The Patent Process

What is a patent?It generally includes a “specification” containing a description of the invention, a set of drawings which illustrates the invention, and one or more “claims” which define the legal rights of the inventor.

Who needs a patent?Anyone who has an invention that is worthwhile to sell and is likely to be copied by a competitor can benefit from a patent. The patent gives the holder a legal monopoly to make, use, and sell the invention for a period of about 17 years. Of course, the sales of the invention should be enough to justify the expense of the patent process.

Do I need an attorney?Unfortunately, you do. Even with such books on the market as “Patent It Yourself,” it is nearly impossible for even the brightest individual to write a patent. It takes a vast amount of knowledge of the patent process and skill at writing patent applications to be effective. To demonstrate the difficulty of writing a patent, consider that the Patent Office requires all attorneys and agents who do business with it to take a very difficult exam. Many people who have studied hard take the exam two and three times before they can pass it.

How much does this all cost?The cost of the entire process of obtaining a patent for a simple invention including fees payable to the Patent Office and to the attorney will be at least $7,000, assuming that your patent is allowed on a first examination. If the claims are not accepted on the first examination, the cost will increase. The complexity of the invention will increase the cost of writing the patent. Maintenance fees are also required after 3.5 years. Details about fees are found in Patent cost.

What are the steps in obtaining a patent?The first step in obtaining patent protection is the patent search. The patent search is performed to determine if there are any “prior-art” patents that anticipate your invention. This is an important step because you may waste a lot of money if your invention already exists in someone else’s patent application. You may perform a search yourself or have an attorney do it. Two types of patent searches are available. The first is a paper patent search which is conducted in the patent office search room by my patent searcher. The second is an internet search which is conducted by myself. Your probably wondering if you can get by with an internet patent search. You can, if it was not feasible to manufacture your invention before 1976. The internet patent search database only goes back to 1976. Click here for cost of patent searches. After a search has been performed, the attorney will review the prior-art patents in light of your invention to see if your invention merits the filing of a patent application. Devices that are not patented are also relevant for determining the merit of filing a patent.

The second step is writing and filing a patent application on behalf of your invention. You must also pay a filing fee to the Patent Office. After the patent application has been received by the Patent Office, an examiner will be assigned to review the application. He will perform his own patent search, and then review the invention in light of the patents found during his search. The examiner will issue the results of his review in an “office action,” 9 – 36 months after filing.

The office action will include a decision on the validity of the claims. The claims will be accepted, objected to, or rejected. If all the claims are accepted (this happens in about 1 in 10 applications) then the patent will be ready for issue. If even one claim is rejected or objected to then the attorney must file an amendment with the Patent Office. The amendment will usually include revision of the claims and sometimes an argument defending the breadth of the claims as stated. The examiner may not appreciate the claims without an argument defending them.

When the examiner receives the amendment (this can be 2-6 months after mailing), he will review the revised claims and arguments. He will make a decision on whether he agrees with my revised claims and arguments. If he does, he will issue a “notice of allowance”; if not, he will issue a second office action. The second office action may contain the same or additional grounds for rejection of the claims. At this point you may consider letting the attorney change the claims to circumvent the examiner’s grounds for rejection.

If the examiner continues to reject all claims on the basis of obviousness, or if you think the examiner’s interpretation of the claims are too narrow, then the attorney will file an appeal. The appeal is brought before three “examiners-in-chief.” They will read a brief that the attorney has prepared on your behalf and a brief filed by the examiner, then render a decision on allowability of the claims. There is a real chance to get an allowance on appeal; the examiners-in-chief do not “rubber-stamp” the examiners’ grounds for rejection.

Filing of a Patent Application Creates Duties on Your Part

 

All relevant prior art must be disclosed to the Patent Office.

The Patent Office needs to know if you have any information which may be relevant to the examination of your patent application. This can include newspaper or magazine articles you have read, patents or other publications you may be aware of, and so on. This information can also include descriptions of products you’ve seen on the market. Disclosing relevant information is your duty; failure to do so could result in fraud charges against you. You must inform the attorney of all prior art that you have knowledge of before he files an “Information Disclosure Statement.”

Filing must occur within 1 year of offer for sale or publication.

 

Under the patent laws, you are barred from obtaining a patent if you have offered your invention for sale, or if you published, or publicly disclosed the invention more than one year before the date of filing. You are also barred if you are not the actual inventor.
You must disclose the best mode for executing the invention.

