What is a Patent?

A patent, in the sense of a United States Patent, is a grant from the United States Government of the right to exclude others from making, using, or selling the invention described in the patent in the United States. The patent expires twenty years from the date the patent application is filed, although the patent will not be effective until it issues.

Once the patent is obtained, the inventor (or the inventor's assignee) may enforce the patent by notifying infringers or potential infringers that they may not make, use, or sell the invention during the term of the patent. The inventor or assignee may sell or license the inventor's patent. If necessary to protect the patent, the inventor or assignee may sue infringers in federal court for damages and to enjoin further infringement.

How do I obtain a patent?

Patents are obtained by "prosecuting" a patent application through the United States Patent and Trademark Office (the "PTO"). Although the inventor may prepare the application himself, most applications are prepared by a patent attorney or a patent agent. (A patent agent is a non-lawyer who is admitted to the PTO and may prosecute applications for others. A patent attorney can provide legal advice and representation in addition to representation before the PTO).

The application includes a description of the invention and claims. The claims define the breadth of the invention; that is, how much territory the inventor is staking out. The PTO assigns the application to an examiner, who determines initially whether all or part of the claims are allowable, that is, whether a patent may issue for those claims. The PTO officially responds to the application with an Office Action, which generally requires a response from the inventor. The response may include amendments to the application and arguments to the examiner explaining why the examiner should allow the patent to issue.

Ultimately, a successful application results in a Notice of Allowance and the issuance of a patent.

Do I need to have a patent search done?

As with all legal matters, a good lawyer must say, "it depends." A search will cost much less than prosecuting an application, and will generally tell you what the scope of your patent would be. If the results of the search tell you that your patent would be too narrow to be economically useful, you can save the cost of applying for a patent. However, a search is not mandatory, and if you proceed with the application, the cost of the search will be an additional part of the overall cost of the process.

Searches are important because patents issue only on "new" inventions. If there are a lot of similar inventions already patented, the scope of your patent will be narrowed because you cannot claim the already-claimed territory. If the available territory becomes too narrow, it will not be worth spending thousands of dollars to obtain a patent. Thus, if your invention is in a field where there are a lot of related products already (a better hubcap, for example) doing a search is usually beneficial. Further, the search results are useful in the patent application process, so the cost of the search is not wasted if you do proceed with a patent application.

While a search is generally advisable, you should determine whether to do a search in consultation with your patent attorney.

What about the cost?

The total cost of the patent application process depends on several variables, including whether you are a "small entity," whether you do a search, how many claims you have, and how much back-and-forth communication with the PTO is required. Costs include fees the PTO charges as well as attorney fees. You can make a general estimate of total cost based on the following information.

PTO Fees

** PTO fees are subject to annual revision each October. **

("Small entity fees -- multiply by two for "large entity" fees. A "small entity" is an individual inventor, a non-profit organization as defined in 37 C.F.R. (Code of Federal Regulations) § 1.9, or a small business concern as defined by the Small Business Administration in 13 C.F.R. § 121.201).

• Basic Application Fee: $500
  (includes three independent claims and up to twenty total claims.)
• Additional independent claims: $100
• Additional dependent claims: $25
• Issue fee: $700 (due after notice of allowance)

(Example: A "standard" small-entity utility application will incur $1,000 in PTO fees).

You should also be aware that the PTO charges "maintenance fees" at 3.5, 7.5, and 11.5 years after the patent issues. Those fees are subject to change, but they currently are:

• 3.5 – $450
• 7.5 – $1,150
• 11.5 – $1,900

(again, double these numbers for non-small-entity status)

Attorney Fees

Attorney fees will vary; the following are fee guidelines used by O’Neil & McConnell, P.L.L.C. and are not reflective of or binding on any other law firm.

• Patent search
  Includes search, review of search results, and opinion letter to client. O’Neil & McConnell, P.L.L.C. performs searches on an hourly basis.
• Patent application preparation
  O’Neil & McConnell, P.L.L.C. prepares patent applications on an hourly basis. Fee does not include PTO filing fees.
• Responses to PTO Office Actions during prosecution
  O’Neil & McConnell, P.L.L.C. bills fees for these responses on an hourly basis.

Additional Fees

Drawings: The PTO has strict guidelines for patent drawings which generally require that formal drawings be prepared by a professional draftsman. Because the PTO will examine an application based on "informal" drawings, this expense does not have to be incurred until the notice of allowance is received. Costs to the client for formal drawings vary with complexity and the number of figures required to depict the invention, and cost in the range of $120-150 per plate.