- What is a Patent?
- Our Preferred Process in Applying for a Patent
- Why Choose Kelly Tech Law, PC and Registered Patent Attorney Eric Kelly
- Timelines
I. What is a Patent
Under this topic we discuss what a patent is, why you may want one or more, and why the patenting process may be expensive.
1. What is a Patent?
A patent is a limited monopoly granted generally to an inventor from the federal government. You may think of a patent as a contract between the inventor and the federal government. What the inventor gets out of this contract is the limited monopoly. What the government gets out of this contract is learning from the inventor how to make and use the invention, where the government makes such information publically available.
2. Why You May Want One or More Patents
The reason you want one or more patents is to have that limited monopoly. Interestingly, this limited monopoly actually does not give you the right to do anything; but rather, this limited monopoly gives you the power of exclusion. As a patent owner, you may exclude others from not only making and selling your invention but also from using your invention. If someone makes, sells, or uses your invention without your permission they may be infringing your patent rights and you may sue that someone for patent infringement.
Further, that power is even broader, because if someone makes or sells something that is equivalent to your patented invention, then that someone may also be infringing your patent rights – this is the doctrine of equivalents.
And it is from this exclusionary right that you gain a proprietary interest in your invention. (Note the actual technical rules regarding patent rights are more complex that indicated here and may be limited by various other doctrines, such the first sale doctrine, also known as exhaustion of rights.)
However, the reason you want that limited monopoly that the patent provides, you must understand the role that the patent plays in your goals. Presumably your ultimate end goal is financial success, which is built upon leveraging your invention in some form. If your invention has commercial potential, one may generally leverage such commercial potential in one of three ways: (1) selling whatever products and services which derive from your invention; (2) licensing the ability for another to sell whatever products and services derive from your invention and where you receive a royalty for doing so; or (3) selling off the patent rights themselves to another, i.e. making an assignment of your patent ownership interests to another.
All three of these scenarios require that you have that limited monopoly, that proprietary interest, that is the patent. For example, if you are pursuing the first scenario, then most likely you will need financiers to provide the funds necessary to commercialize your invention into a viable business and such financiers, whether they are equity investors or lenders, will not provide that needed capital unless they have some form of assurance, such as the protections afforded by a patent. Without a patent a financier may very well decline to fund commercializing your invention because they do not want to risk their funds into a venture where there is no barrier to entry from a competitor, particularly if potential competitors have deeper pockets.
And regarding the second and third scenario, if you are looking into licensing or selling your ownership interests (e.g. an assignment) you will be hard pressed to find an interested party unless your invention is protected by a patent.
So to be clear, obtaining a patent is not your ultimate end goal. Just having a patent in and of itself will not make one wealthy. It is what you do with that patent that matters. Obtaining a patent is merely a major milestone which may clear major obstructions to realizing financial success, by facilitating the ability to receive funding, to license, or to assign.
3. Why the Patenting Process May Be Expensive
To understand why patents are expensive to obtain one must understand a bit about how the patenting process works. Unlike other forms of intellectual property, such as trademarks and copyright, one has no patent rights simply by developing an invention. In contrast a copyright arises once the work of authorship is fixed in a tangible medium of expression, e.g. once an author writes the story down – a copyright exists. And with trademarks, a mark may exist once the business uses such a mark in commerce. But not so with patents. There are no patent rights that accrue simply by virtue of you inventing something. The federal government is not handing out patents. To obtain a patent one must fight for one.
To obtain a patent, one must submit a proper patent application with the United States Patent and Trademark Office (USPTO). By proper I just mean the application has the correct filing paperwork in proper form, e.g. the submitted drawings were in the form required by the USPTO. Then at a later date, a USPTO patent examiner will examine your submitted application and issue an Office Action with various objections and rejections. The applicant, most typically via the applicant’s attorney, will then have to respond to the Office Action, via a Response. Then there will generally be another Office Actions followed by another Response. There are usually at least two rounds of Office Actions and Responses. This process of Office Actions and Responses is known as patent application prosecution, or just prosecution for short. This back and forth that occurs during prosecution can go on for months or even years.