The Patent Office requires you to disclose the invention with the best structural and functional disclosure that you can think of at the time the application is filed. This includes both the drawings and the written description. The disclosure must allow a person of ordinary skill in the art to make a copy of the invention without undue experimentation.
You must “foreign-file” within one year of the U.S. filing date.

Many foreign countries have a rule that the invention must never have been publicly described or sold before filing there. However, under the Patent Cooperation Treaty, there is a one-year grace period to file patent applications in most major foreign countries, measured from the date of the U.S. filing. This allows you to “foreign-file” even if you publicly disclosed your invention or offered it for sale after you filed in the U.S. (acts of this kind before the U.S. filing date will act as a bar to some foreign filing.) Canada has a one-year grace period for acts of the inventor. Design patents (these patents are concerned with the aesthetic appearance of the invention) must be foreign-filed within six months, not one year.
Special Note: The GATT agreement has affected U.S. patent laws. The term of patents filed after June 7, 1995 is 20 years from the date of filing, which also dates back to the date of the earliest filed application, if the application relies on any earlier filed “parent” application. A “provisional” application may be filed without claims, but includes all the disclosure of a regular application. The filing fee for a provisional application is only $70 (with micro entity status) as opposed to $430 (with micro entity status) for a regular application; the attorney fee to prepare a provisional application is about three-quarters of that for a regular application.

A provisional application is a good choice if you want the right to mark your invention “patent pending,” but are unsure about the commercial success. Provisional applications have all the rights of a regular application but are not examined. A regular application must be filed within one year of the provisional application to preserve your rights to the invention.

The fees involved in obtaining a patent are detailed in Patent cost page.

U.S. Patent Office patent search engine
Free Initial Consultation

As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.

Click here for a Free initial patent consultation
As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.
If you have any questions after reading this information, feel free to call or E-mail me at info@itspatentable.com with no obligation. I charge flat fees for most of my work (unlike my competitors), so you will have a reasonable idea of the cost before you start. I also offer prosecution and defense of patent disputes for a fee of $230/hr plus disbursements.

Design Patents vs. Utility Patents

Many inventors familiar with patent protection do not know the difference between design patents and utility patents. A design patent protects the appearance of an invention. A design patent includes a preamble, a specification, drawings that illustrate the outside appearance of an invention, a brief description of each drawing and one claim. Patent no. D683,047 is an example of a design patent. The design specification is usually recited on a single page. My charge for preparation and filing of a design patent application including the drawings and filing fee is about $1,900 at the time of this article. A utility patent protects the functionality of an invention. A utility patent includes a background of the invention, a summary of the invention, a brief description of the drawings, drawings that illustrate the invention, a detailed description of the invention, claims and an abstract. Patent no. 8640396 is an example of a utility patent. The utility patent goes into great detail to describe the invention with words and the numerous drawings. Item numbers are used in the drawings to illustrate features of the invention. Instead of one general claim in the design patent, the utility patent includes about 20 claims to define the scope of the invention. My charge for preparation and filing of a utility patent application including the drawings and filing fee for a relatively simple invention is about $3,600 at the time of this article.
The standard for infringement of a design patent is confusing similarity. For example, a copyist makes a knock-off of the product protected by the design patent. The knock-off infringes the design patent, if a third party views the knock-off and is confused into thinking the knock-off is the patented product. The copyist is then guilty of patent infringement. The standard of confusing similarity is the same used for the infringement of a federal trademark. If a third party is confused into thinking the copyist trademark is the same as the issued trademark, the copyist is guilty of trademark infringement. Infringement of a utility patent occurs when the knock-off includes all the limitations recited in any one of the independent claims. If the knock-off does not include all the limitations recited in any independent claim, the knock-off does not infringe the utility patent.
The bottom line is when do you choose a design patent over a utility patent? If the invention has aesthetic features that are too difficult to describe with words, the design patent is your choice. If the functional aspects of the invention are important, the utility patent is your choice. If your invention includes both functional and aesthetic features, you may file both a design patent application and a utility patent application. However, it is more difficult to obtain a utility patent than a design application. An option is to first file a utility patent application. and if the utility patent application is not allowed, a design continuation-in-part patent application may be filed.

