Natural Entrepreneur: Demystifying the Patent Process

this is a layer

Patents

Demystifying the Patent Process

by Todd A. Sullivan, Hayes Soloway, Manchester, NH

Editors Note: This is the last in a series of articles by Attorney Sullivan leading up to the 9th Annual Independent Inventors Conference, August 20-21, 2004 at the Franklin Pierce Law Center, Concord, NH

The longer I practice, the more I find that very few people, outside of patent owners and patent attorneys, have any idea what goes into getting a patent. Our office routinely gets calls from independent inventors who are thinking about seeking a patent, but are trying to learn exactly what they are getting into before they meet with an attorney. I do not suppose anyone would have any reason to learn about the patent process, like any government administrative process, until you need it. But if you are considering seeking a patent, you might find the following information useful.

The United States Patent and Trademark Office is a government agency that operates within the Department of Commerce. The Director of the USPTO is also an Under Secretary of Commerce. The main offices are located in Arlington and Alexandria, Virginia. All patent applications, once prepared, are mailed, hand delivered, or electronically transmitted to the United States Patent and Trademark Offices.

One of the chief questions of any first time patent applicant is, how much does it cost? Patent applications generally cost $5,000 to $15,000 to prepare, depending on the complexity of the invention. A five thousand dollar patent application is generally for items having no moving parts and requiring little scientific knowledge to comprehend. More expensive applications include complex chemical or biological patents. The cost of preparing the patent application is normally more than half of the overall cost for obtaining a patent, covering the time and fees of a patent attorney in New Hampshire. Other attorneys, particularly those who have set up shop in more urban environments (like Boston, San Francisco, or New York) charge significantly more. Most attorneys charge an hourly rate, while a few will charge flat fees. (Details of how an attorney spends his time on a patent application, which justifies the expense, is outside the scope of this article).

Once the application is prepared, it is sent into the United States Patent and Trademark Office. Arriving first at their mailroom, the application is logged in, assigned a serial number, and scanned into the Patent Office computer system (if the application was not sent electronically). The application is then sent to the Office of Initial Patent Examination where the it is reviewed to make certain all the formal paperwork necessary for a patent application has been received, as well as the patent application filing fee (currently $385 for small entities, plus excess fees if appropriate). If the patent application has been received without all of the necessary paperwork and/or filing fee, a Notice of Missing Parts is sent out to notify the Applicant, or Applicant’s attorney, that the Patent Office is missing necessary parts of the application. Once the complete application has been received, it is sent to the appropriate patent examination group for a substantive review.

The patent examiners in the United States Patent and Trademark Office are separated into a myriad of groups based on their scientific expertise. Patent examiners are generally required to have some type of science degree, and are generally assigned to review very narrow fields of inventions. For instance, electrical connectors have their own patent group. As a result of their prior experience and their narrow assignments, patent examiners quickly develop a solid understanding of their scientific field as it relates to incoming patent applications.

Unfortunately, the Patent Office has trouble finding and keeping patent examiners, which directly impacts inventors in two significant ways. First, because of the turnover, it is not unusual to be assigned an examiner who has been on the job for onlya few months. (Recently, the Patent Office was averaging about 15 new hires per week).. Second, because the Patent Office has trouble retaining staff, many applications sit for months and years before being reviewed by a patent examiner. In fact, I filed an application in 2001 for one client who finally received notification that his application had been reviewed just this month. It appears to me that software and business method patents sit approximately 30 months before being reviewed by a patent examiner. Unless requested otherwise, the Patent Office will publish all patent applications eighteen months after the applications were filed.

Once reviewed, an examiner normally issues an office action. The office action states any and all reasons for not allowing the patent application to issue into a patent, as determined by the examiner. Most patent applications receive at least one office action initially rejecting the patent application for one reason or another. In fact, patent attorneys actually get nervous when an application does not receive an office action. This part of the patent application process is similar to a negotiation. If, in a negotiation, your first offer is accepted, you wonder if your first offer was too generous and you should have asked for more. Similarly, in a patent application, if the examiner allows your application without an office action, you wonder if you should have asked for broader patent protection. If an office action is received, the Applicant or Applicant’s attorney may then modify the application, dispute the rejection with the examiner, or some combination of the two to overcome the examiner’s rejections and get the application allowed. This process may involve multiple office actions, although it is helpful that once the examiner has reviewed your application, it generally remains at the top of his docket until the end of the application process.

If your application is allowed, an examiner will send you a Notice of Allowance along with an explanation for why the application was allowed. From the date of mailing the Notice of Allowance, the patent applicant has three months to submit an issue fee (currently $665 for small entities plus $300 for publication fees, if warranted) and formal drawings, if informal drawings were previously submitted. The Patent Office will issue the patent approximately eight to ten weeks after the fees and formal drawings are received.

The process of bringing a patent application from filing to issue is known in the "art" as patent prosecution. Presently, anyone can view a pending patent application that has been published at the United States Patent and Trademark Office web site. Anyone may also review the patent prosecution history of the published application online, including (as of August 2, 2004) documents filed during patent prosecution. This latest advancement of the United States Patent and Trademark Office enables businesses to more closely monitor the prosecution of both their own applications and those of their competitors.

Todd A. Sullivan, an associate with Hayes Soloway, is a New Hampshire Patent Attorney and graduate of Franklin Pierce Law Center. Todd and Hayes Soloway will be contributing a series of articles over the coming weeks directed toward patent information for the independent inventor. He can be reached at tsullivan@hayes-soloway.com

Upcoming Events

Feb 21 (8-9:30a): NH Forum on the Future, NHHTC, CR Sparks, Bedford, NH

March 1 (6:30-8:30p): Women's Business Center and MicroCredit-NH Networking Event, Bank of America, Portsmouth, NH

March 6 (10a-noon): Growth Capital Resources in New Hampshire, City of Nashua, Office of Economic Development, Daniel Webster College, Nashua, NH

March 8: (12pm -1pm) Break the Rules and Close More Sales, Amoskeag Business Incubator, Manchester, NH

March 16: Peak Pitch (pitch your plan to invstors on the chairlift), Mt. Sunapee, NH ($)

March 22: Breaking Trends in Web Develoment, UVCIA, Hanover, NH ($)

View Ads