Protecting your ideas and inventions through the patent system can seem like a daunting task. Our goal is to make obtaining patent protection a smooth and simple process for you. We welcome your questions during all phases of the patent process; here are some that we encounter regularly.
Disclaimer: The following are very general answers to questions we are asked on a regular basis. Nothing on this page constitutes legal advice of any kind. You should not make decisions affecting your patent rights, or potential patent rights based on the content of this page. We are, however, more than happy to offer a free initial consultation where we can take your particular circumstances into account.
What are the steps in the patent process?
The first step in the process is for us to learn about your invention. We can take an invention disclosure over the phone or in person at our office, whichever is more convenient for you.
Most of our clients engage us to perform a patent search prior to drafting a patent application. A patent search (also called a prior art search, patentability search, and other names) is similar to having a title search performed before buying a house. It is a process to seek out documents that may affect your ability to be granted a patent on your invention.
If the results of the patent search are favorable, we then draft the patent application, including preparing the drawings, claims, and all required forms which are submitted with the description of the invention. Once you approve the draft, we submit the application to the United States Patent and Trademark Office or, if you are seeking international protection, the appropriate foreign patent or receiving office.
Your application will be assigned to an examiner whose job is to examine the application and, most importantly, the claims. He or she will respond with an “office action” containing rejections or allowances of the claims based on the prior art that he or she uncovers during their search. We respond to any rejections and provide any legal arguments to substantiate your claims, or, if necessary, amend the claims. The claims that the examiner allows will issue as a patent.
I’ve had an idea for 20 years – can I still patent it?
Generally, yes. However, you must have kept the idea secret during that time, and if someone else came up with the same idea and made it publicly available, you may be out of luck, depending on certain circumstances.
Public disclosures can create big problems. In the U.S., you have one year from the date of your first public disclosure in which to file for patent protection. After that time, you’re statutorily barred from receiving patent protection on the invention. Public disclosures can include talking openly about your idea to friends, co-workers, and even family; public presentations; publishing results of your work; and offers to buy or sell your invention.
So, before you divulge your invention or seek funding on KickStarter.com, let us protect your foreign and domestic patent rights by filing a provisional patent application at the least.
How much does a patent cost?
The answer to this question depends on the complexity of the invention. We are confident that our rates for preparing and prosecuting patent applications are among the most competitive in the Chicago area; we are also happy to provide an estimate based on your invention disclosure. Some of the third-party costs associated with a patent application include:
- Formal drawings (if required): $75/sheet, average
- Paralegal services (docketing, etc.): $150/hour
The United States (and foreign) Patent Offices charge fees to examine your application. The current fee schedule at the USPTO can be found here. Typical fees include:
|Fee||Regular Entity||Small Entity||Micro Entity|
|Utility Filing Fee||$280||$70||$70|
|Patent Search Fee||$600||$300||$150|
|Patent Examination Fee||$720||$360||$150|
|Patent Post-Allowance Fees||$960||$480||$240|
|Patent Maintenance Fees||3.5 Years: $1600
7.5 Years: $3600
11.5 Years: $7400
|3.5 Years: $800
7.5 Years: $1800
11.5 Years: $3700
|3.5 Years: $400
7.5 Years: $900
11.5 Years: $1850
We will help you determine which entity classification your application should be filed under. Keep in mind that, based on current trends, these costs up to, and including the issue fee are typically spread out over a 3-5 year period.
What “kinds” of patents are there?
Patents are classified in three main categories: utility, plant, and design patents. Utility patents cover inventions that do something or perform some function. Plant patents cover new, asexually-reproducing plant varieties. Design patents protect the visual appearance or “ornamentality” of an object.
What are my chances of getting a patent?
The answer to this question depends on many factors. First and foremost your invention must meet three critical criteria, namely that it: 1) must be novel, 2) must be non-obvious, and 3) must have utility. The examiner will attempt to seek out documents and other information to reject your claims based on lack of novelty, and obviousness; however, their rejection must be properly rooted in the patent law and USPTO rules.
Another factor is the scope of your claims. We draft claims to be as broad as possible, but they may need to be amended during prosecution if there is a document that pre-dates and discloses a portion of your idea.
As we explain to our clients, the question should not be will I get a patent…but rather will I receive a patent with claims that are broad enough that the investment makes sense from a business perspective.
How long will my patent last?
In the U.S., patents have a term of 20 years from the earliest effective filing date (where the patent application was filed on or after June 8, 1995).
When can I put “Patent Pending” on my invention?
You can use this term if you have a patent application on file and intend to continue its prosecution to an issued patent.
What is a provisional patent application?
A provisional patent application is one that discloses your invention, but it is not examined by an examiner, and it expires 1 year after filing. Our clients use provisional applications for different purposes. Some use them as a way to defer the cost of a ‘regular’ application while making official record of their invention as of at least the filing date. Others use them because they know the general concept of the invention and want to make record of it, but they’re sill working out the bugs or adding improvements that they want to include in the non-provisional application.
A subsequently-filed non-provisional application is effectively carries the filing date of the provisional application if the content is substantially the same.
There is no such thing as a provisional ‘patent’ – there is only a provisional patent application, and, technically, a provisional application expires after a year without any chance of turning into a patent. A patent can only come from a non-provisional patent application.
For many reasons, our preferred practice is to draft a provisional application as if it were a non-provisional application. The reason for this is that if you ever need to rely on the earlier filing date of your provisional application to maintain your patent rights, that earlier disclosure has to be fully supportive of the non-provisional application.
If you are up against an urgent deadline – for example, you’re going to present your invention at a trade show or offer it for sale to a group of investors in a day or two – then yes, we will will be happy to prepare a short and to-the-point application that covers the general concept of the invention and file it for you so that your patent rights are protected.
Can you protect my works of art or trademarks?
We do not engage in copyright or trademark matters. We focus solely on patents.