Frequently Asked Questions (FAQ)
Some frequently asked questions about the business and technical aspects of the patent application process are answered below
Business related FAQ
- How long does it take to write a patent application?
- How far along do the inventions need to be?
- How do I protect my invention for the least cost?
- What are your rates, and how do you bill?
- Can you handle emergency (rush) patent applications?
FAQ about writing patents
- Why should I care about PTO “35 USC 112” rejections?
- Why should I consider “KSR v Teleflex” for obviousness?
- How does the “Alice” decision impact software patents?
Starting from scratch (i.e. from a “back of the envelope” concept), regular (utility) patent applications typically take about 20-30 hours to write. Simpler patent applications tend to take closer to 20 hours, while complex patent applications can take closer to 30 hours or even more. Costs can be reduced by providing an initial write-up. One exception is when a single “application” really is a series of patent applications. In this case, the time needed for the series can be greater.
One way to save money up-front is to consider filing a provisional patent application. I often recommend spending about half the time on a provisional as might be spent on a regular (non-provisional) patent application. Note, however, that you will have to follow-up with a regular (non-provisional) patent within a year.
Design patents are relatively inexpensive, and typically only take about 6-8 hours of my time to do.
Although I do not give “volume discounts”, when I’m given a series of related patents, I can try to reuse (or share) some of the text and drawings between patents. When this happens, the number of hours needed per patent can be less.
There is no legal requirement for a working prototype, however the more details you have, the better. I have done quite a few successful patent applications based on just an hour’s conversation and a few informal sketches or photographs. Here I bring a lot to the table because I can draw upon my extensive technology experience to supply the necessary background and fill in gaps. If I see problems (e.g. the concept looks like something old rather than something new, or there are too many missing details), I will tell you so, and we can try to adjust accordingly.
The best way to reduce costs is by doing a lot of work yourself beforehand. Some good guidelines can be found here. See the article by Gene Quinn entitled: “Patent Reality: Basement Prices Mean Basement Quality“.
Even if you have almost no budget at all, you can still get at least some protection for up to a year by doing the best you can at writing up the invention, and then engaging me to file this write-up for you on an as-is basis. This is very inexpensive, since this usually only takes me about an hour to do. The main risks are that if you do not provide enough detail, the patent office may later determine that your provisional application did not give them enough information. If this happens, you could lose the benefit of your provisional filing date, and possibly your invention itself.
I can often give a relatively firm total amount once I understand the scope of the project. However, in the event that we go substantially overtime, I reserve the right to first warn about the overtime and then charge extra if we can’t wrap things up soon thereafter.
I typically request 50% of the projected writing fee up front, with the remaining 50% (plus patent filing fees and any artists fees) due right before submission.
Yes, I usually can. Patent attorneys often get a lot of frantic, last minute, requests!
A “35 USC 112” rejection is patent-speak for patent claims that are too vague or ambiguous. The USPTO requires that: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention“.
Patent examiners determine if you have met this requirement. They are intelligent non-experts, usually with undergraduate degrees in physical science, engineering, or the biological sciences. Their goal is to read your patent quickly, and find a plausible reason to reject it. They see a lot of poorly written patents, and tend to be very skeptical. To prevent problems, your patent application should provide an adequate background, clearly define terms, and explain the material in a manner that can be quickly understood by an intelligent non-expert.
KSR v Teleflex is the name of a 2007 Supreme Court decision which ruled that determinations of obviousness (35 USC 103) should not be made in a “narrow, rigid manner” because a “person of ordinary skill is also a person of ordinary creativity, not an automaton“. In practice, this decision has had some unintended consequences. Many inventions look obvious in hindsight, and unfortunately KSR v Teleflex has removed some of the earlier protections against such hindsight bias. This increases the burden on applicants to prove (to the examiner) that their invention is not obvious in the light of prior art.
An article by Mandel discusses this problem in depth. Here, issues of examiner psychology and “trust” should be considered. If you were an examiner, which application would you be more favorably disposed towards:?
1) an application that simply gives the invention and doesn’t cite much (if any) prior art, leaving the examiner in the dark as to what is new and what is old; or
2) an application that clearly explains the invention in the context of prior art, and shows how the invention solves problems not addressed by prior art.
The 2014 “Alice Corp v. CLS Bank International” case was about several financial-trading software patents for escrow services. The patents were clearly bad, but the Supreme Court decision in the case was almost incoherent.
A WIPO (European) analysis of “Alice”, including an amusing and informative cartoon summary of the various issues, can be seen at: https://www.wipo.int/wipo_magazine/en/2014/04/article_0004.htm
Given the underlying incoherence of the ruling, the net effect has been to add a bit of a “random element” to the patent process. As a rule of thumb, it is good to avoid adding certain “trigger” words to patent claims (particularly financial terms). It is also good to give specific examples whenever possible.
For additional discussion and answers to other patent and IP FAQ, see my blog.