Patents – Frequently Asked Questions (FAQs)

What is a patent?

What if I only have an idea concept?

What assistance can you provide while my invention is still just an idea?

I’m not sure if I want to move forward…can you still provide guidance?

What occurs in a Patent Consultation and what are the costs?

What can be patented?

How do I know if my invention can be patented?

How do I know if someone else has previously created my invention or if there are similar inventions that may prevent me from obtaining a patent?

Can I perform my own Novelty Search?

How long does an issued patent last?

How do I pay for your services?

Are there multiple options for payment

How much does it cost to file a patent?

Are there less expensive or reduced-rate options for filing?

What are other expenses not covered in the fees?

Once we start a consultation am I locked into using your firm and do you keep my materials?

What happens if I decide to stop working with your firm?

What if there is more than one inventor or business partner?

Will your firm invest or fund my invention like on Shark Tank?

Are there any alternative billing arrangements we could make?

Can I receive a patent in a foreign country?

What does it mean to have the “Patent Pending” status?

What’s the difference between a Provisional Patent Application and a Regular Patent Application?

How long does the Patent Process take?

Are there faster ways to get my patent approved?

What happens if my application is rejected?

What’s the difference between a Patent Attorney and a Patent Agent?

Why should I use a patent attorney at Oliver & Grimsley instead of Legal Zoom or other less expensive attorneys?

Should I use an Invention Marketing Company?

What is a patent?

    • In the United States, a U.S. patent is a right granted by the U.S. Patent Office via an issued patent certificate in order for the owner to stop others from making, using, or selling an invention in the United States for a limited time period.

What if I only have an idea concept?

    • “Reducing your Invention to Practice”: The U.S. Patent Office requires you to have either: (1) a working prototype; or (2) a written description sufficient to allow someone familiar with the same field of technology to read the written description and to re-create your invention.
    • If you do not have any of the above two items, you need to get working on them. We may be able to provide assistance with this step of the process, but you will be billed for our consulting services at our pro-rata hourly rates in order to try and assist you with reducing your invention to practice.

What assistance can you provide while my invention is still just an idea?

    • Counseling Services: General patent counseling services are provided and fees based on our hourly rates will be incurred for our services as soon as we are engaged. Counseling services may include providing advice on all matters relating to your patent matter, including general questions, consultation, review and evaluation of your invention materials, and advice provided in connection with your invention, patent protecting, marketing, licensing, etc. of the invention.

I’m not sure if I want to move forward…can you still provide guidance?

    • Initial Patent Consultation: If you’re undecided on what to do, you may look to schedule an initial consultation. We usually charge a reduced fee for our initial patent consultations.

What occurs in a Patent Consultation and what are the costs?

  • We offer an initial one-hour legal consultation at a reduced, flat-rate of $200. During this time, we will discuss the patent process from start to finish. Depending on your interests, we can provide information on U.S. and foreign patent protection, whether your invention is novel or how to go about making that determination, trademarks, branding strategy, commercial viability, manufacturing, sales, license agreements. In addition, you are able to ask questions about the patent process, seek advice on your invention or any preliminary materials that you may have at this point, or similar inventions that you have come across.

What can be patented?

    • Utility Patent: Covers inventions that are functional:
      • Machines
      • Articles of Manufacture- products
      • Compositions of Matter (chemicals)
      • Business Processes or Methods
      • Improvements to Existing Products or Technology
    • Design Patent: Covers the shape, ornamental features, and appearance of useful objects.
    • Plant Patent: Covers asexually reproduced distinct and new varity of plant.

How do I know if my invention can be patented?

    • U.S. Patent Office Requirements: The government requires that your invention be: (1) new, (2) novel, and (3) not obvious.

How do I know if someone else has previously created my invention or if there are similar inventions that may prevent me from obtaining a patent?

    • Novelty Search: Generally, a novelty search is a preliminary investigation based on a limited amount of time to provide you with information to make an educated decision on whether or not it’s worthwhile to move forward to the next stage (and go through the additional time and expense) of drafting a patent application.