Click here for a Free initial patent consultation
As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.
If you have any questions after reading this information, feel free to call or E-mail me at info@itspatentable.com with no obligation. I charge flat fees for most of my work (unlike my competitors), so you will have a reasonable idea of the cost before you start. I also offer prosecution and defense of patent disputes for a fee of $230/hr plus disbursements.

Insights For Responding to Office Actions

Once a patent application is written and filed, it will be examined within one to three years by a patent examiner. On average, it takes one-and-one half to two years to receive a first office action from the Patent Office. The wait for patent examination can be reduced by paying an additional fee of $1,035 (“micro” entity) or $2,070 (“small” entity). If one of the inventors is 65 years of age or older, a petition to “make special for age” may be filed, to decrease the wait. The wait time will be reduced to no more than six months. I have received office actions in as few as two months, by paying the additional fee.
There are three requirements for patentability/usefulness, novelty, and nonobviousness. Inventions are useful, if they have a functional purpose. There are two types of substantive rejections in an office action: a lack of novelty (“102 rejection”) and a lack of nonobviousness (“103 rejection”). The 102 rejection may be made with a single prior-art reference. The 103 rejection is usually done by combining at least two prior-art references. In a 102 rejection, the prior-art reference must include every limitation recited in the claim. In a 103 rejection, the combination of the at least two prior-art references must include every limitation recited in the claim.
The office action will include a disposition of all the claims. All the claims may be rejected, all the claims may be allowed, or some of the claims may be rejected and some of claims allowed. Additionally, dependent claims may be objected to. Adding an objected-to claim to an independent claim will make the independent claim allowable. Recently, 85% of the time, all the claims in the patent application are rejected in the first office action.
The 102 or 103 rejections are usually overcome by more precisely defining a limitation or element in the claim. The patent examiner will take the broadest possible interpretation of a prior-art reference. More precisely defining an element in the claim forces the examiner to withdraw the 102 or 103 rejection. However, any time the claim is narrowed by more precisely defining a limitation or element, the claim becomes less broad. The claim should be as broad as possible to prevent a potential infringer from designing their product around the claim. A “knock-off” product will infringe an independent claim if it includes every limitation found in the claim. However, a “knock-off” product will avoid infringement of the claim, if it has one fewer limitation or element. This is the importance of not narrowing the claim too much, to avoid the prior-art reference.
Going back to the previous article, if the patent attorney does not put enough detail into the specification, the patent attorney will not be able to amend the claim to avoid the prior-art reference. Claims may be changed if supported by the specification, but no new matter may be entered into the specification after it is filed.
The attorney does have the opportunity to contact the examiner with questions concerning the office action. Unlike many of my competitors, I will present proposed amended claims to the patent examiner, to save the client time and money. It is better to get feedback from the patent examiner than to assume that the amended claims overcome the cited prior-art reference(s). The patent examiner will provide a verbal opinion as to whether the proposed claims overcome the prior-art reference(s). If the claims do not overcome the prior-art reference(s), the patent examiner may make suggestions for amending the claims to overcome the prior-art reference(s). Sometimes, the patent examiner will let the patent attorney know that there is other prior-art not cited in the office action, but which they will use against the proposed claims. Typically, the examiner will perform another patent search relative to the newly amended claims.
An amendment contains the amended claims and arguments in support of the amended claims, relative to the prior-art references. The examiner will decide if the amended claims are allowable, relative to the prior-art references. If all the claims are allowable, a notice of allowance will be issued. If even one claim is not allowed, the examiner will issue a second office action. If it is a matter of only one or two claims not being allowed, the patent examiner will typically call the patent attorney to amend or cancel the non-allowable claim. If the patent attorney thinks the examiner is wrong in their rejections, a “supervisor’s appeal” may be filed, or a full-fledged appeal may be filed. The supervisor’s appeal will take about three months. The full-fledged appeal will take about three to four years. In response to the notice of allowance, the patent attorney will pay the issue fee and file issuance paperwork. A patent will issue in one to two months, after payment of the issue fee.

Click here for a Free initial patent consultation
As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.
If you have any questions after reading this information, feel free to call or E-mail me at info@itspatentable.com with no obligation. I charge flat fees for most of my work (unlike my competitors), so you will have a reasonable idea of the cost before you start.

The Patent Process

What is a patent?

It generally includes a “specification” containing a description of the invention, a set of drawings which illustrates the invention, and one or more “claims” which define the legal rights of the inventor.