So the costs involved in getting a patent then come two sources: attorney costs and USPTO fees. Of the two cost sources, the attorney fees are more significant, but the USPTO fees are certainly non-trivial. The USPTO fees vary depending upon your entity status, i.e. large, small, or micro. And the USPTO fees may also vary because of some variables that may be present in a given application, such as an excessive length of the application (too many pages), excessive number of claims (more than 20 total and/or more than three independent claims), whether the applicant wants to pay the fee to expedite prosecution (fast tracking), etc.
The attorney costs derive from the time it takes to prepare the patent application and the time it takes to respond to Office Actions.
With respect to the patent application the attorney will prepare claims, the patent specification, possibly the drawings, and other associated filing paperwork (e.g. Application Data Sheet (ADS), Information Disclosure Statement (IDS), oath/declaration, power of attorney, etc.). Every single document filed is very important but the claims, patent specification and drawings are critical. Of those three, the claims are the most important and dictate what must be said and how to say it in the patent specification and what drawings must be present and what needs to be shown in the drawings. That is, the patent specification and the drawings must support the claims.
And the patent specification and the drawings must support the claims from the very moment you file the patent application because there is a rule in patent law which prohibits amending any of those three documents with “new matter.” So if you forgot to add some language in the patent specification that supports a particular claim, you may not amend the patent specification to add in that language after the application has been filed, if that proposed amendment language would constitute new matter.
The claims are important because of how our patent system works. The claims define the scope of the invention. The claims carve out what your invention is and what it is not. The claims put the world on notice of what your invention is. So when there is a potential question of patent infringement, we take the potentially infringing device and we compare it against the claims of the patent to determine if there is infringement. And during patent prosecution, the patent examiner will search for prior art references (i.e. other inventions which pre-date your invention) to apply to a given claim and make arguments of why such a claim should not be allowed, i.e. of why a particular claim is objected to or rejected. The whole struggle of prosecution is getting the patent examiner to allow claims. An allowable claim may issue as a patent, even if it is only one claim. If none of your claims get allowed, then there will be no patent.
And it because of this criticality of claim drafting, that a large proportion of the attorneys time in preparing the patent application is spent with claim drafting. The language for each claim should be chosen very carefully, with not only what the invention is in mind, but also with attention to relevant prior art. Can the invention be claimed in a way which is broad, yet avoid the prior art? That is the delicate balancing act the patent attorney engages in with drafting claims. But once the claims are finalized, the remainder of the preparing the drawings and patent specification must follow the language dictated by the claims.
It is then due to how this patenting process works, to how prosecution works and the importance of claim drafting, that at least partially explains the costs associated with attempting to obtain a patent.
And if it helps to rationalize the costs associated with this process, try looking at the costs from a risk reward perspective. Ask yourself, does my invention have sufficient commercial viability to justify the costs of obtaining a patent? For example, if it costs $5,000 to $15,000 to obtain a single patent, that cost is easily justified if the invention has a commercial viability in the millions of dollars and higher. Note, $5,000 to $15,000 to obtain a single patent is very typical, but our fees are significantly lower as noted below (or in our Pricing page).
II. Our Preferred Process for Applying for a Patent
Our preferred process for applying for a patent follows this plan: (1) order a Search; (2) order a Provisional Patent Application; and (3) then order a Non-Provisional Patent Application. Note, we belief this order of events is generally preferable for most clients. However, this is merely a suggestion. We have many clients who do not order searches and other clients who begin immediately with ordering a Non-Provisional Patent Application and altogether skip doing a provisional.
That said, we like to conduct the Search first, and to conduct it ourselves, because then we have a good understanding of the lay of the land with respect to your field of invention. We may uncover the most relevant or expected prior art in your field. Having such information on-hand generally allows for a better patent specification and for stronger claims to be drafted.
Additionally, a Search may uncover prior art that reads directly on your proposed invention, potentially rendering your proposed invention anticipated (non-novel) and/or obvious, which may render your invention non-patentable. And if such prior exists, it is beneficial to you to be aware of that scenario before you file a patent application.
However, there are of course several inherent limitations of a Search, so the results from a Search cannot guarantee that a patent will result if an application is filed after running a search for prior art, but in general, what is learned from a Search can only help you and us.
