Questions and Answers:
- Q: I'm not sure whether I should pursue a patent or not; what is your opinion?
A: Patent Practitioners, as a matter of professional practice and ethics, don't give opinions. They instead like to deal with harder facts and observations. It is usually assumed that the inventor, or company for which the inventor works and to which the inventor has assigned his/her inventive output, will have the objective that a patent should protect an existing business, generate an income through licensing or product sales, or both. Even if an inventor does obtain a patent, it is still possible that a competitor may be able to present proof of prior art that was not available to the patent office or to the inventor, in which case the competitor might litigate to have the inventor's patent invalidated. It is even possible that the patent obtained may not be sufficient to allow the inventor (or the inventor's company) to safely practice or sell the invention without first paying royalities to earlier inventors whose patent claims read on some aspect of the invention. Even without such challenges, it would be impossible generally for a Patent Practitioner to know whether a given invention will become a success in the marketplace. A Patent Practitioner cannot generally predict the outcome of such complex factors as the size of a market, what market share can be obtained with the inventor's (or inventor's company's) advertising and distribution, and whether a profit can be made. Although it is always possible to get people's opinions on such questions, a Patent Practitioner alone is not generally qualified or permitted to provide professional answers to what is really a business question.
- Q: What are the chances my patent application will be allowed and result in an issued patent?
A: Although it is possible to quote how many patents and how many applications the patent office grants in given periods of time, and then to base statisical probabilities upon these numbers, no Patent Practitioner can predict reliably the outcome of any given patent application. There are too many variables involved. It is the job of a patent examiner within the patent office to rule on whether the claims of your patent application will be allowed and a patent granted to you. And not all patent examiners would come to the same conclusion. Meaningful guidance usually comes from having done an extensive patent search for prior art first, followed by a close comparison between what can be claimed in the invention and what is claimed by the nearest prior art. The best guidance is often only obtained from those who have both good skills in claim writing and an intimate knowledge of patent activity in the field of the invention.
- Q: How long does it take to get a patent?
A: Too long. Generally speaking, it takes about two to three years, although the USPTO has a goal of attempting to make it under two years. Examinations in some fields of technology take much longer than others, depending upon their individual work loads.
- Q: Does it really matter which Patent Practitioner I hire, and how do I select the best one for me?
A: Well, you certainly don't want to hire someone with whom you have difficulty communicating. You should pick someone with whom you can communicate well, someone who can understand you easily, someone whom you can understand easily. Look for a Patent Practitioner (Patent Agent or Patent Attorney) who is accomplished at securing patents in your field, and interview him or her to determine how well you two can communicate with one another, how well he or she already understands the field of your invention, how readily they can be available to you to answer your questions as they arise, and how quickly they can carefully prepare and file a good patent application for you. Patent Practitioners are charged with the duty of representing their clients "zealously" (within the bounds of the law) and preserving a client's confidences and secrets. Nevertheless, if you can find a Patent Practitioner who is also an inventor with many of his or her own patents protecting his or her own business(s), then you probably have found one who has the best sensitivities to both your emotional and business needs regarding your invention. You should make sure that the representation you choose does not also work for your competitor(s); this will help assure that any undesirable leak, even an accidental one, or one made unconsciously, won't possibly occur.
- Q: Is it safe to tell the Patent Practitioner what my invention is before I've hired him/her to take my case?
A: Until your patent application has been filed with the USPTO, it is always wise to have anyone, to whom you are to reveal your inventive idea, first sign a confidential disclosure agreement (CDA) form (sometimes alternatively called a "nondisclosure agreement" or "NDA"). There is no standard form for a CDA, but here is an example CDA form that may or may not satisfy your particular circumstance (set your print margins to 0.5"). Patent Practitioners must adhere to the USPTO's Code of Professional Responsibility and a set of Disciplinary Rules. A Patent Practitioner can be suspended or excluded from patent practice if reported to the Director of the USPTO and found to have deviated from this code or broken one of these rules. One of the canons of the code is that a Practitioner should preserve the confidences and secrets of a client, except where required by law and other special circumstances as defined within the USPTO rules. But don't overlook that you must first hire a Practitioner to become the Practitioner's client. Here is an extra bit of advice if you are an employee of a company to whom you have assigned your inventive ideas, and it is the company who has hired the Practitioner: the Practitioner will have your company as the client and not you, so don't reveal to the Practitioner any personal secrets that you would not want your company to know about.
- Q: After the Patent Practitioner takes my case, can I safely go away on a long vacation?
A: There will be plenty of opportunity after the patent application is filed. In the first month, however, it will be best to stay in touch with your Patent Practitioner while he or she is preparing your patent application for its initial filing. This is the time when most communication needs to take place to assure the application is complete and correct. There may be several drafts and edits to review and approve. After the application is on file, a year or more may go by with no need for your attention. Thereafter, the examiner from the patent office will mail a response which will need to be responded to with an amendment submitted by your Practitioner within one to three months. If it takes one or two more responses to convince the examiner to allow your claims, each cycle may take up to six months or longer. The important thing is that you be reachable by your Practitioner should he or she have questions of you in preparing each response.
- Q: Can I do my own prior-art search, and how do I do that?
A: You can, but your Patent Practitioner will have to do a search as well. The advantage of your doing a search yourself is that you will get a better idea of whether your own inventive idea is patentable over the prior art. If you do a search, your Patent Practitioner can advise you whether or not what you find is encouraging or not. If you decide to continue, your Practitioner will do more searching just to be sure all the bases are covered, so to speak. It is a Practitioner's duty to avoid filing an application if obvious prior art exits that will make your invention neither novel nor unobvious. The Practitioner must also assure that adequate preparation has been done before filing an application. Searching is actually an art that is practiced well only by those with considerable experience in both the use of search tools and the technical disciplines associated with the inventor's invention and the problem(s) it addresses. A thorough prior-art search involves searching US patent databases and also those of other countries. Proper searches include key-word searching and use of patent categorization classes and subclasses. They also include searching databases of publications other than patents. The searcher is well advised that not all prior-art found in patents is disclosed using terminology that is obvious. The most advisable thing that an inventor should do before contacting a Patent Practitioner is to at least use key-word searching on the databases of US Patents and US Patent Application Publications available on the internet at the USPTO.
