U.S Pat. #2,000,000
1932

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Questions About Patents 

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This page is in an embryonic form.  You would do me a great service by sending new questions, suggestions for improvements, criticisms, misspellings, and comments.

Links to FAQ's on this page:

A.  The Costs of Patenting

#A1:  How much will a patent cost me?  
Quite a bit.  A lot more than a new 120-inch plasma-screen TV, for instance.  More than a 2-week cruise to Barbados. 
Seriously, patenting is not for the faint of heart or the financially unstable.  Nor is it for the dilettante or day-dreamer.  A patent represents a very significant financial investment, which requires a very serious to following through.  Here is a whole  page that discusses the various costs in some detail.

#A2:  OK, I pay you $3500 to draft the application, I pay $400 for a search, $300 for drawings, and I give the PTO it's $500 filing fee.  Is that all?
In a lot of cases that's pretty much it for the examination phase, except for incidentals like Express Mail (about $20).  Once your patent is granted you will pay the PTO issuance and maintenance fees, as shown in this table of PTO fees.

In some cases, there are additional fees during the examination process that arise for various reasons.  For instance if you have more than 20 claims, or more than 3 independent claims, you'll pay a bit more.  Or your case may require an assignment of rights -- maybe your designer did some of the inventing and you want all her rights assigned to you.  These extras will cost you more, but they don't apply for most independent inventors.

Once examination begins, the situation can change.  For instance, you might be forced to appeal a bad decision by an examiner.  Or your case may require divisional or continuation applications, in which case, costs could (at your option) double or treble.  Divisional and continuation applications are discussed below.  

The bottom line is that in terms of forecasting costs, patenting is a vague and unpredictable process.  That's because it's controlled by an incredibly vague and unpredictable bureaucracy and court system. 

#A3:  Why do some patent professionals charge up to $10,000 to draft the same application that others, like you, charge half of that?
As Charles Darwin noted, there is an enormous amount of variation between individuals of a given species.  This observation applies to patent professionals.  

Then there was Adam Smith who suggested that good ole' human greed dictates that most people will charge whatever the market will bear.  And in the big cities, where most patent professionals live and work, the market bears a lot more than in rural communities like the one I live in. 

One of the minor wonders of the Internet is that it permits a solo practitioner working in a rural environment to have the same access to the Patent Office as do the large firms in New York or Washington.  My office, for instance, is in a small, rural village about 3 hours from the Patent Office, but my computer is connected to all of patents and to all of the patent examiners at the Patent Office.  It's also connected to people like you, interested in obtaining a patent.  By being well outside the Washington beltway, my overhead costs are outrageously reduced.  For instance, I haven't paid for monthly parking in over 15 years -- the cops here don't even check the parking meters!

The point is that the mega-firms have mega-overheads, and somebody has to pay them -- who's that going to be?  Well, the client is the most obvious choice.  In addition, professionals of all types living in large cities demand much larger salaries than those sane enough to live beyond the nation's beltways, outer-belts, and by-passes.

My prediction is that it will become increasingly easier to find reasonably priced patent services as the PTO becomes all electronic, the Internet becomes more reliable, and more patent professionals catch on to the obvious.  If you are contracting for patent services Online, why should you care how thick the carpets are?

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B.  The Types of Patents

#B1:  With all of the different kinds of patents, I get pretty confused.  Can you sort this out?
You're not the only one confused.  I think the problem is this:  The powers at the PTO and Congress figure that patents are for smart people, and, consequently, the laws and regulations should be made as complex as possible.  I say it over and over -- the PTO is one of the best examples of bureaucracy run amuck, and that goes for its rules & regulations.  But with respect to your specific question, the confusion over patent types is a result not so much of the types of patents as in the many types of applications.  It's important to keep patent applications separate from patents.  I address different types of applications in the next section.

As far as the patents go, first, there are U.S patents and foreign patents.  Each country runs it's own patent-show.  If you hold a US patent for your invention but somebody makes and sells that invention in Mexico and Taiwan, there's not much you can do unless they import your invention into the US -- or unless you also hold patents in Mexico and Taiwan.  The world is slowly moving toward a single patent, a single patent office, and a single set of patent laws.  Some day there will be a world patent that will protect your invention everywhere, but that day is far enough off that you and I will likely never see it.  In the mean time, an inventor must file a patent application in each country he/she wants protection in.

As far as U.S. patents go, there are only three kinds: utility, design, and plant.