Next, assuming the results of a Search are encouraging, we suggest filing a Provisional Patent Application, over immediately filing a Non-Provisional Patent Application. The primary benefit of this approach is it typically allows the inventor a one-year window to further investigate the commercial viability of the invention before committing to the more expensive non-provisional patent application. And during this one-year window, the inventor may market the invention using “patent pending” as an additional benefit. Because you have filed a patent application, you will have a filing date, meaning if any other potential inventor discloses a similar invention or even files a patent application addressing a similar invention after you have filed your provisional application, your potential patents rights may not be harmed.
If the one year comes to a close and you find you do not want to file a non-provisional patent application, you have nothing further to do, i.e. the provisional patent application will automatically become abandoned at the one year mark.
However, if during that one year period you do conclude your invention has sufficient commercial viability, you may conclude it makes financial sense to warrant going after a patent by filing the non-provisional patent application. Further, that additional time may allow you to find financiers who may be able to assist with the patenting costs.
And lastly, assuming you have concluded filing a non-provisional patent application makes sense for you, we can draft, prepare, and file the application, along with all the required paperwork.
III. Why Choose Kelly Tech Law, PC and Registered Patent Attorney Eric Kelly
Having concluded you want to pursue obtaining a patent on your invention, you may be asking yourself, why choose Kelly Tech Law, PC and Eric Kelly to represent your interests in this regard?
The reasons you want to choose us are because: (1) Eric Kelly is a registered patent attorney, permitted to practice before the USPTO; (2) we have experience at patent prosecution (patent procurement) in a diverse array of technologies; (3) we draft our patent applications with an eye not only on the USPTO examination process, but also towards potential future litigation; (4) we will zealously represent you to bring all our resources to bear at protecting your ideas; and (5) we have affordable pricing. That is with us, you will receive unparalleled service at an affordable price.
As a minimum threshold requirement, you should ensure that whomever you choose to represent your interests with respect to patent applications and prosecution is at least registered to practice before the USPTO. If they are not, they may be committing legal malpractice.
All registered patent attorneys and patent agents have taken and passed a special examination, the “Patent Bar” as we unofficially call the exam (the exam’s official name is terribly boring and long). This is critically important as the practice of patent law has many significant substantive and procedural pitfalls that the unwary could be fatally hamstrung by. Even an attorney who is licensed to practice in a given state, but is otherwise not a registered patent attorney may be completely unaware of some of these significant substantive and procedural issues that are specific to patent law.
Mr. Eric Kelly passed the Patent Bar examination on his first attempt. (He also passed the California Bar examination on his first try.) The Patent Bar exam is considered difficult, as on average, less than 40% of test takers pass the examination. To even qualify to sit for the examination an applicant must have some sort of technical background. Mr. Eric Kelly has two technical degrees, one in chemical engineering and the other in genetics, both from the University of California at Davis.
You may run a google search for USPTO registered patent attorneys to get a link to the USPTO searchable registry to verify any given candidate is indeed registered to practice before the USPTO. For example, if you search the USPTO registered patent attorney/agent register for “Eric Kelly” you will find Mr. Eric Kelly and his registration number of 70,302.
(Note, in many patent litigation scenarios – as opposed to the process of obtaining a patent, a patent litigator is not required by law to be registered to practice before the USPTO.)
Next, you want a registered patent attorney who has experience in getting a submitted patent application through the grueling prosecution process to a point where the USPTO may finally allow claims as an issued patent. It is one skill knowing how to properly draft, prepare, and file a patent application. And it is yet another skill knowing how to navigate the prosecution process in responding to various Office Actions.