Who needs a patent?Anyone who has an invention that is worthwhile to sell and is likely to be copied by a competitor can benefit from a patent. The patent gives the holder a legal monopoly to make, use, and sell the invention for a period of about 17 years. Of course, the sales of the invention should be enough to justify the expense of the patent process.

Do I need an attorney?Unfortunately, you do. Even with such books on the market as “Patent It Yourself,” it is nearly impossible for even the brightest individual to write a patent. It takes a vast amount of knowledge of the patent process and skill at writing patent applications to be effective. To demonstrate the difficulty of writing a patent, consider that the Patent Office requires all attorneys and agents who do business with it to take a very difficult exam. Many people who have studied hard take the exam two and three times before they can pass it.

How much does this all cost?The cost of the entire process of obtaining a patent for a simple invention including fees payable to the Patent Office and to the attorney will be at least $7,000, assuming that your patent is allowed on a first examination. If the claims are not accepted on the first examination, the cost will increase. The complexity of the invention will increase the cost of writing the patent. Maintenance fees are also required after 3.5 years. Details about fees are found in Patent cost.

What are the steps in obtaining a patent?The first step in obtaining patent protection is the patent search. The patent search is performed to determine if there are any “prior-art” patents that anticipate your invention. This is an important step because you may waste a lot of money if your invention already exists in someone else’s patent application. You may perform a search yourself or have an attorney do it. Two types of patent searches are available. The first is a paper patent search which is conducted in the patent office search room by my patent searcher. The second is an internet search which is conducted by myself. Your probably wondering if you can get by with an internet patent search. You can, if it was not feasible to manufacture your invention before 1976. The internet patent search database only goes back to 1976. Click here for cost of patent searches. After a search has been performed, the attorney will review the prior-art patents in light of your invention to see if your invention merits the filing of a patent application. Devices that are not patented are also relevant for determining the merit of filing a patent.

The second step is writing and filing a patent application on behalf of your invention. You must also pay a filing fee to the Patent Office. After the patent application has been received by the Patent Office, an examiner will be assigned to review the application. He will perform his own patent search, and then review the invention in light of the patents found during his search. The examiner will issue the results of his review in an “office action,” 9 – 36 months after filing.

The office action will include a decision on the validity of the claims. The claims will be accepted, objected to, or rejected. If all the claims are accepted (this happens in about 1 in 10 applications) then the patent will be ready for issue. If even one claim is rejected or objected to then the attorney must file an amendment with the Patent Office. The amendment will usually include revision of the claims and sometimes an argument defending the breadth of the claims as stated. The examiner may not appreciate the claims without an argument defending them.

When the examiner receives the amendment (this can be 2-6 months after mailing), he will review the revised claims and arguments. He will make a decision on whether he agrees with my revised claims and arguments. If he does, he will issue a “notice of allowance”; if not, he will issue a second office action. The second office action may contain the same or additional grounds for rejection of the claims. At this point you may consider letting the attorney change the claims to circumvent the examiner’s grounds for rejection.

If the examiner continues to reject all claims on the basis of obviousness, or if you think the examiner’s interpretation of the claims are too narrow, then the attorney will file an appeal. The appeal is brought before three “examiners-in-chief.” They will read a brief that the attorney has prepared on your behalf and a brief filed by the examiner, then render a decision on allowability of the claims. There is a real chance to get an allowance on appeal; the examiners-in-chief do not “rubber-stamp” the examiners’ grounds for rejection.

Filing of a Patent Application Creates Duties on Your PartAll relevant prior art must be disclosed to the Patent Office.

The Patent Office needs to know if you have any information which may be relevant to the examination of your patent application. This can include newspaper or magazine articles you have read, patents or other publications you may be aware of, and so on. This information can also include descriptions of products you’ve seen on the market. Disclosing relevant information is your duty; failure to do so could result in fraud charges against you. You must inform the attorney of all prior art that you have knowledge of before he files an “Information Disclosure Statement.”

Filing must occur within 1 year of offer for sale or publication.Under the patent laws, you are barred from obtaining a patent if you have offered your invention for sale, or if you published, or publicly disclosed the invention more than one year before the date of filing. You are also barred if you are not the actual inventor.

You must disclose the best mode for executing the invention. The Patent Office requires you to disclose the invention with the best structural and functional disclosure that you can think of at the time the application is filed. This includes both the drawings and the written description. The disclosure must allow a person of ordinary skill in the art to make a copy of the invention without undue experimentation.