Utility patents are what most of us think of when we think of  patents, or Alexander Graham Bell, or Microsoft.  Utility patents protect tangible things and processes (also called methods).  Machinery, drugs, bottle tops, space shuttles, software, and DVD players are the sorts of inventions protected by utility patents.

Design patents protect the way tangible things are, well,. . . designed.  The way they look.  Toothbrushs, for example, have been around for a long time and were once protected by utility patents that are now long expired.  But if you have a new shape for a toothbrush handle, you may be able to get a design patent even though the functional aspects of the handle are no longer patentable.

Plant patents protect novel strains of plants that have been developed through human effort.

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C.  The Types of Patent Applications

#C1:  I have heard of invention companies offering to secure patent protection for just $1500.  What's going on here? 
In order to understand the basis of some of the scams that are out there, you have to understand a little bit about the types of patent applications.  

The application that one files in order to seek a US utility patent is referred to in the vernacular as a "regular" utility patent application (RPA), or sometimes as a "non-provisional utility application."  As noted above, one can also seek design patents and plant patents, in which case you file a design application and plant application.  Mf practice, and this web site, are dedicated to utility applications, particularly the RPA.   Here is a whole page that describes the RPA  Look it over, if you haven't already.

In 1995 the PTO was sort of forced to introduce a new type of application in order to get in line with a lot of other countries.  This new application is called the provisional utility patent application (PPA).  The PPA is, essentially, a cheap way to establish a filing date up to a year before filing the more expensive RPA.  The filing fee for a PPA is less than $100, including Express Mail postage.  A PP might be filed, for instance, to temporarily stop a clock that will cut off your right to get a patent.  [See #C2, below]  Here is a page that explains PPA in more detail.  The main point is that if you file a PPA, you still have to file an RPA within one year or your PPA is totally wasted.  Contrary to popular mis-belief, a PPA doesn't reduce patenting costs, it only increases them.

The PTO has also started what it calls its "disclosure document" (DD) program.  This is not an application at all, but rather just a written statement you send to the PTO disclosing the invention.  The PTO will hold the statement in its files for up to 2 years to give you a chance to file an application.  If you file the application within two years and reference the DD, then it is taken out of the file drawer and put in with your application.  The DD is useful if you have to prove that you beat someone else to your invention.  Inventor's used to put written disclosures in the mail addressed to themselves.  When it came in the mail with a postmark, the inventor would then keep the envelope sealed in case they had to produce it in court to prove the date of their priority.  This isn't the best tactic, and I don't think it holds up in court.  The DD is supposed to do the same thing as mailing letters to yourself, a tactic the courts have not sanctioned. 

Now, to get back to the question, which was about a company offering to get you patent protection for $1500.  One of two things might be going on.  The first, and most likely, possibility is that the company wants $1500 to fill out a DD and send it to the PTO with the $10 filing fee.  This is not getting you patent protection.  Most people with an invention can produce their own DD and pay the $10 filing fee, which means a total cost of $10 plus postage.  

The second possibility is that the company will draft a PPA for you for $1500.  Paying $1500 for a PPA might be a pretty good deal, unless the PPA is drafted very poorly.  If the professional charging $300/hr. takes the time to understand your invention completely and to write a comprehensive PPA, $1500 can come up on the meter pretty quickly.  As a result of recent court decisions, patent professionals are beginning to find out that PPA's don't help a whole lot unless they contain as clear and as complete a description of the invention as the RPA.  Consequently, a worthwhile PPA may be almost as time-consuming to draft as an RPA.

The bottom line here is that you need to be absolutely sure what the person offering the services is going to produce for you: A DD?  A PPA?  A RPA?  A design application?  A plant application?  If they do not make this point clear, they may be scam artists.  No reputable professional will take your money without being sure you understand what you are paying for.  [See Dealing with Patent Professionals, below.]

#C2:  I read your page on PPAs, but I still don't understand.  Once I file a PPA, am I covered?
I can give you a definite answer to this one: sort of.

What a lot of people miss, often because confused or dishonest patent "professionals" mislead them, is that a PPA is not an application for a provisional patent, it is a provisional application for a patent.  In other words, a temporary application. 

Once you file a PPA, it is "good" for up to a year, provided you file your Regular Patent Application (RPA), within that year.  When I say "good," what I mean is that if you file your RPA within a year after filing a PPA, you may be entitled to backdate the RPA all the way back to the date you filed your PPA.  "Big deal," you are thinking.  But his may be important.  Keep reading.

