STEPS TO OBTAIN A FEDERAL PATENT REGISTRATION
1. Note that there is a one year statutory bar for public disclosure, prior use, or offer to sell or license the invention, so file your patent application promptly. Do not show or discuss your invention with anyone before your patent application is on file. Do not write up your invention and then mail it to yourself thinking this is some form of legal protection for your invention. It is not. You do not need to construct a prototype in order to file a patent application.
2. Provide counsel with a complete disclosure of your invention, and include any magazine articles, books, catalogs or publications on the same or similar devices. Diclosures are accepted in person, or by phone.
3. Request an patentability search from counsel. Cost of search is $750, payable in advance and the search takes approximately one week. The results of the search will include a detailed written opinion together with copies of the patents, which we can email to you. Currently, the best place to conduct a patent search is the US Patent Office because when a patent issues, it may be classified one, two or more different ways and the Patent Office maintains a specialized cross referenced data base for its examiners that allows for the efficient searching of an invention. The search report and patent documents may be provided via email for your convenience.
4. If the search results indicate your invention is or may be patentable, counsel will prepare a patent application at your request. Legal fees to prepare a simple mechanical application will be $2,200, with half payable in advance, and the other half due when the patent application is complete, in approximately 7 to 10 business days. The patent office further charges a $500 filing fee (approximate). A patent application is a complex legal technical document consisting of: Abstract Field of the Invention, Background of the Invention, Summary of the Invention, Brief Description of Drawings, Drawings and a set of Claims that outline the elements of the Invention and their interrelation.
6. Maintenance fees are due at 3.5, 7.5 and 11.5 years and these dates will be docketed by counsel and you will be timely informed as to when the fees are due and payable.
Total costs to file a patent application:
Search Fee .......................................$750 (one week)
Patent application Preparation Fee ...........$2,200 (7 to 10 days)
Filing Fee (paid to US PTO).....................$500
Total Fees ........................................$3,500 - approximate
Above fees quoted are for the application work only and do not include total costs to issue a patent registration.
Issue fee of approximately $1,000 is due when patent issues 2 to 3+ years later; however, your invention and priority date extends back to the date your first filed your patent application, so it is very important that you file your invention promptly. You do not need to make a prototype in order to file a patent application.
Patents are effective for 20 years from the filing date. After your patent issues, you will want to mark all your patented products with the notation “U.S. Pat. No. x,xxx,xxx” to give others notice of your patent rights and preserve your right to recover damages in an infringement proceeding. You should give all prospective licensees and wholesale purchasers a copy of your patent so that if they copy your product or find a source elsewhere, you may be able to collect damages for wilful infringement. Keep a log as to whom you to talk to about wholesale purchases, license agreements, assignments, etc., and the date and if you gave them a copy of your patent. Many distributors will look at a patented product and then have your competitor make a copy overseas for sale in the U.S.
Special Note to Foreign Applicants: If you are a citizen or resident of a foreign country and you wish to file first in the U.S., you should be aware that many countries require you to file first in your country of origin or obtain a waiver before filing in the U.S. Please contact our offices for further details on this matter.
Contact us for information and pricing on foreign patent rights. Patents are territorial in nature and so U.S. patent application covers the 50 States and 7 territories only. Separate filings must be made for other countries and groups of countries, such as the European Patent Organization. To allow yourself time to file in foreign countries, we suggest that clients who are interested in foreign filings should have a PCT (Patent Cooperation Treaty) application filed within one year of their first patent application filing date so they have up to 30 (thirty) months to file individual country applications. We do not guarantee trademark or patent searches, except to the extent we have utilized our best knowledge and efforts, and to the extent required by law, regulation or ordinance. Contact us for further, detailed information on foreign filings.
All fees quoted subject to change. No legal opinions or facts contained herein. Contact the author for further information.