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Utility Patent Application
Unless there is an unusual urgency or deadline, preparation of the
best possible utility patent application, where no prior provisional
application has been filed, for the fee estimated, usually requires
about 6 to 12 weeks, providing the client cooperates in providing
promptly any information which is needed. Our fee estimates include
our fee for preparing the application, draftsman fees, mailing
costs, etc. Patent Office filing fees are over and above our fee
estimate. Usually, the client provides one-half the estimate
immediately, and the balance at the time the application has been
approved for filing. When the application has been filed, the client
has a “patent pending”, and may so mark goods containing the
invention. Also, many clients, having filed their application,
choose at this time to seek licensees, seek capital, do marketing,
etc.
After the filing of the application, the Patent Office, normally
within about eight to fifteen months after filing, mails an Office
Action, to which a response is required within an additional three
months. Several months after we respond to the first Office Action,
usually, we receive a second Office Action, which also requires a
response.
Even for an application on which a patent is allowed and issued, the
prosecution period is likely to be at least two years; and the
additional cost (over the application costs) to the inventor,
including Office Action responses, the Patent Office issue fee as
well as legal fees, through issuance, is likely to be about the same
amount as the fee for originally filing the application.
Should the Patent Office mail a “final” rejection of the patent
application, there are several courses of action still open
(depending on the particular facts), such as an appeal, or the
re-filing of the application in the same or an improved form, etc.
Of course, the client, at every point in the prosecution, is
provided with cost estimates of the next required step, and the
client will make the business decision whether or not to proceed.
Although there are no guarantees about results, we make the client
aware of our opinion of probabilities based upon the prior art thus
far uncovered, etc.
After issuance of a utility patent, increasing maintenance fees are
due at 3 ½ years, 7 ½ years, and 11 ½ years. The penalty for
non-payment is early termination of the patent rights (now lasting
20 years from the date the application is filed).
If you have any questions about the “usual course” of a patent
application, please do not hesitate to contact us. We can also
assist in negotiations, sales, or licensing transactions.
PCT
(International) Patent Application
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