When a patent application is filed with the United States Patent and Trademark Office (U.S.P.T.O.), a Patent Examiner, in determining patentability, must find that the invention is (1) useful, (2) novel, and (3) non-obvious. The invention is useful if it has a present-day useful purpose. Novelty is satisfied unless the Examiner finds a single prior art reference which contains all of the features of the invention which are claimed in the patent application.

In determining whether an invention is obvious, an Examiner may rely on the combined teachings of several patents, printed publications or other prior art references. If a hypothetical person of ordinary skill would view the claimed invention either as an obvious combination of the individual features disclosed in several references, or as an obvious extension of the existing technology, then the Examiner will reject the application as not patentable. In reality, the determination of obviousness involves subjective judgment regarding, for example, the actual content of the prior art, the level of skill of the ordinary skilled person in the technical field and the reasonableness of combining features from different source references.

Patentability Search
We have found that the best method of evaluating whether to proceed with a patent application is to conduct a patentability search in the U.S.P.T.O. in Washington, D.C. The inventor first discloses his invention to us and then we, or our Washington, D.C. associate, will conduct the search. In conducting the search, all properly classified and filed U.S. patents which are pertinent to the invention are reviewed and copies are ordered for your records. We then draft a patentability opinion letter indicating the scope of the patent protection which we feel is available for the invention. Foreign patents, periodicals and textbooks are not searched since they are not well classified. Consequently, a patentability search is approximately 90% effective in locating any given piece of pertinent prior art.

The results of the search may help you to better define the invention or to identify alternative embodiments of the invention, and may help us to draft the text of the patent application and to draft claims in a way which would give the broadest possible protection to the invention.

Our fee for conducting a patentability search is $600.00-800.00, which includes our initial office conference, the patentability search, and the opinion letter. This $600.00-800.00 fee must be paid in advance. Additional services, if required, will be billed to you at our regular hourly rate plus out-of-pocket expenses incurred on your behalf. Filing without a patentability search, though possible, is generally not recommended.

Depending upon the invention, it may be possible to do the patent search using a computer database which searches full text patents. If this option is elected, the cost of the patent search and report will be about $500.00-600.00. A further advantage of a computer search is that the results can be obtained within one week, while a manual search in Washington, D.C. may take 3-5 weeks.

Please appreciate that the scope of a patent search is necessarily confined by cost considerations. Therefore, while the search is calculated to give the best value for the money, the search could always, with additional funding, be extended into additional U.S.P.T.O. classifications, the technical literature and foreign art databases. With additional funding, we could also run an “integrity check” of classifications to determine which references were missing from the appropriate files at the U.S.P.T.O. so that these references could be located elsewhere.

Please also be advised that the scope of a patentability investigation is quite different from an infringement investigation and study, and the results of a patentability search should not be considered dispositive of all infringement questions.

The Patent Application
Should you decide to file a U.S. patent application, I would caution you that, under U.S. law, the application must be filed within one year of the first public use or disclosure, sale or offer for sale of an item embodying the invention.

Equally important, many foreign countries require that the patent application be filed before any publication, demonstration, or sale of the device. If an application is filed in the U.S. before the first date of any publication, demonstration, or sale, most countries will accord that U.S. “effective filing date” to applications filed in the foreign country within one year. During this one year interval, the benefit of the earlier United States filing date will attach to such foreign patent application. Thus, to preserve your foreign filing rights, it is recommended that the U.S. application be filed prior to the first public disclosure or sale of the invention.

To be awarded a patent, the inventor cannot have earlier abandoned, suppressed or concealed the invention. This requires that the inventor be diligent in both completing the invention and in filing for patent protection. Further, an inventor should always keep in mind that an earlier filing date is helpful where the U.S.P.T.O. has to decide upon which of two pending applications for the same invention should be allowed to issue.

Should a decision be made to file a patent application on your invention through this office, we can advise that the cost of a typical utility patent application is approximately:

    Attorney Fees $2,500.00-$4,000.00 Filing Fees $375.00 Drawings Fees $ 90.00-$120.00 per sheet

The legal fees would vary depending upon the technical complexity of the subject matter, the quality of the written description provided by the inventor, and the number of revisions of the application necessitated by the redefining of the invention by the inventor during the application drafting process. The application may be filed with “informal drawings”, so that the cost of formal drawings can be deferred until the application is allowed.

Patent Prosecution
In addition, further costs are incurred during the course of the prosecution of the application, while it is “patent pending.” Specifically, the U.S.P.T.O. will issue an “Office Action” setting forth their findings as to patentability and, in the case the finding is negative, will require the Applicant to file a “Response” to the Office Action. Usually, after one or two Responses, outstanding issues are resolved as to the form of the claims and the scope of protection. Each Response generally incurs $500.00 – $900.00 in legal fees. After allowance, and upon payment of an issue fee of $625.00, the application issues into a patent. Accordingly, prosecution fees and expenses typically range from $1,500.00 to $2,500.00, depending upon the complexity of the rejection, the reasonableness of the Examiner, the closeness of the prior art as compared to the scope of patent protection desired by the Applicant, and the quality of the Applicant’s comments for responding to the Examiner. The period of prosecution, and the interval over which these added costs are incurred, averages one to two years.

You may be interested to note that licensing can take place any time after the application is filed. Some manufacturers prefer to license an invention while it is still in the patent pending stage.

Normally, you should allow yourself a total budget of $3,500.00 to $8,000.00 for obtaining the patent.