Let me give you an example -- a common sort of sequence of events.  Let's say that on July 1, 2004 you made a public disclosure of your invention.  It may have been unintentional, or it may have been something you published about your invention.  Either way, a clock started ticking on that date -- you had one year to file a patent application to preserve your patent rights.  Let's say you filed a valid PPA on July 1, 2005, a year to the day after your disclosure.  This PPA will stop the clock -- or rather, it will re-set the clock.  Now you have another year to file an RPA.  As long as you file a valid RPA before July 1, 2006, you will be entitled to the July 1, 2004 filing date.  So the PPA can extend the time you are required to file a final application in order to give you a total two years after you made your public disclosure.  

So what you have done with the PPA is to buy an extra year in which you must file your RPA.  If the clock is bearing down on you and you must file soon or lose your patent, file the PPA instead of a RPA because the PPA is not as formal -- and therefore easier and quicker to draft --.than an RPA  This is only one example.  There are a number of scenarios in which it may be helpful, or necessary, to stop the clock for a year by filing a PPA. 

So, back to your question.  You are "covered" in the sense that you can prevent the loss of important patent rights by filing a PPA in some situations where an RPA would otherwise be required.   But if you are relying on a PPA and you fail to file your RPA on time, you can lose all of your patent rights.  In addition, you will have wasted the money you spent to obtain the PPA.

There is a very helpful discussion of PPA's on the Patent Office's web site:  www.USPTO.gov .

Q. #C3 :  Are divisional and continuation applications worth the money?  
Your question might be better put: Are they necessary?  First, let me quickly review what these specialty applications are all about.

Once you file your RPA, you establish your filing date. (See previous FAQ.)  Your filing date might be the actual day the RPA was filed, or it might be up to a year earlier if a PPA was filed first.  But the point here is that the filing date becomes fixed once the PTO accepts your RPA.  This has the potential of being a very important date, and it applies to all of the material disclosed and claimed in your RPA.

Not too infrequently, the examination process gets messy.  Some patent professionals would say that the examination process always gets messy.  For instance, the examiner may take the position that you really have two inventions there, and he forces you to choose only one for examination.  Or the examiner may refuse to allow claims that you feel are good claims.  More often than not, you get to the end of the examination process and you don't have everything you feel you are entitled to.  Divisional and continuation applications allow you to keep fighting, yet retain your original filing date.

In the situation in which the examiner makes you split your RPA into two or more inventions and forces you to elect which invention to pursue, you have the option to take the un-elected "invention" and write up a new application.  This is then called a divisional application, because you have divided the original RPA.  Note that the examiner has not rejected any claims here, he has just said you can't patent two inventions with one patent.  So you proceed through the process with the invention you elected.  With luck, you'll get a patent on that material.  But you still have material that the examiner cut out from examination.  If that material is patentable, then you must go through the entire application process again, including paying the PTO's filing fee and a patent professional to draft the divisional application.  But the divisional application still gets your original filing date, and that may be very important.  

Continuation applications are different.  They are used when the examiner just plain flat refuses to approve one or more claims you feel are good claims.  Maybe he rejects all of your claims.  As described below, you are allowed, essentially, only one rejection.  After that first rejection you may amend your claims to meet the examiner's gripes.  If your amendment doesn't satisfy the examiner, your case is pretty much out the window.  

You may appeal a full or partial rejection to the Board of Patent Appeals and Interferences.  If you get a bad decision there, you may then appeal to the U.S. Court of Appeals for the Federal Circuit.  The Federal Circuit must hear your case.  From there it goes on up to the U.S. Supreme Court, but unless you go duck hunting with Justice Scalia on a regular basis, your odds of ever getting your case heard by the Supreme Court are about as good as Scalia's odds of hitting a duck while sitting at the bench.  Of course, these appeals are a lot of fun for the lawyers, but client rarely looks at them fondly.  Even if you win, it costs you the farm.  

An alternative to appealing the examiner's rejections is to take your rejected claims, repackage them in a continuation application, pay another filing fee, and try again.  Maybe you will get a different examiner.  And if you get rejected again, you can file another continuation.  And another.  All the time you get to retain the filing date of your first RPA.  This is only fair because you disclosed everything way back in the RPA and you should be entitled to the date of disclosure.

But the question was whether continuation and divisional applications are worth the money.  They are worth the money if, and only if, the material you would otherwise lose is patentable and is likely, once patented, to pay back enough money to bring you back to at least even.  In fact, that is the grounds for most patenting decisions: will the patent pay its way?

