GUIDE TO UTILITY PATENT APPLICATION AND PROSECUTION

Claiborne Patent Law Services

Spring 2019

Provisional utility patent application

A provisional patent application serves only to establish the filing date for the patent application and automatically becomes abandoned after one year.

An applicant may wish to file a provisional application if the applicant is not ready to enter into the regular examination process, typically because of time or money constraints. A provisional application establishes a filing date at a lower cost for a first patent application filing in the United States and allows the term "Patent Pending" to be applied to the invention.

Claims are not required in a provisional application. Our firms provisional patent applications always include exemplary claims, however, to serve as examples of the invention for any later filed non-provisional applications.

At least one drawing is required in a provisional patent application. While it is not necessary to have the drawing made by an experienced patent draftsman, preparing a formal drawing for a provisional filing can save time and expense when a non-provisional patent application is filed later.

The U.S. Patent Office does not examine a provisional application and such an application cannot become a patent. An applicant must submit the non-provisional application within one year of submitting the provisional application in order to possibly receive the benefit of the provisional applications filing date.

The Patent Office charges a modest fee for provisional patent applications (see attached USPTO fee table). Our fees for preparing and filing a provisional application vary from $300-$700, depending upon complexity. As with all patent preparation work, we will provide a firm, fixed-fee quote in advance to help you decide whether to engage our firm.

An applicant does not have to file a provisional application before filing a non-provisional application. Many of our clients choose to do so, however, often because provisional filing provides an interim solution for intellectual property protection prior to obtaining funding to cover non-provisional filing.

Non-provisional utility patent application

The non-provisional application establishes the filing date AND initiates the examination process.

The heart of a patent application is the applicants proposed patent for the invention. This proposal is reviewed by the U.S. patent and Trademark Office during patent examination and modified by the applicant as necessary to obtain approval for the patent to issue, if approval is indeed possible.

From the broadest perspective, a United States patent comprises two parts: the drawing or drawings that are part of the description of the invention; and the specification, which is a verbal description of the invention and its technological environment.

The patent application process, then, is the preparation and filing of drawings and specification for the invention.

Drawings for the applications we file are prepared by our experienced patent draftsman.

The specification for the patent is a hand-crafted legal instrument that describes the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains to make and use the invention. The specification concludes with one or more claims particularly pointing out and distinctly claiming the subject matter that is to be regarded as the invention. Claims may be independent or dependent upon other claims in the patent.

Total patent office fees for filing a non-provisional application depend upon the number and complexity of claims in the application. The patent office charges separate fees for basic filing, for searching art related to the application, and for examining the application for patentability (see attached USPTO fee table).

Again, as with all patent preparation work, we will provide a firm, fixed-fee quote in advance to help you decide whether to engage our firm. We have three tiers for pricing utility patent application preparation, based upon the complexity of the invention: roughly $3,500 for relatively simple technologies; $5,500 for technologies of moderate complexity; and $12,000 for complex technologies.

Patent prosecution

After a non-provisional patent application is filed with the U.S. Patent Office, it is (eventually) assigned to a patent examiner for examination. The examiner will review the claims in the application and make a determination as to whether the claims clearly specify the invention and, if so, whether the claimed invention is novel and non-obvious in light of related art considered by the examiner. The examiner will then mail correspondence called an "office action" setting forth the examiners determinations.

Frequently, the first office action to a patent application will reject one or more claims in the application, typically because the examiner believes either that the specification did not clearly describe the invention that is claimed, or that the claimed invention is not novel or is obvious in light of prior art. If the applicant does not respond to an office action within the time permitted by law (depending on the stage of examination), the patent application will be deemed to be abandoned.

Patent prosecution is the process of responding to office actions to move the patent application forward to eventual allowance as a patent, if possible.

The applicants response may be simply to provide argument to persuade the examiner to change the determination set forth in the office action. Sometimes the applicant amends the application in response to the examiners rejections, in an attempt to make the application allowable.

The patent application, office actions and applicants responses and optional amendments comprise the official legal history of the patent prosecution, sometimes called the "file wrapper."

Following second and subsequent office actions, the applicant has the additional option to appeal an examiners determination to the Patent and Trademark Office Patent Trial and Appeal Board. The Patent Office requires additional fees for appealing. An applicant may further appeal an adverse decision by the Board to federal court (either the District Court for the Eastern District of Virginia or the Court of Appeals for the Federal Circuit).

Patent prosecution ends either when the patent application becomes abandoned or when the patent issues.

Because the time and effort necessary to prosecute a patent application vary greatly from case to case, our office does not have a fixed fee for patent prosecution but rather charges an hourly rate for such services.

Issuance and maintenance of patents

If a patent application in prosecution is found to be acceptable to the patent examiner, it is said to be "allowed". For a patent to issue, the applicant must pay the Patent Office an issue fee (see attached USPTO fee table). If the applicant fails to pay the issue fee within three months of notice of allowance, the patent application will be deemed abandoned.

Upon payment of the issue fee, a date will be set for publication of the patent in the Official Gazette (Patents) of the U.S. Patent and Trademark Office. The Official Gazette is published every Tuesday, setting forth patent numbers, abstracts and representative drawings for patents issued that week. The date of publication of the patent in the Official Gazette is the date of issue for the patent. From that date until either the patent lapses or is found to be unenforceable, the patentee has the exclusive rights to the technology set forth in the patents claims.

To maintain the enforceability of an issued patent, the patentee must pay regular maintenance fees to the Patent Office (see attached USPTO fee table for current fees)

Failure to pay a maintenance fee results in the patent’s lapsing.

In most cases, a valid patent that is maintained remains enforceable for a period of twenty years from the date the patent application was first filed.

USPTO Fees

IMPORTANT NOTE: Fees shown below are current as of March, 2019. USPTO fees are changed from time to time without notice to patentees. Verify current fees online at

https://www.uspto.gov/learning-and-resources/fees-...

Entity Discounts

The U.S. Patent Office discounts some of its usual fees for smaller entities. For those fees for which discounts are provided, the Patent Office recognizes three tiers of inventive entities: large entities, small entities and micro entities.

A small entityis entitled to a 50% reduction in most Patent Office fees. The specific definition of small entity is set forth in 37 C.F.R § 1.29, but generally means either a single individual inventor, a business with 500 or fewer employees, or a non-profit organization.

A micro entityis entitled to a 75% reduction in most Patent Office fees. A micro entity must qualify as a small entity; must not have been named in more than four previously filed U.S. patent applications; must have a gross income not exceeding the U.S. Patent Office limitations on income; and must not be under obligation to assign to an entity with income exceeding the Patent Office limitations on income.

Any entity that does not qualify as a small entity or a micro entity is treated as a large entityand must pay applicable Patent Office fees with no discount.

Exemplary Patent Filing and Prosecution Fees for Different Entities

(see next page for maintenance fees)

Patent Maintenance Fees for Different Entities