Patent Prosecution

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 What Is a Patent?

Patents are legal designations given to products or ideas that attribute them to a specific individual, or inventor. This protects the idea or product from being imitated or duplicated by other individuals or businesses with permission from the original owner.

This is referred to as unauthorized use and distribution. Federal patent law makes fraud, imitation, and knock-off items illegal.

The United States and other countries will respect a World Trade Organization (WTO) patent. The WTO sets the guidelines for international patent activity.

What Is Patent Prosecution?

Patent prosecution is the process an individual or entity must complete to apply for and obtain a patent. This should not be confused with patent litigation, the term used to describe the process of protecting an existing patent from infringement.

Patents are rights related to property that the government of the United States grants. When an inventor owns a patent to their invention, they are able to exclude other individuals or entities from any of the following in the U.S.:

  • Making the invention;
  • Using the invention;
  • Offering the invention for sale; or
  • Selling the invention.

Who Can File an Application for Patent Prosecution?

Only the actual inventor is permitted to file for a patent. If, however, the inventor is legally insane or has passed away, their legal representative may be able to submit an application.

Patent agents and patent attorneys are registered with the United States Patent and Trademark Office (USPTO) to do the following related to patents on behalf of their clients:

  • Prepare;
  • File; and
  • Prosecute.

What Can be Patented?

Numerous different things may be patented, including:

  • A process: The way an invention performs;
  • A machine: A concrete thing that consists of parts or certain devices or a combination of devices;
  • Article of manufacture: Production of articles for use from raw or prepared materials to give these materials new forms, qualities, or combinations, either by machinery or by hand, for example, ceramics or gloves;
  • Composition of matter: Composition of two or more substances and composite articles either by mechanical mixture or by chemical union, whether they are gas, fluids, powders, or solids. In addition, the term matter has been extended to include genetically altered, living microorganisms;
    • An example of this would be a new sports drink; and
  • An improvement: Improvement of any of the above.

What Is the Length of a Patent?

A patent will have a different duration depending on the category, for example:

  • 20 years: For utility and plant patents; and
  • 14 years: For design patents.

What are the Costs of Obtaining a Patent?

There are several categories of costs related to obtaining a patent. They vary by the type of patent that is obtained.

The filing fees are as follows:

  • Utility patents: $280;
  • Design patents: $180;
  • Plant patents: $180; and
  • Provisional patents: $260.

Patent search fees are paid to the USPTO. The costs for search fees by category are as follows:

  • Utility patents: $600;
  • Design patents: $120; and
  • Plant patents: $380.

Examination fees are paid to the USPTO to determine whether the patent application satisfies all the requirements for the patent to be granted. The costs by category include:

  • Utility patents: $720;
  • Design patents: $460; and
  • Plant patents: $580.

It is important to note that these costs are subject to change. An individual should always verify they are submitting the correct amount for the fees associated with their application.

How Do I Get a Patent?

An individual should take certain basic steps before filing an application for a patent with the USPTO. They should conduct a patent search to ensure no other similar intentions exist.

In addition, the patent search will allow the individual to determine whether their invention qualifies for patent protection. The USPTO has certain specific rules that applicants must follow to file a patent.

The individual who is a first-time applicant must file an application packet. This packet includes the claims of their invention.

With this packet, they should include the following:

  • Any drawings that are relevant to their invention;
  • A declaration of inventorship;
  • A power of attorney, if they have an attorney representing their interests; and
  • An application fee.

Once an individual’s application is filed with the USPTO, it will be reviewed by a patent examiner trained in the field where the invention is relevant. In many cases, the examiner will send the individual a letter asking them questions regarding their application or requiring them to make changes to it.

These requests are referred to as Office Actions. The applicant must respond to these actions by making the requested changes to their application, called amendments.

An individual may also argue to the examiner regarding the objections stated in the office action. This process typically takes between 6 and 8 months to complete.

After reviewing the individual’s responses to the first office action, the examiner may either issue the patent or send the individual a second office action. The second office action typically addresses any new problems created by the response to the first office action.

A second office action process may take up to 1 year. Once an individual has responded to the second office action, an examiner must either issue the patent or reject the application.

If the individual’s patent application is rejected, they can appeal the denial from the USPTO. An appeal may take up to 2 additional years to resolve.

Once the examiner is satisfied with the individual’s application, they will make an allowance, and the applicant will be required to pay the issuance fee. Once the individual pays this issuance fee, they own exclusive rights to the invention not to exceed 20 years from the date of their original application.

The allowance to issuance process may take up to 1 year.

How Much in Total Will a Patent Cost to Get?

The cost of a patent can vary depending on the invention. In addition, the costs may be changed.

The entire patent process, with the minimum costs and attorney’s fees, may cost between $1,000 and $4,000 for a simple electrical or mechanical intervention. If the invention is a very complex computer or high-tech type of product, it may cost between $10,000 and $20,000.

These numbers do not include any costs incurred during an appeal. A patent attorney would be able to provide an individual with a more detailed analysis of the steps required and the costs associated with obtaining a patent.

What Can I Recover if My Patent Has Been Infringed?

Patent infringement refers to the manufacturing or use of an invention or improvement for which another individual owns a patent that the government issues without first obtaining the owner’s permission by:

  • Contract;
  • License; or
  • Waiver.

Several types of patent infringement remedies may be available to a patent owner if infringement occurs, including:

  • Monetary relief;
  • Equitable relief; and
  • Costs and attorney’s fees.

Do I Need an Attorney?

If you are applying for a patent, you should consult with a patent attorney. Your attorney can help you understand the whole process and property complete each step.

In addition, your attorney can help guide you through any unexpected changes you may encounter during the application process. Having the assistance of an attorney will ensure that your patent application is processed as quickly and efficiently as possible.


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