As an inventor, you should consider the benefits of a patent search and the preparation of a patentability opinion to determine what inventions and publications are publicly available. This helps to prepare your patent application and also lets the inventor know about other patents they could be infringing with their own invention. This is critical information to determine during the infancy of a new business. Although a patent search and opinion is not required under patent law, it is often helpful pre-filing. It is important to emphasize that any patent references, publications, or materials relating to the applicant’s invention must be disclosed to the United States Patent and Trademark Office (USPTO), or any patent rights could be forfeited during prosecution, or later invalidated through the courts.
Utility Patents: Provisional & Non-Provisional
As it relates to a utility patent, which is any invention of a new and useful process, machine, manufacture, or composition of matter, there a few options when filing for patent protection in the United States. There are two primary mechanisms to apply for a patent, either a provisional patent application or a non-provisional patent application. A provisional application does not have as stringent filing requirements, but it must include and properly describe the invention and what it covers. Once submitted to the USPTO, the provisional patent application will establish your filing date (which is key for the new “First to File” system, now in place since the passage of the America Invents Act) but cannot on it’s own mature into a patent.
A provisional patent application is used as a placeholder to establish your filing date but literally sits in the Patent office and will not be examined by the USPTO for patentability. However, a provisional patent application stays pending at the USPTO for only one year. The applicant must file a non-provisional patent application (with a separate filing fee) claiming priority to the provisional patent application in order to establish the earlier priority date within that one year. This is a hard deadline (referred to as a statutory bar deadline) with the USPTO that cannot be extended, for any reason.
If you decide not to file a non-provisional patent within a year of the date you filed you provisional patent application, you can still file a non-provisional patent application. You may still be able to obtain a patent, but you will not be entitled to the benefit of the earlier date that of the previously filed provisional patent application. As a result, if someone else invents something similar to your invention, or someone discloses the invention publicly, you may be forever precluded from securing patent rights in the United States, and possibly internationally. Therefore, establishing the earliest filing date is key and should be highly guarded!
Alternatively, you can always bypass the provisional patent application all together and file a non-provisional patent application. It really depends on the business needs and the development of the invention.
There is also the cost issue. The government filing fees vary depending on the size of the applicant but assuming the applicant has a business with 500 or fewer employees and has not assigned the rights to a company with over 500 employees (small entity), a provisional filing fee is only $130, whereas the non-provisional filing fee is $730.
In addition to the cost that is paid to the USPTO, there is also a legal fee for preparing the patent, whether a provisional or non-provisional application. Without knowing the specifics about the invention and its complexity, it is often difficult to estimate the legal fees for preparing a patent application. Typically, a provisional patent application will run $3,500-$4,500 and a non-provisional will be $5,500 and up. It really depends on the complexity of the invention and the amount of disclosure required in the application. Also, formal drawings, if required, are usually $100 per figure. The legal fees are for the preparation and filing of the patent application. Any assignments, responses to Office actions, and other post filing work would be a separate legal fee and may require a corresponding government filing fee.
Design patents protect the visual ornamental aspects in or applied to an article of manufacture. Unlike a utility application, a design patent protects the appearance of the invention. The design may focus on the shape, pattern or the article, or the combination of both. However, a design patent does not focus on the function of the invention like a utility patent, only the ornamental design. The government filing fee for a small entity is $380 for a design patent application; the legal fee to prepare and file the design patent application is, on average, $1500. Given the visual importance of the ornamental features of the invention, design applications typically include at least six drawings.
Myth: The Poor Man’s Patent
It is important to dispel a common belief of inventors referred to as the Poor Man’s Patent. Some inventors think they can sit down, write about what their invention is and how it works, put it in a self-addressed stamped envelope, and mail it to themselves through the U.S. Postal Service. The hope is that in the future, the inventor can show when they first conceived of the invention by using the unopened envelope date stamped by the Postal Service. The Poor Man’s Patent, as it’s commonly called, is a farce. This in no way will help you establish an invention conception date. Moreover, given the current First to File system, the first inventor to file their application with the USPTO gets the earliest filing date. If you have an innovative and novel invention, contact a patent attorney to properly protect your rights.
If you have any questions about the patent process, contact Mr. Popowitz below.
Greg M. Popowitz, Esq.
Registered Patent Attorney
Intellectual Property Litigation
213 East Sheridan Street, Suite 3
Dania Beach, Florida 33004
Miami • Ft. Lauderdale • Boca Raton