You must “foreign-file” within one year of the U.S. filing date. Many foreign countries have a rule that the invention must never have been publicly described or sold before filing there. However, under the Patent Cooperation Treaty, there is a one-year grace period to file patent applications in most major foreign countries, measured from the date of the U.S. filing. This allows you to “foreign-file” even if you publicly disclosed your invention or offered it for sale after you filed in the U.S. (acts of this kind before the U.S. filing date will act as a bar to some foreign filing.) Canada has a one-year grace period for acts of the inventor. Design patents (these patents are concerned with the aesthetic appearance of the invention) must be foreign-filed within six months, not one year.

Special Note: The GATT agreement has affected U.S. patent laws. The term of patents filed after June 7, 1995 is 20 years from the date of filing, which also dates back to the date of the earliest filed application, if the application relies on any earlier filed “parent” application. A “provisional” application may be filed without claims, but includes all the disclosure of a regular application. The filing fee for a provisional application is only $70 (with micro entity status) as opposed to $430 (with micro entity status) for a regular application; the attorney fee to prepare a provisional application is about three-quarters of that for a regular application.

 

A provisional application is a good choice if you want the right to mark your invention “patent pending,” but are unsure about the commercial success. Provisional applications have all the rights of a regular application but are not examined. A regular application must be filed within one year of the provisional application to preserve your rights to the invention.

The fees involved in obtaining a patent are detailed in Patent cost page.

http://www.itspatentable.com/patent-cost

Patent Search Engine

U.S. Patent Office patent search engine

Free Initial Consultation

As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.

Click here for a Free initial patent consultation

As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.

 

Design Patents vs. Utility Patents

Many inventors familiar with patent protection do not know the difference between design patents and utility patents. A design patent protects the appearance of an invention. A design patent includes a preamble, a specification, drawings that illustrate the outside appearance of an invention, a brief description of each drawing and one claim. Patent no. D683,047 is an example of a design patent. The design specification is usually recited on a single page. My charge for preparation and filing of a design patent application including the drawings and filing fee is about $1,900 at the time of this article. A utility patent protects the functionality of an invention. A utility patent includes a background of the invention, a summary of the invention, a brief description of the drawings, drawings that illustrate the invention, a detailed description of the invention, claims and an abstract. Patent no. 8640396 is an example of a utility patent. The utility patent goes into great detail to describe the invention with words and the numerous drawings. Item numbers are used in the drawings to illustrate features of the invention. Instead of one general claim in the design patent, the utility patent includes about 20 claims to define the scope of the invention. My charge for preparation and filing of a utility patent application including the drawings and filing fee for a relatively simple invention is about $3,600 at the time of this article.

The standard for infringement of a design patent is confusing similarity. For example, a copyist makes a knock-off of the product protected by the design patent. The knock-off infringes the design patent, if a third party views the knock-off and is confused into thinking the knock-off is the patented product. The copyist is then guilty of patent infringement. The standard of confusing similarity is the same used for the infringement of a federal trademark. If a third party is confused into thinking the copyist trademark is the same as the issued trademark, the copyist is guilty of trademark infringement. Infringement of a utility patent occurs when the knock-off includes all the limitations recited in any one of the independent claims. If the knock-off does not include all the limitations recited in any independent claim, the knock-off does not infringe the utility patent.
 

The bottom line is when do you choose a design patent over a utility patent? If the invention has aesthetic features that are too difficult to describe with words, the design patent is your choice. If the functional aspects of the invention are important, the utility patent is your choice. If your invention includes both functional and aesthetic features, you may file both a design patent application and a utility patent application. However, it is more difficult to obtain a utility patent than a design application. An option is to first file a utility patent application. and if the utility patent application is not allowed, a design continuation-in-part patent application may be filed.

Click here for a Free initial patent consultation

As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.
 

If you have any questions after reading this information, feel free to call or E-mail me at info@itspatentable.com with no obligation. I charge flat fees for most of my work (unlike my competitors), so you will have a reasonable idea of the cost before you start.

How to Choose a Good Patent Attorney

It is very difficult to determine who is and who isn’t a good patent attorney. Even if someone has used a patent attorney and thinks they did a good job, it doesn’t necessarily mean they did. I would like to provide you with some tips that will aid you in the search for a good patent attorney.

