Basics of Patenting an Invention in the United States - Part 2
Obtaining a Utility Patent
April 2, 2014
An application for a utility patent is a complex document that, when properly prepared, contains a description of the invention sufficient to teach “a person having ordinary skill in the art” how to make and/or use the invention. In addition, a properly prepared application discloses the invention in a manner that provides the inventor with the broadest scope of legal protection possible. If a patent application is drafted too narrowly, it may be easy for others to work around the patent, thereby avoiding infringement. Thus, a properly-prepared patent application is a carefully crafted technical and legal document.
Making a Claim
In general, the scope of the invention is defined by one or more “claims,” which are the numbered statements appearing at the end of each issued utility patent. Patent claims are analogous to the “metes and bounds” descriptions of real estate in land conveyance documents that define with a measure of exactness the boundaries of the corresponding plots of land. Similarly, patent claims define the boundaries of an “invention space” to which the inventor is claiming ownership. Since the accuracy of claims is crucial to the scope of rights granted in a Letters Patent, claim drafting requires a high level of legal skill. In addition, claims must be prepared with due consideration given to a number of drafting formalities that have evolved over the years.
Claim drafting also involves finding the delicate balance between preparing claims that are too broad and preparing claims that are too narrow. Claims that are drafted too broadly, i.e., the claims define an invention space that encompasses ideas already known or obvious in view of what is already known, are improper. If the PTO finds during patent prosecution that one or more claims are too broad, it will reject the claims. However, if overly broad claims happen to pass through the PTO’s examination process and they are litigated, a court may invalidate the claims. On the other hand, claims that are too narrow, i.e., the claims define an invention space that does not include all reasonable alternatives, may allow competitors to avoid infringement relatively easily, rendering the patent practically useless.
Due to the complexity of patents, preparing and prosecuting a patent application and obtaining and maintaining a granted patent is relatively expensive. For a utility patent, the total costs associated with these items in the U.S., including attorney’s fees and PTO fees, typically range from about $8,000 to $20,000, depending upon the technical complexity of the invention and the legal and technical complexity of prosecuting the application. For this reason, an inventor, assignee, licensee or any other person willing to pay the cost of obtaining a patent, should be committed to actively utilizing the exclusive rights once they are granted. These rights may be used in a number of ways, e.g., by practicing the invention, licensing others to practice the invention, selling the rights and/or enforcing the rights against infringers.
The Value of a Preliminary Patentability Opinion
Before a patent application is prepared, it is generally recommended that an inventor seek a preliminary patentability opinion from a patent professional. A preliminary patentability opinion is typically provided by a patent attorney and is generally based upon a patentability search performed by a professional searcher. The purpose of a preliminary patentability opinion is generally two-fold.
First, a preliminary patentability opinion provides a preliminary screening as to whether or not an idea is actually patentable. To be patentable, an invention must be new and unobvious to a person having ordinary skill in the field of the invention. For example, if the idea is an improvement to a mousetrap, the improvement must not have existed prior to the invention and must not be obvious to a person having the ordinary skill of a mousetrap designer to be patentable. If a patentability search uncovers “prior art” references, e.g., existing U.S. and foreign patents, technical articles and product brochures, among others, that renders the idea unpatentable, then the significant cost of preparing a patent application and prosecuting the application to the point where the PTO makes the determination of unpatentability can be avoided.
Second, a preliminary patentability opinion allows the claims of a patent application to be drafted to avoid any prior art references located during the patentability search. Since the examiner is likely to locate the same references during patent prosecution, a preliminary patentability opinion helps the inventor avoid narrowing the originally overbroad claims during prosecution and avoid the attendant legal fees. Typically, the cost of patentability opinions provided by a patent attorney ranges from about $1,500 to $2,500, depending upon the field and/or the complexity of the invention.
A favorable preliminary patentability opinion does not guarantee that an invention is patentable. No patentability search can ever be exhaustive, since reasonable minds will always differ as to where pertinent prior art references may be located. In addition, the question of patentability involves detailed consideration of technical facts as well as the law. Reasonable minds may differ as to the teachings of a prior art reference.
Preparing a Patent Application
If a preliminary patentability opinion indicates that patent protection may be available, the next step is to prepare a patent application. In general, a patent application includes the following:
- one or more drawings showing at least one embodiment of the invention;
- a description of the background of the invention, including a description of the field of the invention;
- a summary of the invention;
- a brief description of the drawings;
- a detailed description of the invention;
- one or more claims; and
- an abstract of the disclosure.
Although under U.S. patent law, an inventor may prepare and prosecute his/her own patent application, due to the complexity of a patent application and subtleties of patent prosecution, it is strongly recommended that a patent professional prepare and prosecute the application. Unless an inventor is extremely sophisticated in terms of patent application preparation and prosecution, a professionally prepared and prosecuted application will more likely than not result in a grant of broader patent rights.
