In this episode, we give a general overview of the patenting process and tips on how to avoid common traps.

TRANSCRIPT

Note: The transcript has been modified and abridged.

RESOURCES & LINKS

Jade IP Patent Process Chart: HERE . "Other Firms" fees are based on a national average.

INTRO

So, you've done the hard part. You toiled over countless nights and weekends and now . . . you've invented something. And it's great. You have dreams of selling your patent to a conglomerate like GE or Google and finally quitting the rat race. You read through the USPTO's site and patent blog posts about applying for a patent and the sheer amount of information is overwhelming. You just want to know: how much will it cost, how long will it take, and how do I apply?

OVERVIEW

The average cost to get a patent can be between 12,000 USD to 22,000 USD and the average amount of time it can take is 2-3 years. The patent game is a long one, so it's good practice to manage your expectations and learn the rules.

I've already covered patent searches in another vlog and you'll want to seriously consider this before moving forward with an application.

A patent is a government approved monopoly on an invention and the USPTO is the only entity that can give patent rights in the U.S. To apply for a patent, you will have to submit your application to the USPTO. Patent applications are examined, meaning that the USPTO looks to see if someone came up with your invention before you. If your invention is not new, the USPTO will not give you a patent.

There are 3 types of patent applications: design, utility, and plant. Design is for how something looks, utility is for how something works, and plants are for special types of plants. We will not cover provisional patent applications in the episode because they are not examined, not published, and cannot result in a patent unless they are either replaced with or converted into a utility or plant patent application.

For the purpose of illustration, I will walk you through a flowchart showing a simplified patent application process. You can get a copy of this chart in the link above.

This chart uses an example of a utility patent application only filed in the United States and does not address the After Final Consideration Program (AFCP). For this example, all costs are in US dollars and we won't take any extensions of time during the "prosecution" of this patent application. "Prosecution" is a term of art that means the processing of the patent application between the Applicant and the USPTO. Prosecution of a patent has nothing to do with the state or federal court system.

APPLICATION PHASE

The first phase is what I call the application phase. You start with having a patent application drafted and then filed with the USPTO. The USPTO is very picky about the format of the application. If the application is improper, the USPTO will reject it. A larger danger is a properly formatted but inadequate application. An inadequate application is when, aside from the invention, the substance of the application fails to meet the legal requirements for patentability. This is typically because of shortcomings in the application.

There are no backsies, so an inadequate application may be dead on arrival to the USPTO. Because of this, companies typically hire a patent professional, like a patent attorney, to draft and file the application. It can take close to a month to draft the application and the average cost for a typical utility application is about $10,000 in the US. Separate from this, the USPTO charges their own fee based on the size of the company that is filing. As of the date of this filming, it's $1,720 for a large company, $860 for a small company, and $430 for a micro-entity or very small company.The USPTO changes their fees regularly, so make sure you are up to date on the fees.

After your application is submitted, the USPTO checks to see if the format is correct and if the application is complete. If it is, it'll be sent to an Examiner and starts the 2nd phase - prosecution of the patent.

PROSECUTION PHASE

The Examiner will carry out a patent search on your application and look for "prior art." "Prior art" is a term of art meaning anything that is publicly available that shows that someone invented your invention before you did. If the Examiner doesn't find prior art, the USPTO will tell you can get a patent. But, the Examiner almost ALWAYS finds prior art and will issue a rejection. It takes the USPTO about 16 months to do this search and send a rejection. The rejection letter is commonly referred to as an "Office Action".

FIRST OFFICE ACTION

A first "non-final Office action" usually includes rejections of most, if not all, of the pending claims. The legal rights of the patent are defined by the claims. In essence, the claims are the most important part of the patent. The examiner will present a list of alleged prior art documents and explain why he or she believes your patent does not meet the requirements of patentability.

You HAVE to respond in writing to the Office Action by the deadline or the application will be abandoned and dedicated to the public, which is a nice way of saying thrown in the trash and allowing anyone in the world use your invention.

