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. Disclosures are accepted in person, or by phone.
3. Request a patentability search from counsel. Cost of search is payable in advance and the search takes approximately one week for a simple mechanical invention. 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 optimal efficient searching of an invention. The search report and patent documents may be provided via email for your convenience. The cost of a patentability search for the following types of inventions may be billed at a higher rate: software, business, and chemical. ($1,000 is a typical charge) Complex inventions often return numerous patents, and we charge $175 for each group of ten patents in excess of twenty patents uncovered in the search.
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, Detailed Description of the Drawings, Drawings and a set of Claims that delineate the elements of the Invention and their interrelation.
5. The completed signed patent application will be submitted to the Patent Office for examination. After a brief initial examination, your application will be assigned an examiner and the full patent examination will take anywhere from a minimum of nine months to eighteen months or more to complete. Any Office Action received from the Patent Examiner will be sent to you for discussion and review with counsel. An issue fee of $1,000 will be due within three (3) months after your patent has been approved by the examiner.
6. Maintenance fees are due at 3.5, 7.5 and 11.5 years and these dates may 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 …………………………………$900 (one week–simple mechanical invention)
Patent application Preparation Fee ………..$2,200 (7 to 10 days)
Filing Fee (paid to US PTO)…………………$530
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. You will be billed additional amounts for items such as Office Actions, formal drawings, continuation applications, divisional applications, and any corrections to, or additions to your patent application, as required by the USPTO. You will be billed for communications to and from the USPTO. You may prepare formal drawings yourself to save money. 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. XXXXXXX”. Before your patent issues, but after you have filed an application, you may mark all your products with the notation “U.S. Pat. Pending”.
Common Law Patents: There is no such thing as a “common law patent”. In the U.S. you cannot sue an infringer for patent infringement unless and until you have received a U.S. Patent Registration from the USPTO. There are no state patent registrations. URBAN LEGEND WARNING: You cannot put an invention disclosure in an envelope, mail it to yourself and create a “common law patent.” There is no such thing. You should always make prompt registration of your inventions and file them with the USPTO promptly after conception and development. You do have the option of filing a “provisional patent application” for $70. This is a far better idea than mailing a description of an invention disclosure to yourself.
Errors of the United States Patent & Trademark Office:
Unfortunately, from time to time the USPTO may create errors in the processing of your application. Sometimes these errors are severe enough that they result in your application becoming inactive. We conduct regular status checks in order to detect any issues soon after they may arise We have no control over errors of the USPTO. You will be billed hourly at our standard rates to rectify any errors created by the USPTO.