Frequently Asked Questions
What is a utility patent?
In the United States, a patent is a right granted by the U.S. government, via a patent certificate that the U.S. Patent & Trademark Office (USPTO) issues, which allows the inventor of a special type of invention (i.e., a useful product or process that is novel & non-obvious and which hasn’t been publicly used or on sale in U.S. earlier than one year before the inventor is the first to file a patent application with the USPTO that fully discloses the invention) to stop others from making, using, selling or importing into the United States the invention. This right begins on the date the patent issues and generally extends for a utility patent for 20 years from the date on which the patent application seeking the patent was filed. Specified maintenance fees must be paid at certain intervals (i.e., 3.5, 7.5 and 11.5 years) after the patent’s issuance date. See 35 U.S.C. § 101, § 102, § 103, § 112 and § 154(a)(2) and § 271.
How does one go about preparing and filing a suitable utility patent application?
Retain the services of a patent attorney because a suitable patent application is the beginning of the drafting of a unique legal contract between the inventor and the U.S. government. Such an application must meet very demanding legal standards, including a “specification” part of the application containing a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor for carrying out the invention. The specification must conclude with one or more “claims (i.e., legal definitions)” that particularly point out and distinctly identify the subject matter which the inventor regards as his/her invention. With the filing of a patent application, the inventor or applicant must pay the appropriate USPTO filing fees.
What happens to the patent application after it has been filed?
The process of your patent attorney “prosecuting” your application for you begins.
A patent examiner carefully reviews the patent application in order to determine the invention’s patentability (i.e., is it novel, non-obvious, useful, etc.?). The examination workload and staffing of the USPTO are such that this examination process usually extends over a period of 18 to 36 months. When the examiner has made his/her initial patentability determination, the USPTO responds by sending the inventor’s or applicant’s patent attorney what is known as an “Office Action” containing the patent examiner’s determination and the reasons for it. If the Office Action contains a rejection of the claims (which occurs on the first Office Action about 95% of the time) and there exist arguable grounds for contesting the examiner’s determination, your patent attorney typically files a written, argumentative “Response,” usually in the form of an amendment to the specification, to try to overcome the examiner’s rejection. This begins a cycle of Office Actions and written argumentative Responses that continues until the patent examiner can be convinced to allow your application’s claims in their presumably amended form to issue. After the examiner has agreed to allow the presumably amended application to issue as a patent, the inventor must pay the USPTO a patent issuance fee.
What’s the difference between a Provisional Patent Application and a Regular Patent Application?
Provisional Patent Application (PPA): This is only a placeholder, initial application that is usually drafted by your Patent Attorney and is filed with the USPTO to secure an early filing date. Its primary difference with a regular patent application (RPA) is that the PPA need not have at its end one or more “claims” or legal descriptions of the invention. A follow-up RPA must then be filed for the same invention disclosed in the PPA within 12 months after its filing date; otherwise, the benefits of the PPA’s earlier filing date are lost. These benefits can also be lost if the PAA’s disclosure of the invention isn’t sufficiently precise and enabling (this is why it’s usually advisable to allow a Patent Attorney to draft and file it). The PPA is not initially examined by the USPTO.
Regular Patent Application (RPA): A RPA is usually a much more refined and complete document than a PPA; the RPA’s filing is required by the USPTO to begin the actual patenting process. The RPA will be examined by a patent examiner to determine whether its disclosed invention and the application’s description and claims for it meet the USPTO’s patentability requirements. If so, the inventor or inventors filing the RPA will be issued a patent for his/her/their invention.
Is there any way that I can know if the USPTO is likely to grant me a utility patent for my invention before I begin the lengthy and expensive process of applying for a patent?
Yes, by having your Patent Attorney perform what is known as a best-efforts “novelty search.” This will usually involve a time-limited search of the patent publications in the USPTO’s database to determine whether a publication or group of publications within this database fully discloses or make obvious your invention. Such searches are usually performed on an introductory, loss-leader, fixed fee basis and, whatever this fixed fee is, it is usually not enough to cover the actual cost of the search. This is true for two primary reasons: (a) you’re trying to prove a negative (i.e., there is no publication in the USPTO database that discloses or makes obvious your invention), which is really an impossible task since all the publications in the USPTO’s ever-expanding database can never be individually examined in the allotted, permissible time for such a search; and (b) the searcher will usually not have the benefit of a legal description of the invention (since such claims aren’t generally drafted as part of a novelty search) and, without them, a searcher has an extremely difficult job of accurately answering the question of whether a publication actually discloses or makes obvious the invention. Nevertheless, when performing such searches on a best-efforts basis and for a fixed fee which is often on the order of 10% or less of what it might cost to draft a regular patent application, experienced searchers have been able to make preliminary patentability decisions regarding the invention in question that have been shown to be accurate > 95% of the time (assuming that the inventor diligently prosecutes the application and allows his or her patent attorney to respond to, if needed, at least two Office Actions). Not a guarantee, but a result that usually causes most inventors to have a novelty search performed before proceeding with the costly drafting, filing & prosecution of a regular utility patent application.