Tips for a choosing a good patent attorney.
1   Make sure the patent attorney has a working knowledge of the invention’s technology.
2   The patent attorney should tell you to make the invention as simple as possible. It’s harder to “design around” a simple patented item than a complex one.
3   A good patent attorney will never tell an inventor that something is too simple to be patented, or that the invention cannot be patented. A patent attorney who states that an invention is not patentable risks a malpractice lawsuit, unless they have knowledge of the prior art.
4   The patent attorney should know how to write claims that will make it difficult for someone to “design around” your invention. They should also be able to explain how they write the claims to accomplish this goal. I make my independent claims as broad as possible and leave the detail for the dependent claims, because for the most part, if an inventor can avoid infringing the independent claim, he has avoided all the claims dependent on it.
5   You should ask the patent attorney what occupies most of his or her time. Is it litigation or is it writing patents? Choose a patent attorney who spends most of his or her time writing patents.
6   Make sure you use an attorney who is registered with the patent office. If the patent attorney is registered, call the patent office to see if they are in good standing. This will help save you from patent scam organizations that prey on unsuspecting inventors.
7   The following symptoms, I believe, are evidence of a mediocre patent attorney: Details of the invention are not important to them; When they write patents, the names of each element are not consistent throughout the specification and claims; The attorney claims to be expert at writing an application for any area of technology; The patent attorney doesn’t spend enough time learning the subtleties of your invention.
8   In most cases, nearly any patent attorney can get a patent to issue; but it takes time, effort, skill and dedication to write a great patent application. A great patent application is one that can’t easily be “designed around.”

Click here for a Free initial patent consultation
As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.
If you have any questions after reading this information, feel free to call or E-mail me at info@itspatentable.com with no obligation. I charge flat fees for most of my work (unlike my competitors), so you will have a reasonable idea of the cost before you start. I also offer prosecution and defense of patent disputes for a fee of $225/hr plus disbursements.

Credit cards accepted.

Donald J. Ersler, S.C.

Patent Attorney

info@itspatentable.com Phone: 262.785.0160Fax: 262.785.0162Mailing Address: 1165 Terrace Drive, Elm Grove, Wi 53122

Foreign Filing Of A Patent Application

Many inventors ask if there is a world patent application. Unfortunately, there is not a world patent application. There is a Patent Cooperation Treaty (PCT) application, which allows an inventor to delay filing in most foreign countries for the payment of a fee. The PCT application may be filed through the United States Patent and Trademark Office. The PCT fee is based on the size of the application. The PCT application allows you to buy a delay in filing a foreign patent application up to 31 months from the filing date of the USPTO patent application. However, you still have the cost of filing in at least one foreign country.

There are three organizations where a single patent application may be filed for numerous countries. The three organizations include the European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the Gulf Arab States Cooperation Council (GCC). The EPO includes western and eastern European countries. The EAPO includes Russia and countries geographically located near Russia. The GCC includes Arab countries located in the Arabian Gulf. Out of the above three organizations, the EPO is the most popular for foreign filing. The cost of filing an EPO patent application is at least $10,000. Additionally, there are yearly maintenance fees while the EPO patent application is pending. There will be a separate patent application for each country in the organization and maintenance fees to be paid for each country’s patent application.

The inventor can also file a patent application in one or more foreign countries, such as Australia, Canada, Mexico or the United Kingdom. The Paris Convention allows a utility or design patent application filed in the USPTO to be later filed in a member country. The utility patent application must be filed in the Paris Convention member country within one year. The design patent application must be filed in the Paris Convention member country within six months.

To make foreign filing worthwhile, there must be a great probability of selling a large quantity of the invention in the particular country. The sales market that the United States provides is the best bang for the patent application buck.

Click here for a Free initial patent consultation

As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.
 

If you have any questions after reading this information, feel free to call or E-mail me at info@itspatentable.com with no obligation. I charge flat fees for most of my work (unlike my competitors), so you will have a reasonable idea of the cost before you start. I also offer prosecution and defense of patent disputes for a fee of $225/hr plus disbursements.

