|Michael J. Colitz, Jr.
Registered Patent Attorney
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The following is some general information on obtaining a patent. Please be aware that I hold myself available for a counseling session to discuss your invention with you at no cost, either at my Dunedin, Florida office or by calling 727-734-2855 or toll free 1-877-882-2212.
UTILITY PATENT INFORMATION
I. Background Information
To give you some background information, a patent is a contract between an inventor and the government. The inventor must fully disclose his invention and he thereby contributes something new, useful and unobvious to the fund of public knowledge. In exchange, the government grants to the inventor, or his assignee, the right to exclude others from making, using or selling the claimed invention for 20 years from the date of filing of the application for patent.
When a patent application is filed with the U. S. Patent Office, a Patent Examiner, in determining patentability, must find that the invention is (1) useful, (2) novel and (3) non-obvious. The invention is useful if it has a present day useful purpose. Novelty is satisfied unless the Examiner finds a single prior art reference which contains all of the features of the invention which are claimed in the patent application.
In determining whether an invention is obvious, an Examiner may rely on the combined teachings of several patents, printed publications or other prior art references. If a hypothetical person of ordinary skill would view the claimed invention either as an obvious combination of the individual features disclosed in several references, or as an obvious extension of the existing technology, then the Examiner will reject the application as not patentable. In reality, the determination of obviousness involves subjective judgment regarding, for example, the actual content of the prior art, the level of skill of the ordinary skilled person in the technical field and the reasonableness of combining features from different source references.
Should you decide to file a patent application, I would caution you that, under U.S. law, the application must be filed within one year of the first publication, sale or offer for sale of an item embodying the invention. Equally important, many foreign countries require that the patent application be filed before any publication, sale or offer for sale of the device. However, if an application is filed in the U.S. before the first date of any publication, sale or offer for sale, most countries will accord that U.S. "effective filing date" to applications filed in the foreign country within one year of the U.S. filing date. During this one year interval, the benefit of the earlier U.S. filing date will attach to such foreign patent application. There are a number of strategies for obtaining foreign patents, and if you decide to foreign file, we could tailor a program to your needs.
II. Patentability Search
We have found that the best method of evaluating whether to proceed with a patent application is to conduct a patentability search using a comprehensive database of the U. S. Patent Office patents. The inventor first discloses his invention to us and then we, or an associate, will conduct the search. In conducting the search, all properly classified and filed U.S. Patents which are pertinent to the invention are reviewed and copies are ordered for your records. We then draft a patentability opinion letter indicating the scope of the patent protection which we feel is available for the invention. Foreign patents, periodicals and textbooks are not searched since they are not well classified. Consequently, a patentability search is approximately 90% effective in locating any given piece of pertinent prior art.
The results of the search may help you to better define the invention or to identify alternative embodiments of the invention, and may help us to draft the text of the patent application and to draft claims in a way which would give the broadest possible protection to the invention.
Our fee for conducting a patentability search is $450, which includes our initial conference, the patentability search, and the opinion letter. This fee must be paid in advance. Additional services, if required, will be billed to you at our regular hourly rate of $200 per hour plus out-of-pocket expenses incurred on your behalf. Filing without a patentability search, though possible, is not recommended.
Please appreciate that the scope of a patent search is necessarily confined by cost considerations. Therefore, while the search is calculated to give the best value for the money, the search could always, with additional funding, be extended into additional Patent Office classifications, the technical literature and foreign art databases. With additional funding, we could also run an "integrity check" of classifications to determine which references were missing from the appropriate files at the Patent Office so that these references could be located elsewhere.
Please also be advised that the scope of a patentability investigation is quite different from an infringement investigation and study, and the results of a patentability search should not be considered dispositive of all infringement questions.
III. Patent Application (Utility)
Should you decide to file a patent application on your invention through this office, we can advise that the cost of a typical patent application is approximately:
Legal Fees: $3,000 - $4,000
Government Fees: $400 (micro entity)
Drawings Fees: $125 per sheet
We accept major credit cards for the payment of all fees.
The legal fees vary depending upon the technical complexity of the subject matter, the quality of the written description provided by the inventor, and the number of revisions of the application necessitated by the redefining of the invention by the inventor during the application drafting process. The government fees are subject to change. The total cost for filing the average patent application is typically under $4,000. Legal fees for preparing continuation-in-part applications, improvements over existing applications, are normally about 50 percent of new applications.
In addition, further costs are incurred during the course of the prosecution of the application, while it is "patent pending." The U. S. Patent Office will issue an "Action" setting forth their findings as to patentability and, in the case the finding is negative, will require the Applicant to file a "Response." Usually, after one or two Responses, outstanding issues are resolved as to the form of the claims and the scope of protection. Each Response generally incurs $1,000 in legal fees. After allowance, and upon payment of an issue fee of $240 plus a $300 preparation fee, the application issues into a patent. Accordingly, fees and expenses may typically run between $4,000 and $4,700, depending upon the complexity of the rejection, the reasonableness of the Examiner, the closeness of the prior art as compared to the scope of patent protection desired by applicant, and the quality of the applicant's comments for responding to the Examiner. The period of prosecution, and the interval over which these added costs are incurred, averages one to two years. Maintenance fees are due at 3 1/2, 7 1/2, and 11 1/2 years after the issue date, and are presently $400, $900 and $1,850 respectively. The aforementioned maintenance fees are subject to change by the U. S. Patent Office.
