How long does the patenting process take?

There are two parts of the process that you probably want to know about: the initial preparation, and the time it takes the Patent Office (USPTO) to actually issue a patent. The initial preparation takes an average of 2-3 weeks, in which the patent agent/attorney gathers information from the inventor, prepares professional drawings, drafts a detailed description of the invention, drafts the legal claims, and incorporates inventor feedback.

Once the application is filed, on average it takes the USPTO 27 months to fully process and issue the patent. Starting at around 18 months, the USPTO sends its first set of arguments and rejections to the applicant. This process of rejections and responses can be repeated 2-3 times (and can even be extended) before reaching a conclusion.

How much does it cost to obtain a patent? Initial filing costs and legal fees run from five to ten thousand dollars. Legal fees for office action responses average around two thousand each. If the patent issues, the issuance fee is $480. Patent maintenance fees then become due at 3.5, 7.5 and 11.5 years, at $800, $1800, and $3700. These USPTO fees are being quoted for standard small businesses, and they can vary depending on your income or the size or type of the business.

To make a long story short, you would need to budget around $10,000 at the outset, and be prepared for legal fees of $2,000 starting at around 18 months after filing, and which will repeat depending on the decisions you make about the application. If the patent issues, you then have to budget for the issue and maintenance fees.

What is the difference between a provisional and a utility patent?

A utility patent is a document that gives you the right to exclude others from making, using or selling your invention. The utility patent application process is a long and costly administrative process, in which the applicant prepares a detailed application and then undergoes several rounds of examination by the Patent Office, in order that a patent is granted that properly covers your invention and no others.

A "provisional patent" is a placeholder application that must be converted within one year into a utility application that undergoes the full examination process. Because the provisional application process requires minimal formalities and no examination, it is often used when invention has occurred but the inventor or company wants to continue to develop the invention to fully understand its competitive advantages. For instance, competitive advantages may be market driven, technological or scientific, or it may lie in production efficiency. By using the provisional application to get the early filing date, the inventor or company buys itself some time to identify and ultimately patent the most valuable aspects of the invention in the marketplace.

Do I need a patent?

Not knowing the facts of your case, I can only give a general and personal opinion, which is likely to change over time. A patent gives you the right to exclude others from making, using or selling your invention. It is just one tool in an arsenal you have to compete in the marketplace. As such, its value in proportion to other tools will vary according to the practices of your industry. Other tools include keeping the technology as a trade secret, building powerful brand recognition, and being the first mover or creating and maintaining the killer technology.

Two other issues you shouldn't overlook are development time and the real or perceived value of the property itself. For an example of how development time should factor into your analysis, take iPhone/Android apps. These can be valuable tools for productivity, communication, security and technological development. Setting aside the question of software patentability, there is no question that some apps are passing fads that fade as soon as something new or better comes along, which can be as fast as a couple of months. Such a product would not need a twenty-year patent to compete, and indeed, may have lost value by the time a patent is issued by the patent office. The fast timetable of software development is one example of a common argument made against software patents, and the long life of the patent (which is one justification for its cost) is something to keep in mind.

The issue of real or perceived property value is more of a theroetical question about whether or not you should seek to turn your inventions into assets that can easily be transferred and valued. Some people believe that investors expect ideas to be patented because patents increase the value of the company. However, this assumption should not be made without looking at the technology and patents themselves. Reflexively attempting to patent ideas that have little chance of making it through the patent office, or little chance of enforcement, will not really be valuable and smart investors will see that. The advantage of having the patent application in place, based on my experience, is that the relative certainty provided by the USPTO reviewing and publishing the patent application does seem to reduce transaction costs in pitching to investors and negotiating with licensees.

How do I check if my idea has already been patented?

Most likely you are actually asking two different legal questions: (1) is there an existing patent that would prevent me from practicing my own invention, or (2) can I patent my invention? It is best to understand what you are trying to do. With respect to the first question, generally speaking you are under no duty to clear your product for "freedom to operate". You can request a search and legal opinions at varying levels of thoroughness, but in the absence of any legal duty to do so it is purely a question of cost-benefit. If, on the other hand, you have a particular issued patent in mind, you may be under a duty to clear your product and you need to consult an attorney. The attorney should issue an opinion on your freedom to operate based on an analysis of your product versus the claims of the patent.

It is really the second question most people are really seeking to answer. The question of patentability theoretically requires a search of all publicly existing information to determine if your invention has been described or easily follows from something that already exists. Obviously, such a search or definite answer of yes/no is impossible, and the determination benefits from the experience of the patent attorney, who determines what is relevant to search based on an understanding of your invention. A patentability search and analysis is performed at average costs ranging from $500-$2,000.

What about design patents?

The difference between utility and design patents is that utility patents protect how an article is used and works, whereas design patents protect how the article looks. Because they do not protect functionality, design patents do not protect an invention. You should consider design patents when there are different ways to realize the ornamental design of your product and you see value in your design. Design patents are also subject to the examination process, but they typically issue within 2 years. They are valid for 15 years.

Can I patent my app?

A recent Supreme Court decision made it more difficult to obtain patents for software. Generally, if the technology effectuates a method that is already known or practiced but is now being facilitated by computers, then it will not qualify. Software that facilitates business transactions is particularly difficult to patent. At the other extreme, courts have held that technology that addresses a problem that specifically arises in computer networks would be allowable. To determine whether an app is patentable or not is not much different than for any other type of technology.

Are there any deadlines I need to know?

Yes, generally speaking, in the U.S. you have one year from the date of first public disclosure to apply for a patent. A public disclosure is anything that you haven't subjected to a requirement of secrecy.

Can I file my own provisional application?

You can. The USPTO filing fee is $130, the application will not be published, and a utility application based on the provisional application must be filed within one year for the provisional application to have any value. There are no legal formalities required--you simply need to submit a full disclosure of your invention, being sure to include lots of description and pictures.

The way an attorney or patent agent can add value is by determining whether you have the proper amount of disclosure, whether the invention is ultimately patentable, and even by handling the application so that you have peace of mind.

What about international patents?

A U.S. patent only gives you the right to exclude others from making, using or selling the invention in the United States. In order to prevent others from doing so in another country, you need to obtain a patent in that country. There is no such thing as an international patent that will prevent others from infringing your patent; however, there is an international application process called the Patent Cooperation Treaty (PCT) in which the early stages of the patent process is streamlined and administered by an international body, the World Intellectual Patent Organization (WIPO). The purpose of the PCT is so that rather than copy and submit your application in each country in which you want to seek protection, you can file one application that undergoes initial examination and processing at one international office. Within 31 months of the priority date, you then need to complete the application in each country in which you seek a valid patent.

Because you will still need to hire a local patent attorney in each country in which you seek a patent, the cost-savings of the PCT application are only significant if you know you will seek a patent in numerous countries. However, the PCT application has other benefits. In particular, there is a relatively definite schedule of events that is helpful for effectively planning your international patent strategy. For instance, rather than rushing to file all of your foreign patents within deadlines sometimes as short as six months of your U.S. application, the PCT application ensures no national applications are due until 30 months. Moreover, you will receive an International Search Report at 18 months, which provides a preliminary assessment regarding patentability, useful for planning and strategy.