Frequently Asked Questions
(Patents)
Q. Is a prior art search necessary?
A. For a comprehenisve discussion about patent searching, please read my article, "How to Perform a Patent Search". As noted therein, the USPTO does not require a search be performed. Ultimately, the Examiner will conduct his or her own search. However, the applicant is often in a better position having performed a search. It may reveal that another has already invented something similar or exactly the same. The search may allow the patent attorney to draft claims that distinguish patents that are closely related.
Q. Should I keep my invention "secret"?
A. Yes. You should generally not disclose your invention to anyone other than a patent practitioner. However, you may disclose your invention to another person provided an authorized representative of the company signs an enforceable Non-Disclosure Agreement (NDA). It is also important not to publish an article revealing your invention. If you do publicly disclose your invention, you may still be eligible for patent protection in the United States so long as the information was not made available more than one year before the filing date.
Q. What are some advantages to patent protection?
A. The main advantage to a patent is that you can prevent others from making, using, and importing the invention for the length of the patent term.
Q. What information should I provide to you?
A. Drafting a high-quality patent is a team effort between the inventor and the patent attorney. Since you are the inventor, you will know much more about the invention. It would be expected that you provide a write-up of your invention along with several drawings.
Q. How long does the process usually take?
A. The drafting process will usually take 4 to 6 weeks.
Q. How much do you charge for preparing and filing a patent application?
A. For a relatively simple invention, the fee is $3,500. Drawings are additional, and cost $75 per page (usually 4-6 pages). The US Patent Office filing fee is $462 (3 independent claims, 20 claims). More complex subject matter will add to the cost. However, it is not common to charge more than $4,500 for a patent application. Most of our fees are listed here.
Q. How much do you charge for a novelty patent search?
A. Except for business method inventions, $500. For business methods, $750.
Q. How much do you require up front?
A. We require half the amount owed up front and the remainder upon filing.
Q. Do you require a written fee agreement be signed?
A. Yes.
Q. What forms of payment do you accept?
A. We accept personal checks, money orders / cashier's checks. We also accept credit cards -- Visa, Mastercard, Discover, American Express.
Q. How do you take a credit card payment?
A. We will send you a credit card invoice by email and you will then follow directions to make the payment.
Q. Can I prepare my own drawings?
A. Simple flowcharts and block diagrams usually can be done without a drafsman using Microsoft Visio ® or similar software product. Drawings depicting screen shots may require the services of a draftsman since they can be difficult to construct. Mechanical inventions may require the services of a draftsman.
Q. After filing, how long does the application take to be examined?
A. The amount of time is dependant on the USPTO. Currently, it takes at least two years for the Examiner to start the examination process in most arts. It will then usually take another year or more before the patent issues.
Q. Is it true that usually a patent application is rejected on the first try?
A. Yes. Most patent applications are rejected on the first try. The examination process can be thought of a negotiation between the inventor and the government over the extent of patent protection granted.
Q. What other fees might I expect after filing?
A. Once the patent is examined, it will usually be necessary to respond to various points that the Examiner has made in an Office Action. Each response will require another attorney's fee. If the Examiner indicates that the patent is allowable, the Applicant is required to pay an issuance fee. While the patent is in force, the Applicant is required to pay periodic maintenance fee.
Q. How much do you charge to prepare a response to an Office action?
A. It depends on the difficulty of the response. Usually, it will cost at least $500... but moderately complex responses will be $750. A more complex response will be at least $1,000. An appeal brief is $1,500 (not including USPTO filing / notice fees of about $500).
Q. Should I discuss the application with the examiner?
A. It is often advantageous to have an examiner interview conducted. For more information, please see my article, "Talk With the Examiner" which addresses the details regarding when and how to conduct an examiner interview, as well as the benefits.
Q. Should I file patent applications in other countries?
A. Most inventors do not file in foreign countries. The cost is often prohibitive, and unless the assignee will do business outside the US, foreign patent rights will not benefit the Applicant. However, there are certain instances when foreign filing can be advantageous. Within 12 months of filing the US application (utility or provisional), the Applicant may elect to file a Patent Cooperation Treaty (PCT) application. Most countries in the developed world are members of the PCT.***
Note: The filing fee for a PCT application fluctuates due to currency exchange rate changes. It is currently about $3,500.
Note: A patent application can also be filed in a foreign country under the Paris Convention (instead of the PCT). Call to discuss.
Q. Where can I get a list of the current USPTO fees?
A. Here.
Q. How much do you charge for a design patent application?
A. The usual fee is $1,200 + drawing fees ($75 per page, usually about 4 to 6 needed) + government filing fee ($262).
(Trademarks)
Q. What is a trademark?
A. A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
Q. What benefit does federal trademark registration provide?
A. Federal trademark registration provides several benefits, including:
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Constructive notice nationwide of the trademark owner's claim. |
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Evidence of ownership of the trademark. |
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Jurisdiction of federal courts may be invoked. |
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Registration can be used as a basis for obtaining registration in foreign countries. |
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Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods. |
Q. When should I use the ®, , and SM symbols?
Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to. The federal registration symbol, the R enclosed within a circle, may be used once the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.
The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.