What does it mean when an invention is said to have a “Patent Pending” status?
Once a patent application, either provisional or regular, is filed, the invention is said to have a “patent pending” status. Inventions having such a status should be marked, either directly are on their packaging, with the words “Patent Pending” in order to give notice to those who see such marks that this invention’s patent application is currently being processed by the USPTO and that if a patent is granted for the invention that one infringing the invention will be liable for patent infringement damages from the date the patent is issued. Such a mark is meant to deter others from infringing your invention.
Are there faster ways than waiting 12 – 24 months to get my patent claims allowed?
Yes. Patent applications are usually examined in the order in which they are received by the USPTO. However, you can jump to near the head of the line by filing with the USPTO, at the same time you file your regular patent application, a Request for Prioritized Examination (RPE) and pay its additional fee of $1,000 – $4,000 depending upon whether the filer is what the USPTO calls a micro entity (e.g., one with an annual gross income < $184,000) and the RPE fee is $1k, a small entity (e.g., a business with < 500 employees) and the RPE fee is $2k, or a standard entity (one that doesn’t qualify for reduced fees) and the RPE fee is $4k. If your application is accepted into the expedited examination program, you will generally receive a First Office Action (i.e., a patent examiner’s initial feedback on the allowability of your application’s claims) from the USPTO in 6 – 9 months compared to the typical 18 – 24 months for a patent application whose examination has not been prioritized.
What is a Design Patent as opposed to a Utility Patent?
A design patent protects from infringement the shape, ornamental features, and appearance of useful objects, while a utility patent protects the way a product or process is used and works. In a typical year, the USPTO receives approximately 15 times as many utility applications as design applications. The content of a design patent application differs from a utility patent application in that all of its invention’s disclosure information is communicate in the application’s drawings; whereas a utility patent application has a carefully written specification and claims, in addition to its drawings, which define and disclose the nature of the invention for which patent protection is being sought. This difference in content allows the filing fees and costs to draft and file a design patent application to be typically on the order of 1/3 that of a utility patent application.
Can I be granted a patent to stop my utility-protected invention from being used and made in a foreign country?
Yes, but foreign utility patents are granted on a country by country or community of countries (e.g., European Union) basis. Thus, depending upon in how many foreign countries you wish to have patent protection, it can be a huge and costly deal to obtain foreign patent protection in a large number of countries. Fortunately, there are various reciprocity patent agreements between the world’s industrialized nations that allows one within 12 months of filing an initial utility patent application in their home country (i.e., a “12 month window”) to file a similar patent application in a foreign country and have that foreign country treat your foreign patent application as it had been filed in their country on the same date that you filed your initial patent application in your home country. Additionally, there is a Patent Cooperation Treaty (PCT) in affect between most countries that allows one to file a PCT patent application, which is usually very similar to your home country patent application, with the World Intellectual Property Organization (WIPO) within your “12 month” window and effectively serve the purpose of you having individually filed your PCT patent application in each of the countries that are signatories of the PCT. Furthermore, the PCT allows you to wait an additional 18 months before you decide in which of the PCT’s signatory nations you actually want to prosecute your PCT application. Each foreign county or community of countries has their own independent Patent Office that will put your PCT patent application though an examination process to determine whether your invention meets its patentability requirements. If so, the foreign patent office will issue you a patent that generally protects your invention in the foreign country in a similar manner to how it is protected in one’s home country.
How do I retain you and what are your payment-for-services procedures?
After I have reviewed your invention disclosure documents or a prototype for your invention and believe that I can help you and you have decided that you want me to help you, I will present you with my standard Engagement Letter (EL) that tries to specifically set out the various steps that I expect to go through in patent protecting your invention and the terms under which I will represent you in providing my patent law services. This EL requires that you pay an initial retainer to retain me, with the amount of this initial retainer being set at the estimated cost of my first step in representing you. You will need to sign my EL and pay me the requested initial retainer in order to complete your process of retaining me. As we go step by step in my representation of you, you will be repeatedly asked to replenish your retainer in the amount of the expected cost of my next step in representing you. If at any time you wish to stop my representation of you, I will draw from your retainer any monies that are needed to pay me for my services through the date on which you stop my representation of you, and I will return to you any balance of funds in your retainer account. You will typically be billed on a month by month basis and such bills will list for you the work that I have done for you in the preceding month and indicate the cost of such work. These bills will also indicate whether your retainer account contains, on the date of the bill, sufficient funds to pay for these costs or whether you must pay any outstanding balance and/or replenish your retainer in a specific amount.
Our hourly rates are as follows:
Larry J. Guffey, Esq. – $425 / hr
Pamela K. Riewerts, Esq. – $325 / hr
Paralegal – $175.00 / hr