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The Patent Process

Wondering whether pursuing a patent for your idea would be worthwhile?

We can help you with that decision.


1. Is my idea patentable? In the US, an idea is a patentable invention only if it is novel, non-obvious, and useful. We will be happy to discuss patentability to help you decide whether to file a patent application. In case you think patentable inventions must be high-tech and complex, consider US Patent No. 6,637,447 for the “Beerbrella” (see figure). Please note: If you want to pursue patent protection for your invention, you must keep your invention confidential prior to filing the patent application!


2. What will I have to do? The typical patent process will not take up much of your time.


Drafting the patent application. First, we will interview you to learn about your invention. Then, we will prepare a draft of the application, which includes claims that define your invention. After you review the draft, we will incorporate your comments into the application. We will continue with this collaboration until we arrive at the final version to be filed with the US Patent & Trademark Office (US PTO).


Examining the patent application. About a year after filing, the US PTO will begin examining the application. This is where we negotiate with a US Patent Examiner to determine whether your invention deserves a patent. The Patent Examiner sends an Office Action on the patentability of the claims. In rare cases, the first Office Action may determine that all claims are patentable, but more commonly the Office Action rejects at least some of the claims. We will draft a Response to the Office Action, where we argue that the claims are patentable. The Examiner can reply with more arguments or may agree with our Response. This negotiation may potentially take several years and may involve additional procedures such as appealing the Examiner’s decision. Once the US PTO determines that the claims are patentable, a patent will be issued.


3. What about foreign patent protection? Most of our clients file an application in the US, and some clients pursue additional patent protection from other countries. There are different paths to obtaining foreign patent protection, which we will discuss with you.


4. How long will this take? Obtaining a patent generally takes several years. We will be happy to discuss options for accelerating this process.


5. How much will this cost? We will discuss estimated costs, as well as strategies for reducing costs, to help you decide whether to file a patent application. Typically, the largest expense is for preparing the application, which may cost $8,000 to $15,000. Additional expenses for preparing Responses and other arguments during examination may cost $2000 to $5000 each. Also, after the patent has been granted, the US PTO requires payment of maintenance fees to keep the patent alive.







 


KEIKO ICHIYE, MEMBER


kichiye@fultonjeang.com



Disclaimer: The pages, articles and comments on fultonjeang.com do not constitute legal advice, nor do they create any attorney-client relationship. The article published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer.

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