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D.  The Patenting Process 

Q. #D1.:  How long will it take to find out if my PPA or RPA has been approved? 
Provisional Patent Applications are not "approved" at all.  There is no examination.  They are, apparently, just shoved into a file drawer until you file your RPA.  If the RPA is filed within a year, then the PPA is taken out of the file drawer and put into your "file wrapper" (glossary)

As far as a RPA, it depends on the subject matter of your invention.  In some cases the examiner will get to your case pretty quickly -- say, 6 - 8 months after the application is filed.  But I had one case that was in the works for over 5 years before a final decision was made.  If a case is decided ("made final") within 18 months, it's considered reasonably quick.

In 1995 Congress passed the American Inventors' Protection Act.  One of the provisions is a "guarantee" that the PTO would start examining applications within 14 months of receipt and would finish within 3 years.  The lifetime of your patent is 20 years from the filing date.  The guarantee is that if the PTO drags its feet, you can tack the lost time onto the lifetime of your patent.

#D2 : This FAQ stuff is OK for getting quick answers, but can you recommend other sources of information on how the system works?
Sure.  Here's a table of links and resources.

One of the most helpful books I know of is David Pressman's "Patent It Yourself" published and updated at regular intervals by Nolo Press.  (www.nolo.com)  I recommend getting this book even if you hire a professional.  It puts you on a more even footing and it allows you to follow the process.

There are three official sources of information:

• The actual statutes are found in Title 35 of the U.S. Code.  This is called the Patent Act.
• The regulations are found in Title 37 of the Code of Federal Regulations.  This is called The Rules.
• The PTO publishes a manual of how to do everything for its examiners.  This is called the Manual of Patent Examination and Procedure (MPEP)

All of these can be found at the PTO web site.  Hard version copies can be purchased there, too.  (www.uspto.gov)

Q. #D3 : What if my application is rejected by the examiner? 
There is not much that one can guarantee in this game, but the one thing that comes closest to certainty is that your application will be rejected.  In almost every case, many, if not all claims, are rejected initially.  Part of the reason for this is that the examiner wants the applicant or his attorney to make arguments and statements in the record that will limit the invention.  This is called "prosecution history estopple" in the jargon.

Once your claims have been rejected, there is a period of negotiation with the examiner in which you can amend your application and, hopefully, the examiner will be persuaded to change his/her mind.  It is during this period that a record of your case can come back to hit you between the eyes.  Statements you make to persuade the examiner to grant claims can later be used against your patent in court, even if the claims never should have been rejected to begin with.

If the examiner is insistent that you do not have a patentable invention, you can re-file your application and try again, or appeal to the Board of Patent Appeals and Interferences.  If you appeal and lose, you can take your case to the federal courts.  I have experience in such appeals, and they are no fun.  A good patent professional will do all he/she can to avoid appeals by screening applications initially and by writing them as soundly as possible.

Q. #D4 : If I put "Patent pending" on my invention, is the invention protected from infringement during the time the Patent Office is sitting on the application?  
It's a good question.  After all, your application could get tied up in the PTO for years.  

The answer used to be essentially, "no, 'patent pending' doesn't protect you during prosecution."  "Patent pending" only gave notice to the world that a patent application has been filed and, consequently, a patent may be coming down the pike.  But until a patent was actually granted, anyone could make, use, sell your invention while the application was pending.  The day the patent is granted you can go after the cads for any infringements that occur after that date.  

Now the inventor has an option of having his application published 18 months after it is filed.  If a crook then makes, sells, or uses the invention described in the published application, once a patent is issued, the inventor can sue that crook for patent infringement from the date of the publication.  

In other words, "patent pending" may help you bite back if your patent is infringed during prosecution -- if you have your application published.

Q. #D5.  Do I have to have a working model and drawings before applying for a patent?
No and yes, in that order.

In the patent jargon one speaks of "reducing one's invention to practice."  This means having the invention in a functional form.   You are required to have reduced your invention to practice at the time you file your application.  However -- and this is the tricky part -- it is not necessary to have the invention in a physically functional form.  In one of Tom Edison's famous court cases, the judge ruled that as long as the patent application sets forth how to make and use the invention in clear language, then that is enough.  Therefore, filing of a valid patent application that clearly sets out how to make and use your invention is considered a "constructive reduction to practice."  In law, "constructive" means, roughly, "a very convincing fantasy."  Generally speaking, the PTO won't even let you send them a working model.  However, you may, and should, take one with you to demonstrate to the examiner if you have a face-to-face interview.