When To Appeal An Office Action

My goal is to get a patent application allowed after a first office action by communicating with the examiner through a phone interview to assure that the amended claims overcome the prior art rejections. An allowance after a first office action is not always possible, because the examiner has to go back and do a second patent search on the newly amended claims. If the examiner finds new prior art that the amended claims read on, they will issue a second or subsequent office action. As long as the prior art rejections are reasonable, a response to the office actions should be filed. However, if the rejection in a second or subsequent office action becomes unreasonable, there is a solution.

Twenty five years ago, the training of patent examiners was much different than it is today. The patent examiner’s academy as of at least ten years ago, were instructing their new recruits to throw any prior art at the invention in an office action to see if it sticks, or hope the inventor gets discouraged and gives up on getting a patent application issued. The motivation for the Patent Office’s academy teaching lies in the interpretation of 2007 Supreme Court case of KSR v. Teleflex (KSR). KSR makes it easier for a patent examiner to combine unrelated prior-art references (patents, published patent applications or publicly accessible documents) to reject the claims of a patent application.

Unfortunately, the newly trained examiners of today are even more likely to make unreasonable rejections then ten years ago. If the examiner was trained before KSR, you are more likely to get a fair examination, then if the examiner was trained after KSR. However, the Patent Office does have a mechanism to deal with unreasonable examiners and supervisors. It is called the Board of Patent Appeals. The examiners and especially their supervisors do not like to have their rejections reversed.

There is a process called a pre-appeal, where a pre-appeal brief is reviewed by the examiner, the examiner’s supervisor and a supervisor from a different art group. A notice of appeal is filed and a five page argument is filed. The pre-appeal may be useful, if you are dealing with a primary examiner. However, the pre-appeal is usually a waste of time, if the examiner is following the lead of a primary examiner or a supervisor. The best way to deal with an examiner who is making an unreasonable rejection is to file an appeal brief. If the supervisor thinks the appeal will be lost, they will either find a reasonable grounds of rejection, or simply issue a notice of allowance. Both the pre-appeal and the appeal cannot be filed, until a second office action is issued.

Even if the supervisor lets the appeal go through, there is at least a 50 percent chance that the Board of Appeals will reverse the examiner’s rejection completely or in part. The full-fledged appeal will take about one and one half to two years to get a decision from the Board of Appeals. If the examiner rejections are reversed, the supervisor will usually honor the Board of Appeals decision and issue a notice of allowance. In response to the notice of allowance, the patent attorney will pay the issue fee and file issuance paperwork. A patent will issue in one to two months, after payment of the issue fee.

Insights For Responding to Office Actions

Once a patent application is written and filed, it will be examined within one to three years by a patent examiner. On average, it takes one-and-one half to two years to receive a first office action from the Patent Office. The wait for patent examination can be reduced by paying an additional fee of $1,035 (“micro” entity) or $2,070 (“small” entity). If one of the inventors is 65 years of age or older, a petition to “make special for age” may be filed, to decrease the wait. The wait time will be reduced to no more than six months. I have received office actions in as few as two months, by paying the additional fee.

There are three requirements for patentability/usefulness, novelty, and nonobviousness. Inventions are useful, if they have a functional purpose. There are two types of substantive rejections in an office action: a lack of novelty (“102 rejection”) and a lack of nonobviousness (“103 rejection”). The 102 rejection may be made with a single prior-art reference. The 103 rejection is usually done by combining at least two prior-art references. In a 102 rejection, the prior-art reference must include every limitation recited in the claim. In a 103 rejection, the combination of the at least two prior-art references must include every limitation recited in the claim.

The office action will include a disposition of all the claims. All the claims may be rejected, all the claims may be allowed, or some of the claims may be rejected and some of claims allowed. Additionally, dependent claims may be objected to. Adding an objected-to claim to an independent claim will make the independent claim allowable. Recently, 85% of the time, all the claims in the patent application are rejected in the first office action.

The 102 or 103 rejections are usually overcome by more precisely defining a limitation or element in the claim. The patent examiner will take the broadest possible interpretation of a prior-art reference. More precisely defining an element in the claim forces the examiner to withdraw the 102 or 103 rejection. However, any time the claim is narrowed by more precisely defining a limitation or element, the claim becomes less broad. The claim should be as broad as possible to prevent a potential infringer from designing their product around the claim. A “knock-off” product will infringe an independent claim if it includes every limitation found in the claim. However, a “knock-off” product will avoid infringement of the claim, if it has one fewer limitation or element. This is the importance of not narrowing the claim too much, to avoid the prior-art reference.

