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Frequently Asked Patent Questions and More
Provided for informational purposes only, not intended as legal advice
What are the different types of patent applications?
Provisional applications are "informal" applications that focus on protecting the function of an invention and is a precursor to the regular utility application. Inventors who are still adjusting and modifying the invention, or testing the marketplace, can benefit from provisional applications because it allows the inventor to become patent-pending relatively quickly and inexpensively. The downside of this application is that in a year, a decision must be made to either prepare and file a utility application, which has the benefit of the provisional application's early filing date, or abandon the invention. Provisional applications are typically prepared and filed based on a flat rate, although depending on the complexity, hourly charges may also apply on top of the flat rate.
Design applications cover decorative features of a functional item whose features are not separable from the item. A good example is the shape of a lamp base. If the decorative portion of the item can be removed, for instance, there is a design printed on it, this is not proper subject matter for a design application. An embossed design however would be appropriate. Design applications are also typically prepared and filed for a flat rate.
Utility applications are regular patent applications covering the function of a thing or a method of doing/making something. These applications are complex and formal and often the written specification is between 25 to 50 pages long. This application is examined by the patent office and either becomes a patent grant, or goes abandoned. Once abandoned, the invention is now in the public domain, meaning anyone can use it. The US patent database comprising patent grants and published applications is the world's greatest repository of creativity. All utility patent applications look just like the patent grants in the database in terms of formality, and have specific drawings which are best prepared by professional patent illustrators due to their technical requirements.
What is the cost to prepare a utility patent application?
Your cost depends on the invention's characteristics and how much time it takes to describe it. Broadly speaking, a typical mechanical-electrical invention is between $5k-10k including all filing fees and illustrator fees. Software patents are generally between $10k-$20k, and unless the inventor is an expert in the software technology, a search is generally advisable. Note that the cost to prepare the application is not the total cost to obtain the patent grant; total cost, including examination, ranges from $5k-$15k for a typical mechanical-electrical invention, and $20k+ for a software. Overall cost vary widely however because there are many factors at play. Normally I can only predict application preparation cost because examination has so many factors over which I have no control. However, preparing better applications generally means shorter examinations and thus lower overall cost. A long examination can easily be 5 times the cost of application preparation.
Beware a cheap patent application preparation cost: the lawyer might be setting you up for a long, lucrative examination. Historically, I have been able to obtain a patent allowance after 1 examination letter 90% of the time with my prosecution method. The reason for preparing a strong application is precisely to avoid a long examination. The more rejections from the examiner, the less likely the patent will be granted while your costs rise exponentially. My clients' businesses revolve around their inventions, so getting the grant is my top goal - and that means preparing better applications to make examination easier/faster.
I've invented something. What do I do first?
If you have any desire to commercialize your invention, you must apply for a patent before you reveal your invention to others. The law now is essentially "first to file" and there are many practical and tactical reasons to file a patent application to establish your earlier invention date. There are fast and relatively cheap options to become patent-pending, so there is no excuse for not filing sooner rather than later.
Note that mailing a copy to yourself is NOT proof of early invention date, and is not useful at all.
Do I need a Patent?
It depends on many factors, including what the invention is, how you intend on commercializing it, the size and sophistication of the market, etc. Generally speaking, gadgets need patents to protect value of licensing, etc. Small markets or areas with little competition used to negate the value of obtaining a patent, but with Amazon, even gadgets with small markets still benefit from patent protection. If you have a gadget, the lack of a patent means that you'll deal with competitors who are happy to copy your design and undercut you. If you are trying to license your gadget, it is pretty much impossible if you are not at least patent-pending.
Why is using a patent lawyer better than using a patent agent?
A patent lawyer has a law degree and is admitted to practice law in one or more states. The extra legal training means that these lawyers have both technical and legal skills, and having someone who has persuasive oral and writing skills is important and can mean the difference between a good patent and a useless one. Lawyers can also do more services, and have an eye towards enforcement later on, something that is not necessarily the focus of agents, nor of examiners. DIY inventors who rely on examiners to help write claims is risky because the examiner is not necessarily interested in broad claims. If your claims are too narrow, you may have a useless patent.
Overall, though, experience counts. Anyone with a registration number less than 30,000 is often retired or close to it. My registration number is in the 45000 range, which puts me at 25 years of experience as a patent attorney. I'm in a sweet spot!
When can I stop an infringer?
You must have a patent grant before you can stop an infringer. Until then, you are just patent pending. For trademarks, you may be able to sue now based on unregistered use, if you have no registration, but it depends on your particular circumstances. For copyright, you are not able to take advantage of the penalties in the Copyright Act without registration of your work prior to commencing a lawsuit. This is a unique feature of the US system that doesn't exist elsewhere.
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Frequently asked questions