10260 Westheimer Road, Suite 465 Houston, Texas 77042 PATENT PROCEDURE WHAT IS A PATENT? A patent is in the nature of a contract between an inventor and the government. In return for a full written disclosure of the invention, the inventor(s) is granted the right to exclude others from making, using or selling the subject matter defined in the patent claims for a period of 20 years from the date of filing of a patent application. A patent does not give the owner the right to make, use or sell anything. IS A PATENT NECESSARY? The decision to file, or not to file, an application for a patent should be based upon the patentability of the invention, the commercial potential of the invention, the various different values of the particular type of patent that can be obtained, and the uses to which it may properly be put in the industry to which the particular invention relates. The commercial advantage of excluding competitors must also be considered. ARE ALL INVENTIONS PATENTABLE? To be patentable, an invention must be new, useful and not obvious to a person of ordinary skill in the technological area to which it relates. The claims of the patent, which are the numbered paragraphs at the end of the patent text, define the scope of protection. The claims may be broad or narrow, depending upon the prior technology (the “prior art”), e.g., what has happened previously. WHO SHOULD APPLY FOR A PATENT? An individual independent inventor should apply for a patent as soon as she has reduced her idea or concept to practice, i.e., has a working model or written description and drawings that an ordinary craftsman can develop. Employees who invent a new product or process are the inventors and, in the US, the only entity that can apply for a patent. Under US law, the ownership of the patent and the underlying invention, however, are the property of the employer company or organization. Often, the employee has signed an employment agreement stipulating that all rights to the products of research must be assigned to the employer. Absent an employment agreement, if the invention was created on company time and on the employer’s premises, and the invention was within the expected scope of the employee’s duties, all rights to the invention belong to the employer under the work-for-hire doctrine. WHAT IS THE VALUE OF A PATENT? A patent or patent application can have many values besides the obvious commercial value. It may be of value as advertising material, may support a manner of doing business or contracting by which tax money is saved, and/or may add strength to a franchise, to a contract or to a know-how license. A patent or patent application may constitute an offset against a charge by a third party of infringement of their patent, and sometimes may be the basis for winning an interference with a competitor’s application to prevent him from getting a patent. Further, patents often force a would-be infringer to make design modifications which involve development expenses and which reduce the sales appeal of his device or product. If the patent is assigned to an employer under the work-for-hire doctrine, a patent can still be a valuable asset for the inventor. Some companies or organizations, such as universities, will compensate an inventor for a patent that is commercialized, either with a flat fee or, in some cases, a small percentage of the royalties. Even without monetary compensation, patents are important career-wise. Career advancement in some industries often depends on proof of inventorship and patents certainly improve a resume or curriculum vitae. HOW IS A PATENT OBTAINED?
First, the invention must be disclosed in full detail to the attorney. A brief written disclosure of the idea, including a drawing or sketch, and the problems that the invention solves is strongly preferred. The attorney may recommend that a preliminary patentability search be conducted to reveal prior patents or publications relating to similar devices. The search results provide a firm basis for deciding whether it would be worthwhile to incur the expense of filing a patent application. If the invention falls within one of the general classes of general patentable subject matter, it is generally recommended that a limited novelty or patentability search be undertaken. Thereafter, a patentability opinion can be prepared based upon the references uncovered in the limited search. The patentability opinion may advise that patentability is not available or the opinion might advise to proceed with a patent application. When a search is to be performed, it is customary to ask for an advance retainer on the order of $2500, to be applied toward the disbursements that are made in connection with the search, and the patentability opinion report rendered. To properly draft a patent application, the attorney should be familiar with the closest prior art references that it is economically feasible to find. The search provides much of this information. On a moderately simple invention, the preparation and filing of a patent application typically costs about $6000 to $9500 including attorney’s fees, Patent and Trademark Office filing fees, draftsman’s fees, and other incidentals to the preparation and filing of the application. More complex applications including computer-related and chemical applications can range from $9,000 to $18,000 for preparation and filing. The cost is in addition to the charge for the patentability search and opinion. It is customary to ask for an advance of at least one half of the estimated cost of the patent application fee before work on a patent application is commenced, except where the work is being done for an ongoing client. This advance covers disbursements, which must be advanced to the patent draftsman and the Patent and Trademark Office, and applies toward the legal fees incidental to the preparation of the application. The preparation and filing of a patent application requires, in the normal routine course of events, one to two months after the search report and opinion, although this time may be reduced when the circumstances demand it. The application comprises claims, which are the marks and bounds of the invention, background information describing the state of the art up to the time of the invention, and a detailed description of the invention including drawings. After the patent application has been filed, the Patent Examiner performs a search. He writes a letter to the attorney called an “Office Action”’ citing the prior art references found in the Examiner’s search. The first Office Action is not usually received in less than six months to a year after the application is filed. Based upon the Examiner’s references, the attorney will make a recommendation that the application be further prosecuted if the client has a continuing commercial interest in the invention, or he may recommend that the application be abandoned if there appears to be no real hope of obtaining claims of meaningful scope. If it is decided to prosecute the application further, the attorney prepares a letter to the Examiner, which is usually referred to as a “Response”. This letter may amend the claims to better distinguish them over the references cited by the Examiner. It may also amend the application to comply with the Examiner’s editorial taste. It always includes a discussion of the differences between the references cited and the invention, and a legal argument as to why the particular application should be allowed to issue as a patent. The attorney and the Examiner may also conduct oral conferences, until the application is either allowed or “finally rejected”, which commonly occurs on the second Office Action. The total prosecution of the application requires, on the average, about eighteen months to three years. Most of that duration of time is spent waiting on Office Actions from the Patent and Trademark Office. In routine cases on simple inventions, the prosecution of the patent application may cost anywhere from $4000 to $8000 depending upon the specific circumstances. Once the application is allowed, the Patent and Trademark Office requires payment of an “Issue Fee” of about $1500, in the case of an individual or small company, to cover government costs in printing the patent grant. Summary In summary, it may be stated that a moderately simple invention covered by a patent application, which is subject to routine prosecution, can be patented in the United States for somewhere between $15,000 and $20,000. Many simple cases of routine nature are handled within that estimate. A more nearly average total cost for inventions of moderate complexity commonly derived from corporate industry is in the $20,000 to $25,000 range. Note that these sums do not all fall due at any one time, but are payable over a period of years. Filing for patent protection in foreign countries is extra, and costs vary between $4000 and $12,500 per country. Typically, the average foreign filing costs are approximately $5,500 per country where translation into another language is required. Maintenance of a patent in foreign countries includes annuity fees for a period of twenty years from the date of filing. Overall costs for filing, prosecution and annuity fees will range from $70,000 to $100,000 per country. * This information should not be considered legal advice since its applicability
to a particular situation would depend upon the specific, relevant facts. |
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