Can I perform my own Novelty Search?

    • We encourage clients to investigate whether the invention or similar inventions exist and perform at least internet searching and in-person product searching in stores. Similar inventions, and inventions that are publicly sold or available, even products that may not necessarily have patent protection, may impact our assessment of whether your invention is likely to be granted patent protection.  General internet searching, in addition to searching on the Google Patent Search Engine tool — https://patents.google.com is helpful and may provide some insight for your patent attorney. These actions are not a substitute for a specifically crafted Novelty Search conducted by a patent attorney, and we recommend that you consult a patent attorney before moving forward.
    • Key word searching is an art, and a patent attorney will construct numerous key word searches to uncover information relevant to a potential patent matter. An inventor may conduct a preliminary search of these records as well, but you should be aware that a variety of terms exist that describe the same subject matter. Therefore, seeking legal assistance is recommended.
    • In addition to issued patents and pending applications, other materials such as literature (such as newspaper articles or research papers) or foreign patents and applications my also impact the patentability of an invention. An inventor should gather these materials for review by a patent attorney.

How long does an issued patent last?

    • Usually, utility patents are valid for a period of 20 years beginning from the filing date of the earliest filed application. After that time period, the patent will expire and it cannot be renewed. The invention then falls in the public domain for anyone to use.
    • Usually, design patents are valid for a period of 15 years from the issue date of the official patent.
    • Patents issued prior to June 1995 that are still valid are subject to different rules. Please contact us if you need assistance.

How do I pay for your services?

    • Legal services are provided in step-by-step increments depending on what stage you’re at in the patent process. Please refer to our Patent Engagement Letter http://www.olivergrimsley.com/patent-engagement-letter/ for a general outline of costs, and for the billing rates of our attorneys and legal staff.
    • If you only have an idea concept, you will most likely start at the consultation and counseling stage. Counseling is provided on a pro-rated hourly basis in accordance with our hourly billing rates starting at $325/hour.
    • Please note that telephone calls and emails are billed services, so it’s often best to try and group questions together so that we can be efficient when addressing issues.  Telephone calls to our administrative assistant and the administrative work performed is not billed out to the client.

Are there multiple options for payment?

      • Fixed-fee Rate: This type of billing arrangement may be available in certain situations. Once we’ve had the opportunity to review your initial disclosures, we may provide a fixed-fee billing option.  The fee will be determined by several factors, including: the field of technology, complexity of the invention, and related art, among other considerations.  This fixed amount will consist of preparing one draft application and one revision of the draft based on the initial invention disclosures provided by the client.  The fixed-fee will not include work required due to later changes to the invention after the client has provided the initial disclosures, or different embodiments of the invention outside of what the client initially provided.  The draft of the patent application is based on the inventor’s initial disclosures to the patent attorney.  Note that if the invention changes throughout the process and further revisions to the patent application are needed, costs will increase.  This additional work will be considered outside the scope of the initial project and the client will incur additional fees above the fixed fee rate.
      • Hourly Billing Rate: Please refer to our Patent Engagement Letter http://www.olivergrimsley.com/patent-engagement-letter/  for guidance on our hourly rates (paralegal $150; patent attorney $325/hr and senior patent counsel $395/hr).  Note, we do provide a cost estimate for work to be conducted, however, it should be understood that an estimate is not a capped fee or a firm quote.  You should expect to pay for the actual time spent on your patent matter at the hourly rates of individuals working on your matter.  *Note – the estimated cost includes a limited number of telephone calls and emails but more substantive time will be billed.
      • Individuals and small business entities may prefer the fixed-fee arrangement, while larger business entities may prefer hourly billing rates. Generally, the fixed-fee arrangement will be higher than the hourly billing rate, but you avoid the risk that the legal services time will exceed the quoted estimate.  We find that when working with individuals and small businesses that are new to the patent process, more time is used for additional questions and guidance.  Therefore, we recommend for the less experienced inventor a high fixed rate that will provide the security needed so that we may spend extra time with the inventor without the inventor having to pay additional fees for our time.  If both options are available to the client, it’s up to the client to select the desired billing arrangement.