- Q: What does an inventor need to provide to the Patent Practitioner?
A: Each inventor should provide the Practitioner with his or her name, home address, mailing address if different, telephone number(s), and country of citizenship, and any other helpful contact information. The inventor should provide the Patent Practitioner with a full disclosure of his or her inventive idea(s) for which he or she wishes the Patent Practitioner to prepare, file, and prosecute a patent application. This should typically include a write-up including sketches with references in the write-up to what is shown in the sketches. The inventor should attempt to succinctly summarize what he or she sees as the invention, that is, what the inventor sees as the novel and unobvious aspect(s) of the invention in comparison to prior art known to the inventor. The inventor should provide a list of any publications, patents, or other knowledge or activity that the inventor thinks comes close to being similar to the inventor's new ideas. The inventor should also prepare and provide a Power of Attorney to the Practitioner to enable the Practitioner to represent the inventor(s) before the patent office. See Power of Attorney form.
- Q: How can I establish the earliest possible invention date to be recognized as the first and true inventor?
A: The easy answer is that you should write down a detailed description of your inventive idea with detailed sketches, sign and date each page, and immediately thereafter get one or two witnesses, who won't disclose it to others and who are qualified to read and understand it, to sign on each page that they have read and understand it. The next easy answer is that if you didn't get it disclosed in writing and witnessed immediately, then do it as soon as you possibly can. This, if it's complete enough, can qualify as what is known as a "constructive" reduction to practice. If, unfortunately, some other inventor of the same idea(s) has done the same, but neither you nor they has actually developed the ideas sufficiently that either disclosure would enable others to make the invention work, then who is the first inventor may be decided by who first demonstrates that they have a complete grasp of the invention by either finally disclosing a truely constructive reduction to practice or "actually" reduces it to practice. An actual reduction to practice must be by building and/or performing the invention with one or more dated witnesses contesting to the demonstration.
- Q: How can I obtain the earliest possible date to be covered by patent protection?
A: File a patent application as soon as possible and immediately begin using the notice "patent pending" on any products incorporating the invention. Your patent application is published 2 years after your filing, unless it becomes abandoned before then, but only if you have not requested upon filing that it not be published. To request that it not be published, you have to state that you don't intend to file an application for a foreign patent. One reason for not wanting a patent application published may be that you, the inventor, want to keep your competitors in the dark as long as possible so they don't start looking for a way around your pending patent. Another reason may be that you fear your patent application may be finally rejected, and if it is, you may want to let it thereafter become abandoned and thereby remain a trade secret with you. But if you don't care about what happens should your patent become abandoned, and you're not worried about early countermoves by the competition, then let it be published while it is still an application. Immediately after it is published, notify your competitors of your claims and your patent-pending status. This will set a date after which any infringment on their part will result in their being liable for retroactive royalties should your patent eventually be granted.
- Q: Where can I learn more about patents and the patenting process?
A: There are many books available on the subject. The United States Patent and Trademark Office (USPTO) is an excellent place to get help. And there are many resources available on the internet. I have provided links to many of these resources from my Resources link which is accessible from any of the pages on this Novelthink website.
- Q: How much will a US utility patent cost?
A: There are many components to how much a patent costs. First, there is the cost of the inventor's idea, that of the work in coming up with the invention and disclosing it. For most technologically based inventions, the invention is a result of a company sponsored R&D project and a result of significant expenditures on that project, Some of the cost of the education and training of the inventor in preparing him or her to come up with the invention should probably also be included, but much of it is difficult to account for properly. When management in a company induces an employee to disclose an idea that will improve a product or process with which the employee works in production, that idea may only appear to be free. Second, There is the cost of the government fees that have to be paid to the patent office for the filing (a minimum of $385 for small entities and double for large), for the application publication ($300), for the issue fee ($665 for small entities and double for large), and for maintenance during the life of the patent (for a small entity, $455 at 3.5 years, $1,045 at 7.5 years, and $1,610 at 11.5 years, and twice as much for a large entity). If you've been adding these amounts, you'll have a total of government fees of $4,460 for small entities and $8,620 for large. These are the US fees as of January 2004. More government fees are involved with any continuations, requests for continued examination, appeals, etc. Finally, there are the fees for the Patent Practitioner's services. These will depend of course on the individual Practitioner, upon the level of preparation of the initial disclosure the inventor(s) present to the Practitioner, on the complexities or simplicities of a given invention, the number of pages and the number of drawings found necessary to file, the Practitioner's level of experience in the field of the invention, the difficulty of preparing amendments in response to the Patent Examiner's objections and/or rejections, how many amendments are required, and the examiner's responses to each amendment. Based on one person's thumbnail observations, the current range for Patent Practioner costs in the middle 90% of a statistical distribution over a sample containing a wide variety of cases, runs from a low of perhaps $4,000 to a high of perhaps $12,000, with a mean of near to $8,000. But then this is only conjecture, is dated, and is not to be relied upon. The best advice is to get quotations from a number of Practitioners before selecting one. Regardless of the price, if you are serious about obtaining an effective patent, try your best to make sure you hire a Practitioner who will file an application for you in which the disclosure is complete and in which the claims are skillfully drafted to maximize the scope of your claims without them being rejected by the examiner.