Going back to the previous article, if the patent attorney does not put enough detail into the specification, the patent attorney will not be able to amend the claim to avoid the prior-art reference. Claims may be changed if supported by the specification, but no new matter may be entered into the specification after it is filed.

The attorney does have the opportunity to contact the examiner with questions concerning the office action. Unlike many of my competitors, I will present proposed amended claims to the patent examiner, to save the client time and money. It is better to get feedback from the patent examiner than to assume that the amended claims overcome the cited prior-art reference(s). The patent examiner will provide a verbal opinion as to whether the proposed claims overcome the prior-art reference(s). If the claims do not overcome the prior-art reference(s), the patent examiner may make suggestions for amending the claims to overcome the prior-art reference(s). Sometimes, the patent examiner will let the patent attorney know that there is other prior-art not cited in the office action, but which they will use against the proposed claims. Typically, the examiner will perform another patent search relative to the newly amended claims.

An amendment contains the amended claims and arguments in support of the amended claims, relative to the prior-art references. The examiner will decide if the amended claims are allowable, relative to the prior-art references. If all the claims are allowable, a notice of allowance will be issued. If even one claim is not allowed, the examiner will issue a second office action. If it is a matter of only one or two claims not being allowed, the patent examiner will typically call the patent attorney to amend or cancel the non-allowable claim. If the patent attorney thinks the examiner is wrong in their rejections, a “supervisor’s appeal” may be filed, or a full-fledged appeal may be filed. The supervisor’s appeal will take about three months. The full-fledged appeal will take about three to four years. In response to the notice of allowance, the patent attorney will pay the issue fee and file issuance paperwork. A patent will issue in one to two months, after payment of the issue fee.

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As your patent agent, Don will quote a flat fee for all legal needs related to obtaining your patent, like invention licensing, so you will know all legal costs before you start. Don works with inventors, design departments, and corporate attorneys in the USA and around the world from his office near Milwaukee, Wisconsin, USA.

If you have any questions after reading this information, feel free to call or E-mail me at info@itspatentable.com with no obligation. I charge flat fees for most of my work (unlike my competitors), so you will have a reasonable idea of the cost before you start. I also offer prosecution and defense of patent disputes for a fee of $225/hr plus disbursements.

 

Design Patents vs. Utility Patents

Many inventors familiar with patent protection do not know the difference between design patents and utility patents. A design patent protects the appearance of an invention. A design patent includes a preamble, a specification, drawings that illustrate the outside appearance of an invention, a brief description of each drawing and one claim. Patent no. D683,047 is an example of a design patent. The design specification is usually recited on a single page. My charge for preparation and filing of a design patent application including the drawings and filing fee is about $1,900 at the time of this article. A utility patent protects the functionality of an invention. A utility patent includes a background of the invention, a summary of the invention, a brief description of the drawings, drawings that illustrate the invention, a detailed description of the invention, claims and an abstract. Patent no. 8640396 is an example of a utility patent. The utility patent goes into great detail to describe the invention with words and the numerous drawings. Item numbers are used in the drawings to illustrate features of the invention. Instead of one general claim in the design patent, the utility patent includes about 20 claims to define the scope of the invention. My charge for preparation and filing of a utility patent application including the drawings and filing fee for a relatively simple invention is about $3,600 at the time of this article.

The standard for infringement of a design patent is confusing similarity. For example, a copyist makes a knock-off of the product protected by the design patent. The knock-off infringes the design patent, if a third party views the knock-off and is confused into thinking the knock-off is the patented product. The copyist is then guilty of patent infringement. The standard of confusing similarity is the same used for the infringement of a federal trademark. If a third party is confused into thinking the copyist trademark is the same as the issued trademark, the copyist is guilty of trademark infringement. Infringement of a utility patent occurs when the knock-off includes all the limitations recited in any one of the independent claims. If the knock-off does not include all the limitations recited in any independent claim, the knock-off does not infringe the utility patent.

The bottom line is when do you choose a design patent over a utility patent? If the invention has aesthetic features that are too difficult to describe with words, the design patent is your choice. If the functional aspects of the invention are important, the utility patent is your choice. If your invention includes both functional and aesthetic features, you may file both a design patent application and a utility patent application. However, it is more difficult to obtain a utility patent than a design application. An option is to first file a utility patent application. and if the utility patent application is not allowed, a design continuation-in-part patent application may be filed.