Here is a non-exhaustive list of some of the technologies we have worked on in preparing patent applications and/or in responding to Office Actions:
- Various consumer goods
- Plackett holder
- Home laundry transfer system
- Wireless remote control system for existing light switches
- Various exercise devices
- Abdominal exercise devices
- Foam rollers
- Various apparel inventions
- Wrist watches with novel materials of constructions
- Tablet computing device protector
- Magnetic cable holder
- Food manipulator and finger protector for kitchen cutting applications
- Portable kitchen composter
- Baby bottle impact mitigation device
- Vehicle side impact mitigation device
- Novel holiday stocking
- Sleeping bag with book
- Tent with projector
- Fishing rod holder with fish bite detector
- Produce spiral cutter
- Hockey stick training device
- Various medical devices
- Special trays for holding t-flasks
- Urinary tubing system
- Novel type of orthopedic boot
- Post-surgery recovery apparel
- Various software applications
- A tablet based examination system
- System and method for creating custom online marketplaces
- New search engine algorithm
- Consumer feedback to business system
While knowing how to navigate the patenting process is certainly important to even obtain a patent, our next point is perhaps even more critical.
To understand why patent litigation is critical to the process of applying for a patent one must understand that once a patent is finally issued the story does not end there. Even patents issued by the USPTO may be subsequently found invalid by the federal courts. In just about every patent infringement suit, the alleged infringer will be defending by arguing the patent at issue is invalid for any number of reasons. And a significant percentage, but not a majority, of such litigated patents are indeed found invalid at least with respect to some claims, which clearly suggests a problem at the prosecution side of our patent system.
So if one understands how an issued patent might be attacked, how it may be susceptible, where potential weaknesses may be, then one may use such information at the onset to draft a stronger patent application and prepare stronger Responses to Office Actions, to hopefully avoid having an issued patent ever be found invalid. Thus, not only do we have the experience at navigating the prosecution process, but I also have knowledge on how a potential patent could be attacked if it ends up in litigation, which helps me to draft stronger patent applications.
And our last point as to why you should have Eric Kelly and Kelly Tech Law represent your patent needs is our pricing is very affordable. We understand the market dynamics and where our services fit best. We may not be the cheapest outfit and we are far from the most expensive, but we certainly offer the most value, given our experience, for our price points. In any event, our patent service pricing may be seen here.
The range in our patent pricing reflects two variables: the complexity of the proposed invention and how crowded the prior art is with respect to your field of invention. For example, as a general rule, mechanical inventions are generally less expensive than software inventions, in terms of the cost of preparing a patent application. Additionally, applications which require more drawings will also be more expensive.
Also, some inventions may be rather simple, but may operate in a field of art that is crowded with prior art and thus preparing a patent application may take additional work, particularly with claim drafting in order to attempt to claim around the prior art.
And of course we provide a whole host of other IP services and general legal services. For example, as noted above, we do respond to Office Actions in patent matters. We also offer a full range of trademark and copyright services, including applying for trademarks and responding to trademark Office Actions. We also provide various transactional work, such as preparing and counselling on licensing agreements and assignments.
What is not included in our patent services pricing are the various fees the USPTO charges. One way to see what the USPTO is currently charging is to simply google “current USPTO fees” which should take you to a USPTO government webpage with their current pricing table. However, note their table is not the most user friendly for the uninitiated.
In general the various USPTO fees that may be applicable to you may vary depending upon your “entity status,” i.e. large, small, or micro. Small entity fees are generally half of that for large entities. And micro-entity fees are generally half of that for small entities. Most of our clients are either small entities or micro entities.
And if you are interested, the USPTO is now offering a fee to fast track patent application prosecution; however, this fee is very expensive.
IV. Timelines
Before leaving you may find it nice to have an idea of some generally applicable timelines with regards to all of the above patent procurement process.
Importance of “First to File”
The first issue with timelines is you should be aware that the United State is now a “first to file” patent nation, like the majority of the world, which is relatively new for the U.S. patent system. This is an important point for you to note and undoubtedly should create a sense of urgency in you. Consider this scenario:
- Inventor A invents widget XYZ on 01/01/2014.
- Inventor B, independently and without any funny business, invents the same invention XYZ on 08/01/2014.
- So Inventor A was the first to invent.
- Inventor B files for a patent application on invention XYZ on 10/01/2014.
- Inventor A files for a patent application on invention XYZ on 10/02/2014.
- But Inventor B files for the patent application first.
- Which one of those patent applications can mature into a patent application?
Answer, only Inventor B’s application could mature into an issued patent, even though Inventor A made the invention eight months prior to Inventor B. Why? Because in the U.S. patents rights accrue to the applicant who is the “first to file” and not to the applicant who was “first to invent” (that was our former system – and only applies to those application still pending when the new law went into effect).
