Frequently Asked Questions

After receipt of an invention disclosure, an application is prepared and filed with the USPTO. An examiner will examine the application and determine patentability. If the application is allowed, a notice of allowance will be mailed to the applicant. After applicant pays an issue fee, a patent will be issued. If the examiner does not allow the application, an office action (OA) will be sent to the applicant, which will include at least one rejection and an explanation for the rejection. An OA response may then be filed which amends the claims and/or presents arguments to overcome the rejection(s). Ultimately the application will either be allowed or “finally rejected” by the examiner.

Where an application is in final rejection, an applicant’s options include:

1. File an appeal to the Patent Trial and Appeal Board (PTAB)
2. File a Request for Continued Examination (RCE)
3. File a continuation application

It is not unusual to take 18 months from filing an application to obtain a first office action, and 3 years to issuance of the application. The time to a first OA will vary depending upon the backlog of the art unit to which the application is assigned. If the applicant pays extra USPTO fees, the application can be expedited.

There are many factors that drive the cost of obtaining a patent including invention type/complexity, application length, illustration requirements, claims quantity, available prior art, and rigorousness of the examination. A simple mechanical utility patent having no more than 3 independent claims and 20 claims total for a small entity (a single inventor or a business with less than 500 employees) could cost $4,000 in addition to $785 for USPTO filing fees, $1,500 for prosecution, and $500 USPTO issue fees for a total of $6,785. A full listing of USPTO patent fees are found on the USPTO’s Fee Website. USPTO fees are typically adjusted annually.

A fixed fee is charged for each service (application filing, office action response, appeal, etc.). A fixed price fixed schedule quote is provided and approved by the client prior to commencing services. The client may pay by check or PayPal.

While there is no obligation, it may be prudent to do so. The USPTO examiner will also conduct a prior art search. However, if the applicant is aware of prior art that would be material to the patentability of an application, there is an obligation to disclose such art to the patent office.

No. In order to protect an invention in a foreign country, a patent must be obtained in the foreign country.

There are multiple possible routes to obtain a foreign patent but ultimately a timely application must be filed in the foreign country. If you are interested in obtaining foreign protection, please advise as early as possible as many foreign countries require “absolute novelty”.

Filing a patent application for another person (i.e. representing others before the USPTO), requires registration to practice before the USPTO (i.e. the filer must be a registered patent attorney or a registered patent agent).

Both patent attorneys and patent agents must pass the USPTO administered patent bar exam. Either can prosecute a patent application before the USPTO but patent attorneys are also licensed to practice law in at least one state and unlike agents may engage in patent litigation (e.g. sue for patent infringement or defend against a patent infringement suit). The USPTO maintains a roster of registered attorneys and gents which can be accessed HERE.

There are four basic types of US patents: Provisional, Nonprovisional Utility, Design, and Plant.

1. A provisional patent application may secure rights and a priority filing date for one year for a follow-on nonprovisional utility application for a product, process, system, and composition type invention. They have lower filing fees than nonprovisional applications, are not examined and do not publish or issue. While these applications are often “streamlined” compared to nonprovisional utility applications, they do require the full disclosure of any subject matter that is to be relied on in a later filed nonprovisional application.
2. Nonprovisional utility patents (the most common type of patent) secure rights to product, process, system and composition type inventions. They have higher filing fees than provisional applications, are examined, may publish and issue, and if allowed will have a term of generally twenty years from filing (if maintained).
3. Design patents secure rights to the ornamental design of an item (i.e. the appearance of an item). Design patents have lower filing fees than nonprovisional utility patents but higher than provisional applications. They are examined, do not publish, may issue, and if allowed will have a term of 15 years from grant without maintenance.
4. Plant patents secure rights to new cultivated plants. PCT (Patent Cooperation Treaty) or international patent applications are administered by WIPO (World Intellectual Property Organization), are examined, publish, and essentially function as a placeholder in preparation for filing foreign counterpart patent applications.

Additionally PCT (Patent Cooperation Treaty) or international patent applications are administered by WIPO (World Intellectual Property Organization), are examined, publish, and essentially function as a placeholder in preparation for filing foreign counterpart patent applications. Foreign patents are patents issued by foreign countries/states and will vary in term and cost depending upon the country/state.