The legal fee charged by a patent professional for preparing a patent application is roughly about one-half of the total cost of obtaining and maintaining a patent. The cost for a typical patent application, exclusive of the drawings, PTO fees and patentability opinion, is approximately $5,000 to $10,000 for a mechanical or electrical case, $8,000 to $15,000 for a software case and $6,000 to $12,000 for a chemical case.
A typical application contains three or more sheets of drawings, with each sheet costing about $70 to $100, depending upon the complexity of the invention. Drawings must be prepared in accordance with PTO requirements and are generally prepared by a draftsperson specializing in preparing patent drawings.
Once an application has been prepared, it must be filed with the PTO. For a small entity, e.g., an independent inventor not under obligation to assign the invention to a large entity, a small business (less than 500 employees) or a non-profit organization, the base fee due to the PTO upon filing is currently $462. This fee consists of a $82 basic filing fee, a $270 search fee and a $110 examination fee. The filing fee for a large entity is double this amount, or $1,030. Filing fees will exceed these amounts when it is necessary to submit more than 20 claims (the number allowed for the base fee) to adequately protect an invention.
Patent Examination and Prosecution
After the patent application has been filed, it enters a prosecution phase, during which a PTO patent examiner examines the application. Examination includes a review of the application for conformance with formalities. The examiner also performs a prior art search similar to the patentability search described above in connection with preliminary patentability opinions. However, due to the complexity of the manner in which granted patents are “classified” in the PTO and the examiner’s deep knowledge of a particular field and the classification system, the examiner’s search often uncovers prior art not located during the preliminary patentability search.
An examiner will typically reject at least some of the claims, and often all of the claims, as being either anticipated by the prior art. A claim is anticipated by the prior art when all of the elements of a claim are found in a single prior art reference, or is obvious in view of the prior art when two or more prior art references together disclose all of the elements of a claim and there is a suggestion or motivation to combine these references. Once the examiner has reviewed the application in detail, the examiner issues to the inventor a communication enumerating any claim rejections and/or other shortcomings of the application. This communication is typically referred to as an “Office Action” or “Official Action.”
An inventor may respond to an Office Action in a number of ways, including amending the application, e.g., to narrow the claims to avoid prior art cited by the examiner or by arguing that the examiner’s rejection was improper, depending upon the circumstances. It is important to note that once an application has been filed, the inventor can never add new matter to that application. In general, new matter is information that was not in the application as originally filed. If the inventor must add new matter to make the claims patentable, the inventor must file a new application and obtain a new filing date. The problem with this approach is that the new, later filing date for the new matter can result in more references becoming available as prior art for the new matter.
A typical response to an Office Action costs about $1,500 to $3,000 in attorney’s fees, depending upon the complexity of the response. No PTO fees are typically needed if the response is filed in a particular time frame, typically three months from the date the PTO mails the Office Action. It often takes two or more sets of Office Actions and responses to put the application in condition for allowance. Not all patent applications filed contain patentable inventions and, thus, the inventions in some patent applications are never granted Letters Patent.
Prior to 2000, the general rule was that a patent application remained secret in the PTO until a patent issued from the application, if a patent issued at all. Depending on the situation, this secrecy provided the applicant with an advantage, especially if the subject matter of the application was difficult or impossible to reverse engineer. However, in an effort to bring U.S. patent procedure into greater harmony with foreign patent procedures, it is now standard practice for the PTO to publish a patent application 18 months after the earliest priority date of that application. As an exception to this practice, an application will not be published if the applicant files a Nonpublication Request, which requires the applicant to have an actual intention at the time of filing the Request to not seek any corresponding foreign patents.
Granting a Utility Patent
Once the patent examiner allows a utility patent application, the application enters an issue phase during which the applicant must pay one or more fees to the PTO and the PTO prepares the application for formal publication as a patent. The fees due to the PTO at issuance include an issue fee (presently $755 for a small entity and $1,510 for a large entity) and a publication fee ($300 regardless of small entity status) if the application was published. If an attorney has been engaged to prosecute the application, the applicant will also incur attorney’s fees for the attorney reviewing the allowed application and discussing with the applicant whether or not new, but related, applications are necessary or desirable.
After the PTO has granted a utility patent, the patentee must pay maintenance fees three times during the life of the patent if the patentee desires that the patent be enforceable for its full term. Utility patent maintenance fees are due at 3.5, 7.5 and 11.5 years from the date the patent is granted. The maintenance fees due at each of these dates for a small entity are presently $490, $1,240 and $2,055, respectively. For a large entity, the fees are double these amounts, or $980, $2,480 and $4,110, respectively. Failure to pay any one of these maintenance fees can result in the patent lapsing and becoming unenforceable.
In addition to the relatively large costs involved with obtaining and maintaining a patent, the length of time it takes until a patent is granted from the time an inventor engages an attorney is relatively long. For example, performing a preliminary patentability search and preparing a preliminary patentability opinion typically takes between 4 to 6 weeks; preparing a patent application typically takes 6 to 8 weeks; prosecuting the application typically takes about 18 to 48 months; and issuance of a patent typically takes 3 to 6 months.