You may be interested to note that licensing can take place any time after the application is filed. Some manufacturers prefer to license an invention while it is still in the patent pending stage. Letters to third parties at the clients request have a $350 minimum, our normal hourly billing rate.
Our office would require your express authorization to proceed with preparing the patent application, and we would require a non-refundable retainer, usually $2,000 plus the drawing fees concurrently with the authorization. The balance of the initial legal fee, filing fee and expenses are due when the application is executed by you for filing in the Patent Office. The prosecution fees and expenses will be billed to you at the time we do the work.
PROVISIONAL PATENT INFORMATION
I. Patent Application
Consideration should also be given to a relatively new procedure which defers costs. Such procedure involves an initial filing of provisional patent application. Your cost would be $1,900 in attorney fees plus $65 in a government fee plus $250, if needed, as an estimated drafting fee for two sheets. You could then disclose your invention to others in our efforts to market your invention or to find a manufacturer, licensee or assignee. Such disclosures are with relative security and your invention will be protected so long as you file your non-provisional patent application within one year of the filing of your provisional application.
Legal Fee: $1,900
Government Fee: $65
Drafting Fees: $125 per sheet
The cost then later for filing your non-provisional patent application would be an additional $1,500 in attorney fees plus $400 in a government fee. A non-refundable fee of $1,500 is required before we begin work on your provisional application. Pros and cons of provisional applications are set forth at the web site of the U. S. Patent Office, www.uspto.gov.
DESIGN PATENT INFORMATION
I. Background Information
In order for the design of an invention to be patentable, it must be novel and ornamental and unique. Further, the protection afforded by a design patent is limited to the ornamental configuration of the invention as opposed to the functional characteristics of the invention (which are protected by a utility patent). Although a structure is not presently being marketed, this is not an indication that the design is new.
II. Patentability Search
We have found that the best method of evaluating whether a design is patentable new is to conduct a patentability search in the U. S. Patent Office in Washington, D.C. database The inventor first discloses his invention to us and then we, or our Washington, D.C. associate, will conduct the search. In conducting the search, all properly classified and filed U.S. Patents which are pertinent to the invention are reviewed and copies are ordered for your records. We study the patents located and render a patentability opinion to you indicating the scope of the patent protection which we feel is available for the invention. Foreign patents, periodicals and textbooks are not searched since they are not well classified. Consequently, a patentability search is approximately 90% effective in locatinganticipatory prior art.
III. Costs (Design)
The fees involved for the preparation and filing of a typical design patent application and search are approximately:
Legal Fees: $900
Government Fees: $190
Drawings Fees: $125 per sheet
Sometimes, after reviewing the invention, we suggest foregoing the patentability search and recommend preparing and filing the design patent application immediately. Our decision in this regard is usually based upon the economics of the cost of the patentability search as compared to the cost of preparing and filing the design patent application. If you wish us to prepare a design patent application on your behalf, please forward an advance, non-refundable payment in the amount of $800 plus the drawing fee. The balance due must be received prior to forwarding your application to the U.S. Patent Office.
IV. Patent Prosecution
After the application is filed, the U. S. Patent Office takes the application up for examination (usually in about 12-36 months). They conduct their own search and issue an Office Action which may reject the application. We have a right to respond to the Office Action by arguing that the design of the invention is different from the designs located in their search. Usually, after one response the Patent and Trademark Office allows the application. Each response generally costs $500-1,000 in legal fees. After allowance, and upon payment of an issue fee of $505 plus a $300 handling fee, the application issues into a patent. Accordingly, design patent prosecution generally takes 21 - 36 months and costs approximately between $1,800 and $2,400 for preperation and prosecution. This cost may vary if the subject matter is complex or if difficulty is encountered during the prosecution of the patent application.
An application for a design patent must be on file in the U. S. Patent Office within one year from the date on which the invention was first used or placed on sale in this country, or patented or described/illustrated in a printed publication in this or a foreign country. Moreover, many foreign countries require an application to be filed before the invention is disclosed in any manner, anywhere in the world. Failure to comply with the above requirements will prevent you from obtaining patent protection in the United States and/or many foreign countries.
* The government fees listed here were posted April 3, 2014. These fees vary regularly. The fees shown are for a micro entity, an inventor with no more than 4 applications and an adjusted gross income of less than three times the National average ($153,051). If the inventor does not fit the micro entity classification, the inventor does not fit the micro entity classification, the inventor is a small entity and government fees are normally doubled. If the application/owner is a large entity with more than 500 employees, the government fees are doubled again.
In the foregoing we touched on some of the most important aspects of protecting an invention. It is highly recommended that you consult with a patent attorney at once in order to obtain detailed advice concerning your particular invention. If you wish to retain our office as your patent counsel, we would be pleased to meet with you at your convenience. There would be no charge or obligation for an initial consultation and patentability search.
Very truly yours,
Michael J. Colitz, Jr.
Registered Patent Agent
640 Douglas Ave
Dunedin, FL 34698
Phone (727) 734-2855
Fax (727) 734-2750