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How to Get, Use and Defend a Patent

… what every lawyer should know

Patent article written by the Patent Guys, Arthur Peslak. Esq. and Richard Malagiere, Esq. for the Bergen County Bar Association Intellectual Property Committee

How to GetUseAndDefendAPatnet
In this, our first edition, we’ll offer a brief introduction to the following: (i) the First-Inventor-To-File Patent System currently in use by The United States Patent and Trademark Office (“USPTO”); (ii) The importance of Provisional (abridged) Patent Applications; (iii) The various fee reductions available to “Small” and “Micro” entities at the USPTO; (iv) The time it takes to get a patent and accelerated examination programs available at the USPTO and (v) The Patent Truth…some fun patent facts.

I. PATENTS– First to File wins the day

As of March 16, 2013, the United States is a first-inventor-to-file patent system. This means that a challenge of a patent or pending patent application by someone who claims to have invented it first, but not yet filed a patent application or filed it after your client filed will not carry the day.

Why is this important: Because it is critical that you get your client into the patent office with a patent application as soon as possible. It is no longer acceptable to tell your clients who come to you with potential patents that you will try and find someone who does patent work and wait and see what comes up. Instead, you have to advise your clients that, if they are serious about their idea, they need to get to a patent practitioner as soon as possible or run the risk of forfeiting their potential intellectual property rights.

II. Provisional Applications are the way to go

The United States Patent Office provides a less expensive “place holder” mechanism called a Provisional Patent application which serves two important purposes in light of the current first-inventor-to-file patent system.

First, it allows a patent applicant to get into the patent office quickly with an abridged version of their complete patent application that serves as a place holder for one year from filing and preserves the patent applicant’s first-to-invent priority; Second, because a provisional is a place holder it is not submitted to examination by the patent office and therefore the cost to generate and the filing fees associated with provisional applications are much lower than the costs and fees associated with a full blown patent application in the form of a Non-Provisional Patent application.

This model of filing the preliminary abridged application and then the more complete final application will put your client in good company. Apparently, the largest users of provisional patent applications have some “star power”, they include: Qualcomm, LG, Broadcom, Marvell, Google, Apple, Samsung, Univ. of California and Texas Instruments. See Patently-O Blog Professor Dennis Crouch, February 4, 2014 Edition.

III. What kind of filing fees are associated with a patent application

Well, like the response to most questions in the legal business, the answer is, it depends. There are dozens of fees that range from a few dollars to thousands of dollars depending upon what is being requested. There are, however, some substantial fee discounts available designed to encourage the filing of patent applications by “Small” or “Micro” entities. If the inventor qualifies as a “Small Entity” which means an independent inventor, a small business (less than 500 employees), or a nonprofit organization the filing fee, maintenance fees and certain other fees are reduced by half. Further, if the inventor qualifies as a “Micro Entity” most patent office fees are reduced by 75%. A “Micro Entity” is defined as an entity that first qualifies as a “Small Entity” and further meets the following criteria: (i) has not be named as an inventor on more than 4 previously filed patent applications; (ii) gross income does not exceed 3 times the median household income and (iii) has not assigned the invention to an entity which has gross income exceeding 3 times the median household income. By way of example, the filing fee for a utility patent application is $280.00, the search fee is $600.00, the examination fee is $720.00 and the fee is $960.00, for a total of $2,560.00. For a ‘Micro Entity” filing, these fees would be, respectively: $70.00, $150.00, $180.00 and $240.00, for a total of $640.00.

IV. How long will it take to obtain a patent after an application is filed.

The answer to this question is that the time varies depending upon the type of patent and the technology involved.  A simple design patent application (deals with outward appearance of the item, e.g., belt buckle, shoe, hood ornament) is normally issued within twelve months of filing.  Utility patent applications (e.g., ratchet mechanism, prosthetic limb mechanism), involving complicated technologies generally can take three years or more to be issued. There are several provisions in the Patent Office Rules for shortening the application process.  First, the Patent Office recently initiated a fee-based priority system.  If the applicant pays an additional filing fee, the USPTO will accelerate a utility application with the goal of completing the examination process within twelve months.  The filing fee currently ranges from $1,000.00 to $4,000.00 depending upon the size of the company.  Second, there are several reasons that the USPTO will accelerate the examination of an application without the payment of a fee.  One reason to accelerate is because of the applicant’s advanced age or poor health.  Other reasons for acceleration are inventions that enhance environmental quality, contribute to the development or conservation of energy resources, or contribute to countering terrorism.  These factors should be considered when deciding whether to file a patent application.

V. The patent truth, did you know….

Nikola Tesla, credited with patenting, among many other things, an alternating current supply system that included a motor, transformer and 3-phase electricity (same concept today) is also credited with inventing the modern radio as well since the United States Supreme Court overturned Guglielmo Marconi’s patent in 1943 in favor of Tesla’s earlier patents. When Tesla was confronted by a colleague who observed “looks like Marconi got the jump on you” regarding Marconi’s radio system, Tesla replied “Marconi is a good fellow, let him continue. He is using seventeen of my patents.”


Please contact us with questions or comments … the Patent Guys

Arthur M. Peslak, Esq. Registered Patent Attorney
Richard Malagiere, Esq. Registered Patent Attorney

The Patent Guys are attorneys in the Intellectual Property Practice Group of the law firm of Gertner Mandel LLC providing legal support for legal, technical & business issues.