Patent Law by Angel Leiva: Forms and Procedures

The United States Patent and Trademark Office (USPTO or Office) is the government agency responsible for examining patent applications and issuing patents. A patent is a type of property right that gives the patent holder the right, for a limited time, to exclude others from making, using, offering to sell, selling, or importing into the United States the subject matter that is within the scope of protection granted by the patent. The USPTO determines whether a patent should be granted in a particular case. However, it is up to the patent holder to enforce his or her own rights if the USPTO does grant a patent. Therefore, it is very important for a patent applicant to exercise due diligence and seek the advice of a U.S. Patent Attorney who has the knowledge and skill required to effectively file and monitor the process, before and after, the filing of a patent application.

http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/nonprovisional-utility-patent.

Important Fees to Consider: 

Patent Search Fees.

1. Utility Search Fee: $600.00
2. Design Search Fee: $120.00
3. Plant Search Fee: $380.00
4. Reissue Search Fee: $600.00

Patent Application Filing Fees.

1. Basic Filing Fee – Utility: $280.00
2. Basic Filing Fee – Design: $180.00
3. Basic Filing Fee – Plant: $180.00
4. Provisional Application Filing Fee: $260.00
5. Surcharge – Late filing fee, search fee, examination fee or oath or declaration, or application filed without at least one claim or by reference: $140.00
6. Surcharge – Late provisional filing fee or cover sheet: $60.00
7. Each independent claim in excess of three: $420.00
8. Each claim in excess of 20: $80.00
9. Multiple dependent claim: $780.00
10. Non-English translation: $140.00

Patent Examination Fees.  

1. Utility Examination Fee: $720.00
2. Design Examination Fee: $460.00
3. Plant Examination Fee: $580.00
4. Reissue Examination Fee: $2,160.00

PCT Fees – International Stage.

1. Transmittal Fee: $240.00
2. Search Fee: $2,080.00

PCT Fees to Foreign Offices.

1. International filing fee (first 30 pages): $1,384.00
2. International search (European Patent Office): $2,125.00
3. Handling Fee: $20.80

The following thirteen (13) steps are required to file for a patent: 

Step 1. Has your invention already been patented? 

• In order to find out, the applicant must conduct a prior art search via the "Patent Full-Text and Full-Page Image Database."
  • If invention has already been patented, applicant cannot apply for a patent. 
  • If not already patented, proceed to step 2. 

Step 2. What type of application are you filing? As mentioned in the introduction, there are three types of patents: 

• Design Patent (ornamental characteristics); or 
• Plant Patent (new variety of asexually reproduced plant); or 
• Utility Patent (most common; useful process, machine, article of manufacture, composition of matter).

Step 3. Determine Filing Strategy. 

• Seeking to file internationally, or domestic?  If the former, refer to section below. If the latter, proceed to step 4. 

Step 4. Choose the type of design/plant/utility patent application to file? 

• Choose a provisional application if seeking to retain rights to a patent claim(s) for a period lasting up to 12-months before filing for a nonprovisional application; or
• Choose a nonprovisional application if seeking to file immediately with the USPTO. 
  • A nonprovisional application is formally referred to as a "transmittal."  

Step 5. Consider expedited examination:  

• Prioritized Examination;
• Accelerated Examination Program;
• First Action Interview; or
• Patent Prosecution Highway

Step 6. Consider "who should file?"

• It is highly recommended to have a U.S. Patent Attorney or Agent file; or 
• Alternatively, the applicant can file and assume all of the risks involved. 

Step 7. Prepare to file electronically. 

• Assess processing fees, and apply for a customer number or digital certificate. 

Step 8. Registered e-filer patent application. 

• Consult EFS website. 

Step 9. USPTO examiner exams patent application. 

• Check application status; and 
• Maintain contact with Office, as necessary. 

Step 10. Applicant may have to reply to requests made by the USPTO office, such as "Notice of Opposition;" and may have to appeal, as necessary.

Step 11. If objections and rejections by the USPTO are overcome, then the USPTO will send a Notice of Allowance and Fee(s) due. 

Step 12. Applicant pays the issue fee and the publication fee, and the USPTO will grant the patent. 

Step 13. Applicant must pay maintenance fees due 3 1/2, 7 1/2, and 11 1/2 years after patent is granted. 

USPTO.

An international patent application requires the same steps to file "domestically;" however, additional steps are required to file internationally, such as filing within the foreign country and/or filing additional forms.

Two methods to obtain priority and file a patent in a foreign country: 

(1) International Priority via Paris Convention, or "Direct Filing":  Signed in 1883, filing through the Paris Convention allows applicants who seek patent protection in a member country to file directly into the jurisdictions that he is seeking patentability, in up to 176 countries, while enjoying the same protections as a National of that country. After an applicant files a "priority application," or better known as a "provisional application," within any member country, the applicant maintains priority to his application for a period of twelve months, to then file a patent "nonprovisional application" in any other member country.  By treaty, the later applications receive effective filing dates that are the same as the original filing date, so long as they were filed within the 12-month period.  In other words, one could file a provisional application in the U.S., and maintain priority over said invention so long as the nonprovisional application is filed within twelve months in any other member country. WIPO; INOVIA; IPHANDBOOK. 

(2) International Priority via Patent Cooperation Treaty (PCT), or "Single Filing":  Signed in 1970, and enforced by the Paris Convention, allows applicants to receive the same rights as in all other PCT member countries through a single international patent application; where an applicant may seek protection for an invention in up to 148 countries.  Upon the granting of a patent via PCT, the national or regional Office of a member country grants protection over the applicant's invention. Similar to the Paris Convention, an applicant can file a "provisional application" within the U.S., or any other member country, and maintain priority for a period of twelve months. However, a PCT request form must be filled out prior to entering the "National Phase," which would then allow an inventor to obtain patentability in several member countries via a single filing system on a member-fee basis.  WIPO.  

Paris Convention versus PCT:

The advantage of filing directly is that many countries, most notably Argentina and Taiwan, are not members of the PCT, and therefore require direct filing.  Although the PCT may be more affordable when filing into several foreign countries, the price of filing a PCT application alone is around $5,000, or more per country, and hence, it may be more cost effective to file directly when filing into 3 or fewer countries. On the other hand, it is recommended to file a PCT application when seeking patent protection in four or more member countries. Further, filing directly via the Paris Convention involves fewer steps than filing via PCT because the former allows an applicant to directly file in the member country within 12 months of the application's priority date; while the latter, in addition to filing within 12 months of the priority date, requires an additional "national stage" that may last up to 23 months. INOVIA.

WIPO.