But here is the "yes" part of the answer: With respect to drawings, you are required by law to present drawings of your invention at the time you file your application.  It is generally good practice to present the final, formal drawings that will be published as your patent, but this is not legally required.  You may file hand-drawn figures, so long as they are clear enough that the examiner doesn't have to strain to make out your meaning.  If your application is allowed, you then submit the formal, final drawings. 
Because the text of the application is absolutely peppered with reference numbers from the drawings, it can be a nightmare if formal -- or near formal -- drawings are not submitted with the application.  If even one reference number changes and it is not caught, your patent could be later found to be invalid.

#D6.  What's the point in paying for a patent search?  Why not just file the application and let the examiner do the search?  Isn't that what the filing fee is for?
You are right in the sense that you are not required by law to do a patent search.  This will probably change in the not too distant future as the PTO tries to find ways to cut back its services as it raises its fees.  But for now, the patent search is optional.  As of December 8, 2004, the new fee structure includes a "search fee" that is paid to the PTO for them to do the search.  Actually, they outsource this task.    

Even if you pay for a search before you file your application, there is no guarantee that the searcher will find every patent that is harmful to your case.  Sometimes the PTO relies on fields that are far removed from the subject matter and come up with prior art no one in their right mind would ever dream of.

But a good search before drafting your application helps in at least two ways.  The most obvious is that if a patent is found that knocks you out, then the search will save you thousands of dollars for a patent application that will never be allowed.  I have found that in about half of the people who come to me, I can find a patent that would likely defeat their application.  If you are aware of such a patent, then you are required by law to disclose it to the examiner.  You and your agent/attorney cannot just sit mum and hope the examiner misses it.  

The second reason is that if the person drafting the application knows that there are patents out there that are close to your invention, then he or she may be able to write the application so that it avoids those patents.  This is called "writing around" the prior art.    


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E.  Dealing with Patent Attorneys/Agents

Q. #E1 :  Can you handle my patent work if I live in, say, Bosie, Idaho?
No problem.  Registration to practice before the U.S. Patent & Trademark Office is done on a nationwide basis.  Regardless of what wonderful place you live in, I am permitted to represent you before the US Patent & Trademark Office.  I can handle your patent work even if you live in wild and wonderful New Guinea.  But I don't make house-calls.

Q. #E2:  Is a patent attorney better than a patent agent?  What's the difference anyway? 
In the U.S. system a patent attorney is a patent agent who holds a law license in one or more states.  Patent attorneys and patent agents must pass the exact same examination given by the Patent Office.  The most obvious difference is that the attorney can represent you in court, but the agent can only represent you before the Patent Office, including its appeal board.  

All agents and attorneys registered with the PTO must have a technical background -- usually at least a bachelors in engineering, biology, computers, etc.   Patent attorneys must also have legal training and be registered to practice law in at least one state or D.C.  An agent may be a college graduate in biology, computer science or engineering, for instance, with precious little training in law, which means most patent agents don't know how the law and courts work as well as most patent attorneys do.  However, many patent agents were once patent examiners and they know how the Patent Office works better than a lot of attorneys do.

So the bottom line is that attorneys, being trained in law, are better equipped to understand the complex legal ramifications of your application.  They are more focused keeping you out of court in the long term by drafting an air-tight patent.  Agents are more focused on getting an application approved by the examiner, and may be less concerned about the long-term legal issues.  What a lot of inventors don't understand is that just because a patent is granted, that doesn't mean it will stand up in court.

 I don't have any data, but my guess would be that agents get a higher percentage of applications approved, but the patents written by lawyers do better in court.  Having said all that, I would recommend an excellent agent over a mediocre attorney any day.  But I would choose an excellent attorney over an excellent agent, other things (including cost) being equal.  Of course, I am an attorney, and so this opinion is not entirely unbiased.

Q. #E3 : Can I pay you for a few hours work to help me draft my own application? 
There was a time when you could, but not now.  And it's not that I'm getting greedy.  I have shifted position on this primarily because of the complexity of court decisions, many of the most confusing of which have been issued in the last 5 years.  Years ago I believed that most people could handle their own patent applications, but now I consider the job too difficult for those not trained in the art.  The shifting complexities are more than most amateurs can keep up with.  While an amateur might have a pretty good chance of obtaining a patent, it is a whole lot harder to draft a patent that will stand up in a courtroom fight, and that's what patents are for.  At least that's what the patents I draft are for.  If you would not be comfortable drafting a deed, mortgage documents, and doing all the legal work involved in buying a house, you would be struggling to prosecute a patent on your own.  It's a lot harder.

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