How much does it cost to file a patent?

      • Regular patent application (generally proceeds through the patent office in 2-3 years or so if all goes smoothly) – Filing fees are approximately $400, which is a reduced filing fee if you qualify for micro-entity status; and approximately $800 for a small entity if you qualify.
      • Prioritized Application (expedited application generally proceeds through the patent office in about 1 year or so if all goes smoothly) – Approximately $1500, which is a reduced filing fee if you qualify for micro-entity status; and approximately $2800 for small entity if you qualify. The Patent Office grants only a certain number of expedited applications per year.  In order to see if availability is still offered, please check with us.

Are there less expensive or reduced-rate options for filing?

    • If you qualify as having a “micro entity” status, the patent office reduces certain filing fee costs by 75%. Qualification is based on your individual gross income and the number of patent applications you’ve previously filed.
    • The applicant or the inventor has not been named as an inveor or joint inventor on more than four previously filed U.S. patent applications (excluding provisional applications and international applications).

What are other expenses not covered in the fees?

    • Other expenses include external costs that are incurred on your behalf, such as filing fees, delivery charges, formal drawings and similar expenses. We do not charge separately for paper, fax, or phone expenses other than conference call service fees we incur.

Once we start a consultation am I locked into using your firm and do you keep my materials?

    • We may have initial discussions and consultations before you retain our firm for services. Depending on the service you’re investigating, a consultation fee may apply.  Any discussions and/or materials that you provide during an initial consultation or prior to engagement with our firm are considered privileged and will be held in confidence and stored in accordance with Maryland state law.

What happens if I decide to stop working with your firm?

      • Clients may terminate our engagement at any time however, the client will be billed for services and expenses or other costs incurred up until the point of termination.
      • The materials you’ve provided to us during our relationship will be held in confidence and stored in accordance with Maryland laws. Legal materials that we’ve developed for you will be provided so long as all legal service costs have been paid in full for the relationship.

What if there is more than one inventor or business partner?

    • Generally, when we’re working with more than one inventor or business partner, the costs of the overall work tend to increase. We encourage multiple inventors and business partners to either designate one person as the point of contact when working with the attorneys, or for all inventors and partners to participate in calls and meetings. Otherwise, we find that additional time is spent repeating information, therefore incurring more legal time.  All inventors are required to be listed on patent applications.   Additional paperwork is required to be prepared and filed, thus increasing costs per inventor.

Will your firm invest, partner with, or fund my invention like on Shark Tank or Piranha Tank?

      • Funding the Invention – we do not invest in or fund clients’ inventions. Each client is expected to pay for initial upfront costs in connection with the initial consultation and novelty search.
      • Partnerships with Clients – we don’t take a piece of the action, so to speak. Clients request services, and we provide the services requested.  We don’t take a percentage of product profits or partner with clients in a business relationship.

Are there any alternative billing arrangements we could make?

      • Contingency arrangements – for the initial stages of the patent process, we do not offer contingency arrangements. 
      • Payment plan arrangements – we generally don’t offer payment plans initially to clients. However, we do work on a step-by-step basis, so funds for each stage are collected as we move along in the process.

Can I receive a patent in a foreign country?

