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This memorandum describes briefly the typical procedures involved and time required to obtain patent protection for an invention. Our standard fee arrangements are also discussed.
Although most attorneys are only required to be licensed in a given state, patent attorneys must be additionally licensed to practice before the United States Patent and Trademark Office. Patent attorneys must have an engineering or science degree, or the equivalent to qualify for such a license.
Typically, in the initial consultation, you will describe and explain your invention to a member of our firm. Generally, we recommend that a novelty search be conducted in the files of the United States Patent and Trademark Office, based upon our understanding of your invention.
To perform such a novelty search, we must determine which existing patents are most closely related to the concept and structure of your invention. Your invention will be compared with these patents to ascertain whether it satisfies the standards of patentability.
As there are about eight million issued U.S. patents, a novelty search must be limited. A positive novelty search will not guarantee the grant of a patent. Such a search, however, does provide a very good indication of what has already been done in the field. The search will also assist in highlighting useful kinds of information. First, a search allows an inventor to make a business decision as to whether or not a patent application should be filed. Second, a search provides the patent attorney with useful information as how to best draft the patent application in view of the existing patents.
Upon completing the search, we will prepare a patentability opinion. If after considering this opinion it is decided to pursue patent protection and your authorization is received, we will proceed with the preparation of an application.
Patent applications are rather lengthy, technical documents that normally require substantial preparation time. Such an application will typically include formal drawings that must be prepared by our professional draftsman according to Patent Office specifications. To comply with applicable law, the invention must be described in sufficient detail to enable one skilled in the relevant area of technology to make and use it. Upon completing the application, we will send a copy to you for your review. When you are satisfied that the invention has been properly described in the application, a declaration must be signed stating that you believe you are the first inventor. We may then file the application in the United States Patent and Trademark Office.
When submitting a patent application, both you and the patent attorney have a duty to disclose all pertinent prior art to the Patent Office. In accordance with this duty, the results of our novelty search are forwarded with the application.
Upon filing the application, the prosecution phase begins. The Patent Office conducts its own independent and extensive search for relevant prior art. The Patent Office will then evaluate the patentability of the invention as claimed in the application. In some cases, the application will be allowed upon initial examination. Quite often, however, the Patent Office refuses to grant protection as broad as may be requested in the initial application. When this happens, an amendment or response must be prepared by the attorney to overcome any problems.
When the Patent Office and the attorney agree as to the form and content of the application, the patent will be granted. Occasionally, even after making such efforts, the Patent Office does not agree to allow protection commensurate with what the inventor believes the invention merits. We must then confer to decide whether to appeal the Examiner's decision.
TIME REQUIRED TO OBTAIN PATENT
The approximate time required to complete the various steps described above are as follows:
Our quoted cost for patentability searches must be paid in advance. Additionally, all or a substantial portion of our quoted cost of preparing the application must be paid in advance, with the remaining costs being paid once you are satisfied with the application, and before filing it with the United States Patent and Trademark Office.
Except for those charges indicated above, you will be billed monthly for additional services rendered and disbursements and fees paid in prosecuting the application. Also, maintenance fees are payable 3 1/2, 7 1/2, and 11 1/2, years after issuance of the patent to keep the issued patent in force. Our statements are payable within thirty (30) days. Although we generally do not anticipate any problems, we reserve the right to refuse to do further work, or incur further expense, for any client having a delinquent account. Additionally, we charge 1 1/2% monthly interest for statements not paid within thirty (30) days.
BARS TO PATENTABILITY
As a final point, it is important to mention that there are several events that can prevent the grant of a patent in the United States. Among the most important is the requirement that the patent application be filed within one year after any public use, offer of sale, sale or descriptive publication of the invention. Failure to file within the one year period results in dedication of the invention to the public. Should you contemplate the filing of applications in foreign countries, the matter should be discussed at our first meeting, or as soon thereafter as is possible. This is important because in many foreign countries, patent rights can be lost by public use, offer for sale, sale or publication anywhere in the world before the filing of the corresponding U. S. patent application in the United States Patent and Trademark Office.