Patent Questions

Below are frequently asked questions about trademarks.

Click on a question to see the answer.

What is a patent?

A patent is a legal monopoly that gives you the right to exclude others, for a limited time, from using, making, or selling your claimed invention.

What should I do when I have an idea for an invention?

The first step is to document your idea. Write it down and note the date that you came up with the idea. The next step is to determine if your idea is a patentable one. This is typically done by a patent search. An inventor should seek the assistance of a patent attorney to perform a patent search.

Is my invention patentable?

To be patentable your invention must be:

Patentable Subject Matter. New. Not Obvious. Useful.

Patentable Subject Matter: Any process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, is considered patentable subject matter. There are some important exceptions, however, that a qualified patent attorney can guide you through.

New: The idea needs to be new. This means others have not done it before. This aspect of the test is generally referred to by patent attorneys as “novelty.”

Not Obvious: The idea needs to advance science and the useful arts in a way that is not obvious to try. In effect, this somewhat subjective consideration means that your idea needs to have an inventive step of some kind, which would not be obvious for a person of “ordinary skill in the art” to try.

Useful: The idea needs to have a use and function.

What is “prior art”?

Prior art is a term that describes any reference documents or items that are related to your idea and that existed prior to your invention. Some examples of prior art include scientific literature, existing patents and patent applications, as well as related products. 

A critical part of the patent application process consists of each person involved in the patent application providing the patent office with any prior art that they are aware of and that they believe to be relevant to the invention claimed in the patent application.

How much will it cost to submit a “utility patent” application?

The cost depends on the complexity of the invention and the volume of prior innovation in the subject area of the invention. The initial cost to draft, review, and file a utility patent application with the U.S. Patent Office (USPTO) generally runs from $5,000 to $15,000. There are, however, cases where it can be more or less.

What steps are involved in the patent application process?

The patent application process begins with the filing of a patent application with the U.S. Patent and Trademark Office. Once the application is filed, the patent is “pending” and in line for examination. A patent examiner will then look at the application and either allow it to become a patent or issue what is referred to as an “office action,” rejecting the application on some legal basis. 

Almost all utility patents initially receive an office action; it is typical for an examiner to issue multiple office actions before a patent is issued. These office actions are a necessary part of the process, as they ensure that the patents that do issue have been thoroughly vetted and compared against all similar inventions that have already been invented and/or patented. 

Once you are through the office action stage, and the examiner approves the application for “allowance,” an issue fee needs to be paid in order for the patent to issue.

For further details on patent applications, please see our chart explaining the process: Learn more>>>

What is the total cost to get a patent?

The total cost to get a patent varies widely, depending on the complexity of the invention and the length of the patent application process. Factors like how many “office actions” are received impact the cost (Please see the explanation in the answer immediately above) and make it unrealistic to set a specific budget until the position the examiner takes with respect to the application becomes apparent. There are, however, some general averages that can be used as guidelines to what the cost will be at each stage of the patent application process:

Stage 1. Application Phase: Preparation and filing of an initial patent application typically varies from $5,000 to $15,000 depending on complexity. For exceedingly complex matters, the cost can sometimes exceed that range. If you file a “provisional patent application” first the total cost goes up, as that provisional application will need to be converted to a “utility patent application” within a one-year period of time; you will incur the cost of filing both the provisional and the utility patent applications.

Stage 2. Post-Filing Phase: This stage begins when the patent application is filed and ends when the first office action is received. During this period, typically from one to three years, there can be some expense incurred from such post-filing matters as recording assignment documents, fixing Patent Office errors, or responding to Patent Office requirements. These post-filing costs are generally between $500 and $1500.

Stage 3. “Office Action” (Examination) Phase: After the patent application is examined, the examiner will provide notice to the applicant about the substance of that review. This notice comes in the form of an “office action” or a “notice of allowance.” If a notice of allowance is received, then the patent application can become a patent by the applicant simply paying an “issue fee.” Prior to the payment of an issue fee, a pre-issuance review is conducted, as once the issue fee is paid further corrections cannot be made to the patent application. The cost of responding to the notice of allowance and conducting the pre-issuance review is typically about $1500, but it can be less if you qualify as a “small entity.”

In the large majority of cases, an office action is issued, which requires a response. The cost to respond to each office action varies widely, depending on complexity, but usually falls within the range of $2,000 to $5,000. 

An average of two to three office actions can be expected, but there may be more or less depending upon how innovative the ideas in the patent application are. 

A second office action is typically termed “final.” However, a final office action does not mean that the patent application process is over; rather, it means that an additional “request for continued examination” (RCE) is needed in order for the examiner to continue reviewing the claims if the applicant’s response to the final office action does not overcome the rejections the examiner made. 

If an RCE is required that adds about $1,000 to the cost of the office action response. Alternatively, any action that is final can be appealed to the Board of Patent Appeals and Interferences (BPAI), which will review the examiner’s determination and rule on the correctness of that determination. The average cost of an appeal brief is $3,000 to $6,000, again depending on complexity.

As you can see, the exact path that any given patent application will take can vary widely; but it is wise to budget an average of $10,000 to $25,000, over the course of two to three years, for the prosecution of each patent application during the Stage 3 Office Action phase.

Stage 4. Patent Maintenance Phase: Once a patent is issued, government maintenance fees are due at 3.5, 7.5, and 11.5 years to keep the patent in good standing. These maintenance fees are set by the U.S. Patent Office and can be paid directly by the patent owner. For more information, please see http://www.uspto.gov/web/offices/ac/qs/ope/fee2009september15.htm#maintain

How am I protected during patent “pendency”?

During the patent application process, any product that is covered by a patent application should be marked with the phrase “patent pending.” This provides notice to potential infringers of your patent right, although until (unless) the patent issues, you have no ability to take legal action against an infringer. 

Nonetheless, once a patent application is published, U.S. patent laws confer a benefit upon the patent owner referred to as a “provisional right.” A provisional right gives the patent owner the right to collect damages from an infringer as of the time the infringer is placed on notice of the patent application publication if certain conditions are met. 

For the patent owner to have this right to collect damages back to the date of notice, the claims of the publication must be substantially identical to claims of the patent that issues. Hence, there are certain cases in which a patent applicant can use the publication of the patent application as a offensive tool against a competitor or potential infringer.

As a entrepreneur, how do I bring my invention to market?

The first step to bring an invention to market is to protect your idea to the fullest extent possible. Getting a patent is generally the best way to protect an innovative idea. If you do have a great idea, your first step should be to get in touch with an experienced patent attorney, who can advise you on how to go about protecting your ideas and can counsel you on how to go about getting your business started. If you are an entrepreneur with a great concept for a profitable business, there are ample resources available to help you launch your new enterprise. To learn how Cotman IP can help you, please see our page for Entrepreneurs: Learn more>>>