      • For foreign protection of your invention, you are required to file a patent application in each country in which you seek protection. If you’ve already filed a U.S. application, this application can generally be used to assist with the foreign applications.  However, each country has specific rules and requirements for a patent application with which you need to comply.
      • In order to file the foreign (PCT, which stands for Patent Cooperation Treaty) application, we will need to revise your U.S. Patent application so that it meets the form and requirements set forth by the foreign patent office.  The initial fees in connection with foreign filings are as follows: (1) foreign (PCT) application filing fees are generally in the $3000 range (but may vary based on the fluctuation of the U.S. dollar); and (2) Legal fees for our services for the preparation and filing of the application are generally in the $1500-$2000 range.  Please note that because the subject matter of each patent application is unique, costs will be determined on a case-by-case basis.  A general range of costs is provided based on our experience of handling these matters. 
      • International patent protection can be a very expensive proposition depending on how many countries, and in which countries, you seek patent protection.  In terms of the expenses that you might incur with these foreign national phase filings, there are specific foreign filing fees in each country, annual maintenance fees, and foreign counsel fees, among others.  In addition, similar to your U.S. patent application, legal fees in connection with a foreign application would also be incurred in the future based on the examination of the application.  Therefore, the initial $5000 (approx.) that we mentioned above and that you will initially spend, is usually the least amount of the costs that you will incur in deciding to pursue foreign protection.

    What does it mean to have “Patent Pending” status?

        • Once a patent application is filed, the application has patent pending status.
        • Under federal law, you may not use the “Patent Pending” status until an application has been filed. It is unlawful to do so and may be punishable by fine or imprisonment.

    What’s the difference between a Provisional Patent Application and a Regular Patent Application?

    •  Provisional Patent Applicaton:  This type of application is a place holder application to secure an early filing date.  A regular patent application (see below) must then be filed within 12 months, otherwise, the benefits of the earlier filing date are lost.  The provisional patent application does not get examined by a patent examiner, nor does it issue into a patent.  Note, the information provided in the provisional patent application, must be to the level such that any regular patent application that follows within the 12 month period, can be supported.  Otherwise, any new information filed in the follow up regular patent application will not be deemed to have the benefit of the earlier filing date from the previously filed provisional patent application.  Thus, depending on where you are in the invention process, it may be more cost effective to forgo the provisional patent application, and begin the formal patent process with filing a Regular Patent Application.  Some inventors who are uncertain whether he/she wants to ultimatley move forward overall, may seek to pursue a provisional patent application to test the commercial viability of an invention, investigate and secure investors, or seek to pursue a potential buyer of the application.  These interests, however, are generally a lengthy process that could likely exceed the 12 month placeholder time frame, and therefore starting with a Regular Patent Application may be more cost effective.  The filing of a provisional application also delays the patent examiner process by up to 12 months, depending on when the follow up Regular Patent Application is filed.  Please seek legal counsel regarding patent strategy and options available in your specific scenario. 

     

    •  Regular Patent Applicatin (Non-provisional): A regular patent application is required by the US Patent Office to begin the patent process.  This application will be examined by a US patent examiner to determine whether the application  meets the US requirements and is able to navigate the US Patent Office vetting process in order to reach the level of being allowed and issued as a formal US patent. 

    How long does the Patent Process take?

        • Generally, the legal services portion of conducting a Novelty Search will take about 4-6 weeks to complete from when the inventor fully responds to our invention disclosure questions (assuming that the inventor provides the requested and required information needed to analyze the invention and perform the search). If the decision is made to move forward after the Novelty Search is performed, drafting your patent application will generally take several weeks to two months or longer, depending on the subject matter, the number of inventions and embodiments, and whether the initial invention remains the same without changes.
        • Once your application is ready for filing, the time it takes for a regular application to proceed through the patent office is approximately 2-3 years. Note, this time is also influenced by the PTO’s backlog.  The US Patent Office offers alternative methods of filing a patent application (if available to you as an option), which would speed up the time in which the application is placed in front of an examiner to begin the review process.  If you are interested in these alternate application tracks, please see Prioritized Track and Accelerated Track Application information herein.
        • The patent examiner’s response to your application will also influence additional time in connection with your patent matter. The PTO states that in 85-90% of all patent cases the application receives at least one rejection.  Therefore, you should plan on receiving at least one or more rejections.  Usually there is 3 months in which to respond to a rejection, and additional time for the patent examiner to review and make a follow up determination which can be an additional 2-3 months. 
        • Once your application is allowed, the PTO will publish the issued patent, and issue the formal certification which generally takes 30-60 days.
        • You will also influence the time of the patent process via a number of factors, including but not limited to, response time to attorney, substance of response, changes to the invention, etc.

