Lawyers and Settlements

Intellectual Property: Patents

How to Obtain a Patent

The steps involved in obtaining a patent include:
  1. prepare a disclosure of the invention;
  2. conduct a patentability search on the invention;
  3. prepare and file a formal patent application in the U.S. Patent and Trademark Office;
  4. prosecute the application in the office; and, finally,
  5. pay the issue fee for the patent and see that it is granted.
The inventor may obtain a "patent" without the assistance of a patent lawyer or agent if he wishes. However, this is almost invariably an unwise course of action. Patent law and procedure are complex and valuable legal rights can easily be lost if the patent application and prosecution of that application are not handled carefully and precisely by one skilled in such matters. The law does not prevent an inventor from being foolish and trying to cut corners and patent it yourself. There is even a book out by the name “Patent-It-Yourself”, although that book recommends you use a patent attorney. Companies that file lots of patent applications use patent attorneys for a reason. The reason is similar to the reason you go to a specialized surgeon if you need specialized surgery. You almost certainly will get a better patent if it is done by a patent attorney.

The inventor should be very, very leery of invention promotion companies who are not patent attorneys, as these are quite often scam artists who prey on under informed inventors. There are lists available of those companies that have been indicted, forced into settlements, barred from doing business, or otherwise been found by inventor protection groups to be of questionable integrity. Inventors want to hear how great their invention is, when often what they need to hear is the sobering truth about the invention's shortcomings. Also, most large companies know of the scam invention promoters and think much less of an inventor and an invention that is associated with a scam invention promoter. If the invention promotor cannot be honest with the inventor, there is generally no logical reason for a company official to trust the promoter to be honest with the company, so the company will usually just ignore any invention presented to it by a known or suspected scam promoter.

If an invention is worth protecting, it is normally worth protecting right, and that is best done by a registered patent attorney or patent agent, since they are required to pass an examination given by the United States Patent and Trademark Office demonstrating their knowledge of patent law and procedures. The United States Patent and Trademark Office exams patent agents and patent attorneys due to the high importance the Government places on new ideas and on the need to try to assure that inventors have competent help available to try to secure the best protection for inventions. Patent lawyers and patent agents who are registered to practice before the U.S. Patent and Trademark Office may prepare, file and prosecute patent applications. Patent agents are not lawyers and cannot provide legal advice and assistance beyond preparing and prosecuting patent applications. In order to be registered, patent lawyers and agents must take and pass a special separate "Patent Bar Examination" given by the United States Patent and Trademark Office. Patent attorneys have the extra capability of negotiating for license, of litigating infringement claims, of preparing and advising on contracts and of preparing trademark applications related to the brand names used in association with any patented invention, and thus often can give more complete advice and representation. It is generally better to go to a patent attorney to prepare your patent application, because you then have someone available who is familiar with your invention and thus in a better position to help you enforce the claims of the patent against infringement.

A roster of patent lawyers and agents registered to practice before the U.S. Patent and Trademark Office, listing the individuals alphabetically, is available at a nominal cost from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402 or via the Internet at http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html#attorney_agent_search.

The major cost of obtaining a patent is the lawyer's charges in preparing it properly and convincing the patent examiner to allow meaningful coverage.

Ordinarily attorney fees will be based upon the amount of lawyer time involved in preparing and in prosecuting the application. Different patent lawyers charge different fees. Some lawyers may consent to preparing a patent application for a flat fee after they sufficiently understand what the invention is and basically how much time and effort and expertise the preparation of the application will entail. In any case, an inventor should not be hesitant about asking the lawyer what the total fees in obtaining the patent are likely to be if the patent is prosecuted through the Patent and Trademark Office in a fairly routine way. The patent attorney will also advise the inventor of problems that could arise in the Patent and Trademark Office prosecution which could necessitate significantly greater costs, such as an responses to rejection, appeal or an interference. The inventor should keep in mind that there is a significant issue fee (about $700) payable once the application is allowed and before it will be granted, that fee basically covering the Government’s cost in printing hundreds of copies of the patent, posting it on the internet, and entering it in all the various official lists of patents. Also, once the patent issues, there are three increasingly large “maintenance fees” to pay 3.5 years(about $500), 7.5 years(about $1000) and 11.5 years (about $1500), respectively after the patent issues. The patent attorney will charge a modest amount to process the payment of those fees.

Information on this page was supplied with permission of Bruce E. Burdick.


Patents | Step 1