients often ask is: How much does it cost to file a patent application?

The cost to file a patent application can vary depending on whether you are filing a provisional patent application or a regular patent application. Provisional patent applications have less stringent requirements and lower filing costs than a regular patent application. Filing a simple provisional patent can cost under $1,000. The cost to prepare and file a regular patent application is typically greater than $6,000. The majority of the cost for the regular patent application is professional time for drafting the patent application.

The initial regular patent application can be filed in additional English-speaking countries for $1,500 to $2,500 or as an international patent application for $4,000. The initial patent application can be filed with the European Patent Office for $6,000 to $7,000, which is much higher but includes multiple European countries. Filing in non-English language countries can be expensive due to the high cost of technical translations and typically ranges from $5,000 to $7,000 per country.

What happens after a patent application is filed?

What happens after a patent application is filed with the patent office? This stage is referred to as patent prosecution and involves formal examination, substantive examination, and post-grant activities with the patent office. Patent prosecution also involves your patent lawyer negotiating the scope of the patent claims prior to granting the application.

A patent application is formally examined upon receipt by the patent office to ensure that the application is complete and that the filing papers meet the formal requirements. This can include reviewing the drawings to ensure they can be reproduced, ensuring the correct fees were paid, and that the filing papers are signed.

Substantive examination of the patent application is to ensure that the novelty and non-obviousness requirements are met. Substantive examination typically occurs about two years after filing the patent application. An Examiner at the patent office will perform a prior art search and issue a report, referred to as an Office Action, that raises objections to the scope of the claims and any other issues.  A response to the Office Action is filed with the patent office to address the objection by amending the scope of the claims, submitting arguments, or both. The process of issuing Office Actions and filing responses can be repeated until the Examiner is satisfied that the patent application is in condition for allowance.

The cost to respond to an Office Action can vary from $1,000 to $4,000 depending on the scope of amendments and the prior art cited by the Examiner. Once the Examiner is satisfied with the application, it will be allowed and an issue fee must be paid. Maintenance fees must also be paid in order to keep the patent in-force.

 

 

What is a provisional patent application?

A provisional patent application is a patent application that can be filed with the United States Patent and Trademark Office (USPTO) that has a reduced filing fee and less formal requirements, primarily not requiring legal patent claims. The provisional application is typically used to obtain an early filing date when there is insufficient time or money to prepare a regular patent application.

Provisional patent applications are not examined by the USPTO and do not result in an issued patent. A regular patent application must be filed prior to the one-year anniversary of the provisional application filing date in order to claim the benefit of the provisional application’s earlier filing date. Although claims are not required, it is important to consider possible claim language in the provisional application because if the claim language used in the regular application is not supported the benefit the provisional filing date can be lost.

How to file an international patent?

There is no international patent, but there is an international patent filing procedure under the Patent Cooperation Treaty that allows an applicant to file a PCT patent application designating a number of countries and regions. The PCT application must then be later filed in each country or region.

There are two main benefits to the PCT application process: 1) a preliminary search and written opinion are provided by the PCT office that assesses the patentability of the claimed invention; and 2) the decision of which countries or regions to file the patent application can be delayed from the usual one year to about 30 months. These benefits come with additional filing costs for the PCT patent application.