I am an avid believer in DIY, but homegrown responses are very risky and a poorly prepared response can have dire financial consequences. At least one reason why is because, outside of the technical arguments, there are particular legal arguments that can or need to be made. Additionally, what is written in the response can be used against you in a court of law if the validity, also known as quality, of your patent is ever questioned. So, responses need to be drafted with surgical precision because you don't want your paper trail to be ammunition for your adversary.

It's best practice to have a patent professional prepare the responses to the Office Actions. The deadline to respond, without charge, is typically 3 months from the mailing of the Office Action, though the Examiner may shorten this, and patent professionals typically charge around $3,000 to draft and file a response. On average it typically takes the USPTO about 4 months to consider your response to the Office Action. If the Examiner is persuaded by the remarks in your response, the USPTO will tell you that you can get a patent. If they're not persuaded, they will issue a "final" rejection.

FINAL OFFICE ACTION

You have 3 options for responding to the Examiner in this case.

The 1st option is to file what's called a request for continuing examination (RCE). This is for situations where you wish to make additional amendments and arguments. An RCE basically sends you back to the beginning of phase 2 - as if it were being examined again, but the timing is accelerated to about 3 months for the first review, and sometimes as quickly as 2 weeks. A patent professional typically charges $700 to file an RCE and the USPTO charges $1,300 to file the first RCE. RCE's can be filed ad nauseum. Because of this, the USPTO charges $1,900 for every RCE after the first.

If you feel like your Examiner is being unreasonable, the 2nd option you have is to appeal your case to the Patent Trial and Appeals Board (PTAB). You must have legitimate procedural or legal grounds for appeal in order for your appeal to be successful. So, you won't win just because your Examiner is being difficult. You're Examiner must have misunderstood the technology, the cited documents, and/or the law. An appeal takes around 2 and 1/2 years and it can cost a lot of money because now you're paying a patent professional to draft an appeal brief and possibly litigate in front of the board.

And of course, the 3rd option, if you fail to respond to your final Office Action within the full 6-month deadline (with payment of extension fees), your application will be abandoned.

PATENT ALLOWANCE

Now, if the USPTO lets you know that you can get a patent, congratulations! You did it!

If everything is okay, the USPTO will ask you to pay them an issue fee. While this last step seems straight-forward, it can take up to 11 months for you to have a patent in hand. A patent professional charges $700 for a final review and paying the fee, plus the $1000 issue fee imposed by the USPTO.

RECAP

Let's review. The patent game can be long and cost intensive, so it is important to manage your expectations. The average cost to obtain a patent can be from $12,000 to $22,000 and the average time is 2-3 years. Also, there are many traps along to path to getting a patent, whether it's DIY patent services promising to help you file an inadequate patent application or drafting a response to the USPTO riddled with inappropriate arguments and getting slaughtered by the Examiner. Because of these traps, it can be safer and cheaper to have a patent professional navigate you through this process and increase the probability of you getting a patent.

DISCLAIMER

This video describes these legal concepts in very general terms. The information contained in this video has been made available for informational and educational purposes only. Jade IP Consulting ("Jade IPC") does not make any representation or warranties with respect to the accuracy, applicability, fitness, or completeness of this video. Jade IPC does not warrant the performance, effectiveness or applicability of any sites listed or linked to this video. This video is not intended to be a substitute for professional legal advice. Always seek the advice of your attorney or other qualified attorney with any questions you may have regarding a legal issue. Never disregard professional legal advice or delay in seeking it because of something you have read or seen in this video or any of our other videos. Jade IPC hereby disclaims any and all liability to any party for any direct, indirect, implied, punitive, special, incidental or other consequential damages arising directly or indirectly from any use of this video or other video content made by Jade IPC, which is provided as is, and without warranties. © 2020 Jade IP Consulting, All rights reserved.