          Are there faster ways to get my patent approved?

          • Prioritized Track Application – your expedited application will generally proceed through the prosecution phase of the patent office in about 12 months or so. Only a certain number of applicants per year are granted expedited applications. In order to see if availability is still offered, please check with us. Additional government filing costs apply.

           

          • Accelerated Track Application – your expedited application will generally proceed through the prosecution phase of the patent office in about 6-12 months. Additional legal work will be required for Accelerated Track applications, which have additional filing requirements, and therefore, additional costs for legal services and government filing costs apply.

          What happens if my application is rejected?

              • As mentioned earlier, the Patent Office states that 85-90% of all patent applications will receive feedback from the Patent Office (usually via an “Office Action” or rejection). It is common for applications to receive more than Office Action. 
              • Usually, we will review and analyze the PTO’s feedback, and make a recommendation to the client on how to proceed. In most cases, we are able to respond to the Office Action by drafting legal arguments and/or making amendments to the patent application in order to address the patent examiner’s feedback.  Each response is generally $2500-$3500.

           

            • Because the amount of work required at this stage will be a function of the USPTO’s feedback, it is difficult to quote typical legal fees for this step; recognizing that a Response to more than one Office Action may be required, it is hoped that these legal fees can be held to $5,000 -$10,000 or less for this stage.

          What’s the difference between a Patent Attorney and a Patent Agent?

            • Both a patent attorney and a patent agent have a technical engineering or science background, and are permitted to practice before the U.S. Patent Office. An attorney also has the additional degree and skill set to analyze and assesses arguments in order to respond to and overcome rejections cited by the patent office examiner that references similar technologies and inventions against your application.

          Why should I use a patent attorney at Oliver & Grimsley instead of Legal Zoom or other less expensive attorneys?

              • Our price is a reflection of our service and experience.  When we conduct a novelty search, the process consists of drafting a sample legal description of yoru invention. This legal description will ultimately be required by the PTO should you eventually proceed to file an application.  Based on this drafted legal description, we conduct an extensive search to make sure that it’s worth your while (in money and time) to draft and file a patent application.  In the majority of cases, we are spending more time in searching then we charge you for (because of our capped fee arrangement for the search portion).  Our name will be going on any application we file, which will ultimately impact our success ratings (we have a 90-95% success rate)- we therefore have a vested interest in giving you a quality recommendation on whether to move forward with drafting a patent application.  We’re not just giving you an automated stamp of approval to get you to the next stage.
              • In performing our search, it is our hope to uncover similar patents that may present a problem for you moving forward if we were to draft a patent application for you.  With this in mind, we are able to craft the application around our similar findings in order to put your application in the best light and show how your invention is unique and distinguishable.  It is easier and more cost effective to draft the application from this perspective (i.e., having a good idea about what similar inventions are out there), rather than waiting for a first rejection from the U.S. Patent Office, which would force us to scramble with revisions and hope that information was included in the initial application filing that we can then later use to show why your invention is different. The U.S. Patent Office will always find additional “similar inventions” that were not uncovered in our novelty search.  The Patent Office has a responsibility to vet all incoming patent applications to ensure that the invention rises to the level of patenability required to substantiate deeming it worthy for patent certification.
            • Personal Attention- we provide one-on-one consultation and legal services. Our attorneys provide guidance throughout every stage of the patent process beginning with the inital patent investigation, through hopeful issuance of the patent.  In addition, we assist clients with additional matters, including intellectual property and business counseling in connection with trademarks and branding, negotiations, manufacturing, licensing, sales agreements regarding inventions, and business formation, among other things.

          Should I use an Invention Marketing Company?

          • Generally, these companies do not provide you with legal advice in connection with the patent process and obtaining a patent.  They usually are geared toward evaluating your product idea and generating a report back to you that they believe your product will be commercially successful.  These companies refer you to patent attorneys they work with outside of the invention marketing company.
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