Do you need international patent protection?

Posted on March 26, 2009 by Richard Gearhart

 So you’ve gotten your patent application on file, the rush and the fuss are over with for the time being, you’ve hit your deadline before the presentation or the trade show. Fortunately the patent decisions have been made now and you can forget about this part of your project at least for awhile. And maybe you take a deep breath, because the financial hemorrhage from the patent work is at least on hold.

But soon you get a letter from your patent attorney advising that the one year deadline is fast approaching and you need to decide whether you want international protection. What do you decide? How do you decide? What countries do you file in? Is worth the money it will cost?

Well the answer to the question “do we need international protection” is a qualified “maybe”.

Obviously, if you don’t plan to do business outside the US, then the answer is a clear “no”. If you get a US patent, you can always prevent people from importing into the US from another country. The US is all you need.

If you plan to sell outside the US, then you want to consider patents in the major markets where you plan to sell. If you plan to sell in Japan, for instance, consider a patent in Japan. That too is obvious.

But just because a patent is available doesn’t mean you want one. Here are some additional considerations.

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Who will read your patent?

Posted on March 25, 2009 by Richard Gearhart

You may be surprised to realize your patent has many audiences. The list includes you (the inventor), your inventor peers, Patent Examiners, investors and business people, other lawyers, and in some cases, a judge and jury. A good patent application will effectively address the needs of each audience.

Obviously, the application reflects the inventor’s work and creativity. Often the application will include parts and descriptions written by the inventors, and so has the inventor’s own voice. The patent provider will incorporate as many of the inventor’s ideas and suggestions as possible with the goal of protecting as many variations of the invention as possible. In any case, you, the inventor, should be happy and satisfied with the application's content.

It may also be read by your peers. This happens frequently in highly technical fields, such as biotechnology and engineering. Here a premium is placed on scientific content and accuracy.  Most inventors enjoy the feeling of statisfaction that comes when their application publishes and their ideas have become a part of the technical literature. Published patents provide important teachings and are considered an important scientific resource. The publication part of the process helps fulfill the patent systems constitutional purpose of advancing the useful arts and sciences, by making technical knowledge publicly available that may otherwise remain secret.

Another important reviewer is the patent examiner at the US Patent and Trademark Office. The patent examiner has highly regulated criteria that the patent must be met before allowance.  The Manuel of Patent Examining Procedure (MPEP) is the reference source for the patent examiner and contains thousands of pages that direct the Examiner though the proper examination of the patent application. The patent must meet the criteria set forth in the MPEP and the patent laws in general including novelty and non-obviousness, as well as numerous other details of a highly complex nature.

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What does it Cost to Get a Patent?

Posted on March 21, 2009 by Richard Gearhart

There are two stages to getting a patent, each with its own set of fees. The first stage is the filing stage. The second stage is the prosecution stage, which occurs 1-2 years after the filing stage.

There are filing fees and attorney’s fees associated with filing a patent. Filing fees are fees you pay to the USPTO (United States Patent and Trademark Office) for filing your patent in their databases. These fees may increase slightly year to year, but for 2009 the costs are:

  • $110 to file a provisional patent
  • ~$600 to file a utility patent

Attorney’s fees to file a patent vary from about $3,000 up to $20,000 or more, depending on the complexity of the patent. Most patents for individual inventors fall on the lower end of the cost scale. These fees cover the actual writing of the patent, which includes:

  1. Drafting the claims – the claims capture the essence of your idea in broad terms. The claims are the most important part of the patent, and must be done correctly for maximum protection of your idea.
  2. Obtaining the proper drawings - a patent attorney usually uses a draftsman, who takes your sketches or ideas and turns them into drawings that meet all of the patent office’s criteria.
  3. Drafting the specification – this part of the patent uses the drawings and your ideas to describe your invention in detail, and is as comprehensive as possible to further protect your patent’s validity.
  4. Filling out the proper forms and submitting them to the patent office, with the proper filing fees.

Twelve  to thirty six monthsafter the patent is filed, an examiner at the patent office reviews it, and typically rejects some of the claims. At this point, prosecution begins. Prosecution is the act of arguing the validity of the patent with the patent examiner, with the goal of convincing him or her to allow as many claims as possible. The fees for this phase are variable, and typically range from $1,000 to $4,000, depending on the amount of time involved.

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