Frequently Asked Questions

Why get a patent?

A patent is the only effective way of preventing competition in the marketplace. Furthermore, having a patent application on file shows potential investors and the like that the inventor is a serious person and has done his homework. Finally, many companies will not consider outside ideas for licensing unless an application has been filed, due to fears of being charged with misappropriation.

 

Who applies for the patent?

US patent applications are filed in the name of the inventor(s). Applications and issued patents are treated legally as personal property, that is, they can be freely assigned or licensed. Foreign patent applications are filed in the name of the assignee, if any.


How much does it cost to get a patent?

The basic government filing fee is approximately $500. The fee to issue the patent is approximately $1000. Maintenance fees payable at intervals over the life of the patent currently total about $3800. These are the fees payable by a small entity (an individual or company with less than 500 employees) that is not obliged to license the invention to a larger entity. Large entities pay double the fees quoted.

To this must of course be added the attorney fees for services required to draft, finalize and file the application, to write any amendments that may be required during the prosecution of the patent, and to handle numerous details that will often arise. These fees can range from about $2500 to upward of $50,000, depending on the complexity of the invention, the difficulties encountered in prosecution, and the adequacy of the inventor’s disclosure. (Click the “First Time?” tab for suggestions on how costs can be contained.)

Drawings are also needed in most cases. Unless the client is exceptionally talented with CAD it is usually preferable to have these done by a professional patent draftsman. Typical engineering drawings are not suitable as patent drawings. Drawings probably average around $500, but of course the cost goes up with the complexity of the invention.


How much does it cost to get a provisional application filed?

The government fee for filing a provisional patent application for small entities is currently $110. The attorney fees vary widely, as in the case of the utility patent applications discussed above, depending on the complexity of the invention and the adequacy of the inventor’s disclosure. Formal drawings are rarely needed.


How much does it cost to get an invention searched?

A typical patentability search, including an attorney’s opinion as to the likely scope of patentability, costs $1000 - 1500.


How long does it take to get a patent?

Regrettably, it now takes two to three years on average to get a patent application issued as a patent, even if prosecution goes smoothly, and sometimes it takes much longer.


What does “patent pending” mean, and why do you see it on products?

“Patent pending” simply means that a patent application, possibly a provisional application, has been filed, and indicates that at some future time a patent may be issued. There is no protection for an invention until the patent has been granted, although in limited circumstances there may be the possibility of collecting a royalty from competitors who have been practicing the invention during the pendency of the application.


Why do companies put patent numbers on their products?

This is done to provide notice to the public that the product is patented. A patentee can only collect damages from an infringer after the infringer’s been advised of the patent; this is one way to do it.


Does getting a patent mean I am free to practice my invention?

No. Your patent gives you the right to exclude others from using your invention, but others may have patents that “dominate” yours. In order to ensure that you are free to enter a new business you will need to seek a “right-to-use” opinion from a competent patent lawyer, who will have a search done and will then investigate the scope and validity of any relevant patents that are located.


How are patents enforced?

Patents are enforced exclusively through litigation in the Federal court system. If a patentee believes his patent is being infringed, he will typically bring information concerning the allegedly infringing product to his attorney for a formal opinion. If there is an infringement, the infringer can be advised to exit the market, or may be offered a royalty-bearing license. If negotiation is not successful, a lawsuit can be brought, and if it does not settle, a jury trial will eventually be had. Either party can appeal the verdict; all appeals in patent cases are heard by the Court of Appeal for the Federal Circuit, in Washington, DC. That court’s decisions can be appealed to the US Supreme Court, but the Supreme Court rarely accepts appeals in patent cases.

Of course, this is a very expensive and time-consuming process and only worthwhile where the infringer’s sales are high enough to justify a major effort and expense.


What damages are available in patent cases?

The minimum damage award is a “reasonable royalty”. In cases where the patentee has lost sales to the infringer, lost profits can be awarded. If the infringement was willful, meaning that the infringer knew he was infringing a valid patent and proceeded anyway, the damages can be trebled and attorney’s fees awarded. And if the parties are direct competitors, the infringer can be enjoined and forced completely out of business.


I’m not able to afford foreign patent protection and I am sure my product will be knocked-off overseas. What can I do?

Products made overseas and sold in the US are still infringing. You can get help from the Customs Service to prevent importation of infringing goods. If your patent covers a process that is practiced offshore you can still prevent products made using it from being imported. However, you can’t do anything with a US patent unless the product reaches US territory.


When should the patent application be filed?

You must file your US patent application within one year of the first public use or sale of the invention. However, this one year “grace period” is not available in most foreign countries, so if you are interested in foreign patent protection you need to file your US application before any publication of your invention. As a rule it is better to file early; filing cuts off the applicability of later-appearing prior art and limits the issues that may arise later, for example, in litigation.

Under the US law, the first inventor can prevail in a proceeding known as an “interference” against a later inventor who files earlier for the same invention. However, the interference process is very arduous and is to be avoided if at all possible. There are also some indications that the law may be changing so that the US will go to a “first to file” system, eliminating the “first inventor” rule. Again, therefore, it makes sense to file early.


I need to show my invention to venture capitalists so I can get funding to complete its development. What should I do?

If your invention is not fully developed and you need to explain it to others in order to raise funds, you can proceed by way of a confidentiality agreement which will protect your rights. However, many possible funding sources don’t like to sign such agreements as they fear they may lead to allegations of misappropriation. A better course is to file at least a provisional patent application; then you can disclose the invention freely without losing your rights.

If further developments are made later, these can be added in the “complete” application which will need to be filed within one year of the provisional application. If you then make additional improvements you can protect these in the US by way of a “continuation-in-part” application. However, be aware that the CIP practice is generally not available in foreign countries. Abroad, your protection is limited to what is disclosed by the underlying provisional or complete application.


How much does it cost to register a trademark?

Federal trademark applications can usually be filed for $1000 or so, and normally do not require much if any prosecution. A preliminary search is always a good idea, and costs about $500.


How much does it cost to register a copyright?

The fees paid to the Copyright Office (part of the Library of Congress) vary but are mostly in the $20 range.



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