Other Timelines to Consider
As an example, it often takes us one week turnaround to provide a search report and associated found related art references from the time such a Search is ordered. Likewise, it then generally takes about a month to prepare a Provisional Patent Application from the time you order the application with us. (Both of these service may be expedited when necessary.)
Then from the time, the exact date, the Provisional Patent Application is filed, you have one year to file a Non-Provisional Patent Application. You do not get one second wiggle room past that firm one year cut-off date. Once one year hits, the provisional patent application automatically becomes abandoned. So if you are going to file a non-provisional patent application, it must be filed within one year of the provisional patent application in order for the non-provisional patent application to receive the benefit of the provisional’s filing date.
As an example, preparing a Non-Provisional Patent Application may take anywhere from one month to three months depending upon a number of factors, including complexity of the invention and the extent of relevant related and prior art references. Another, variable which can extend how long it takes to prepare the Non-Provisional Patent Application is receiving timely and detailed information regarding the invention from the inventor. Thus, at month nine from after filing the provisional patent application is a good time to really think about whether you want to move forward with a non-provisional. If you decide to move forward with a non-provisional you must give us sufficient time to prepare a strong non-provisional patent application. You do not want to hamstring your efforts by having a non-provisional patent application rushed.
Then once the non-provisional patent application is filed, that application will generally be published by the USPTO at around the 18 month mark. Additionally, also often around the 18 month mark, but could be significantly longer, you should expect the first Office Action. Then we have three months to respond to the first Office Action and may take additional time, at a fee cost with the USPTO, if we need more time to respond. There will generally be at least two rounds of Office Actions and Responses. Prosecution generally takes over a year once it begins.
Thus, from the time we file the non-provisional patent application, that application will essentially just sit idle at the USPTO for approximately 18 months. As a collateral benefit for you, during that period of idleness you should not be incurring any legal fees nor USPTO fees with respect to that application during that period of idleness (unless for e.g. you have some transactional work related on the application, such an assignment). As noted above in the cost section, you can opt to pay an additional fee to the USPTO for expedited prosecution, i.e. “Track One Prioritized Examination.”
Statutory Bars Under 35 USC section 102
Lastly, with respect to timelines you should generally be aware of the “statutory bars” under section 102, i.e. the “one-year grace period.” Here is the general gist of the rule, you must file a patent application within one year from the time you make a “public disclosure” of your invention. Filing a provisional patent application would count. This rule is firm, with no wiggle room. If you do not file a patent application within one year of such a public disclosure you are forever barred from obtaining a patent, no matter how wonderful your invention may be. (For design patents this one-year grace period is only six-months!)
And with respect to “public disclosure” while the term is new under the new America Invents Act (AIA), the phrase is thought to encompass well settled doctrines of “public use” and on “sale bars.” For example, if you have made a commercial offer to sell the products of your invention, i.e. not even a finalized sale, you have triggered the “on sale” doctrine and then have one year to file a patent application. Note, a commercial offer for sale of the a product of your invention should not be confused with an offer to sell an ownership interest in any patent rights, where that type of offer for sale does not trigger the on sale doctrine.
Another example of a public disclosure is, you disseminating information regarding your invention on a website, e.g. perhaps to obtain investment. Or maybe publishing in some sort of technical journal. If you have made a public disclosure of your invention, you must file a patent application within one year or be forever barred from obtaining a patent on your invention.
Closing Remarks
In sum, we have presented what we feel are compelling reasons for you to choose us in representing your patent law needs. Such reasons include: (1) Eric Kelly is a registered patent attorney, permitted to practice before the USPTO; (2) we have experience at patent prosecution (patent procurement) in a diverse array of technologies; (3) we draft our patent applications with an eye not only on the USPTO examination process, but also towards potential future litigation; (4) we will zealously represent you to bring all our resources to bear at protecting your ideas; and (5) we have affordable pricing.
Please call us today at:
310-486-2698
to discuss your patent law needs or visit our Contact page. We are looking forward to assisting you with your exciting invention.