Frequently Asked Questions

• How can I protect my work?
• What are the differences between patents, trademarks, copyrights, and trade secrets?
• What are the different kinds of patents?
• What is involved in obtaining a patent?
• What is a provisional patent application and should I file one?
• Should I do a literature and/or patent search for my invention?
• How long does it take to get a patent issued?
• How much does it cost to get a patent issued?
• What can I do if I find out someone else has applied for a trade mark similar to my business name?
• How can I file a foreign patent application?

How can I protect my work? 
What are the differences between patents, trademarks, copyrights, and trade secrets?

The following table summarizes some basic information about different types of intellectual property
and how they can be protected.

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What are the different kinds of patents?

In the United States, four types of patents or patent-like protection are available: utility, design, asexually reproduced plants, and sexually reproduced plants.

Utility patents provide protection for new and useful processes, machines, manufactures, compositions of matter, and for new and useful improvements of these things.  Most of the patents that issue are utility patents.

Design patents provide protection for new, original, and ornamental designs of articles of manufacture.  They do not protect the utilitarian aspects of the articles.  For example, you might formulate a new type of pasta that has the shape of your traditional family crest.  A design patent would allow you to prevent others from making pasta in the shape of your family crest.  It would not allow you to prevent someone else from using your pasta recipe. 

Plant patents provide protection for asexually reproduced plants.

Patent-like protection is also available for novel varieties of sexually reproduced plants under the Plant Variety Protection Act.

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What is involved in obtaining a patent?

First, an application is written and filed with the U.S. Patent and Trademark Office.  The application must describe the invention in sufficient detail that someone who works in the technical field will be able to make and use the invention.  After the application is filed, it eventually is examined by a patent examiner who then sends written comments, called an office action, back to the inventor, attorney, or agent who filed the application.  Based on the contents of the office action, the application may be amended, arguments may be presented to the examiner, or both.  There are usually one or two rounds of office actions and responses.  If the examiner finds the application acceptable, it is then allowed to issue as a patent.  If the examiner doesn’t find the application acceptable, several options are available, including filing a new application, appealing the examiner’s decision, and giving up on obtaining a patent for the invention.  The client decides how to proceed at each step. 

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What is a provisional patent application and should I file one?

A provisional application is a patent application that is filed to obtain a filing date that can be used to establish priority for a subsequent U.S. or foreign application that is filed within one year of the provisional application filing date.  The provisional application is checked at the Patent and Trademark Office for completeness and not looked at further.  The provisional application will never issue as a patent.  The filing fee for a provisional application is significantly less than the filing fee for a “regular” utility application.  However, most of the cost of an application is for attorney fees, and not the U.S. Patent and Trademark Office filing fee, and the percentage of the savings is small. 

Provisional applications have been widely advocated as a quick and inexpensive way to get a patent application filed with the U.S. Patent and Trademark Office.  However, to obtain the benefit of the provisional application filing date, the application must meet the statutory requirements for a patent application, including a description of the invention in sufficient detail to enable someone who works in the field to make and use the invention.  While some attorney time may be saved by submitting a fairly rough document that does not have the normal organization and formatting of a patent application, it is still critical that the document contains an adequate description of the invention.  Information that is not included in the provisional application but is incorporated into a subsequent non-provisional application will not be given the benefit of the provisional filing date.  We are aware of at least one court case in which the applicants were not given the benefit of the provisional application filing date because the provisional application did not include an adequate description of the invention. 

We do not advocate the use of a provisional application as a “quick and dirty” way to get a filing date.  There are circumstances in which it is desirable to file a provisional application, but the guiding motivation should not be simply to file an application cheaply.  We believe that quickly prepared, incomplete provisional applications do not usually serve our clients’ long-term interests. 

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Should I do a literature and/or patent search for my invention?

There is no obligation to do any research relating to an invention, either prior to filing a patent application or after filing the application.  However, it usually is a good idea to do some research.  The information obtained probably will help you make good technical and business decisions.  Also, if you decide to file a patent application for your invention, the information helps a patent attorney to characterize the novel aspects of your invention and draft a more effective application which distinguishes your invention from whatever else was done previously. 

If you file a non-provisional application, you and your attorney must disclose to the patent examiner any references you know about that would reasonably be material to examination of the patent application. 

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How long does it take to get a patent issued?

Obtaining a patent is not a quick procedure, and there is no guarantee that a patent will issue from an application.  After an application is filed with the U.S. Patent and Trademark Office, it usually takes at least one year and often two years or longer to obtain an issued patent, assuming the patent examiner finds the claims in the application to be patentable.

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How much does it cost to get a patent issued?

The major costs associated with obtaining an issue patent are attorney fees for preparing the application and handling communications with the Patent and Trademark Office, as well as filing and issue fees charged by the Patent and Trademark Office.  There may also be fees charged by a draftsman for professional preparation of drawings.  The attorney fees depend upon the amount of work necessary to prepare the application and respond to comments received from the patent examiner at thePatent and Trademark Office and on the level of cooperation of the client.

Marian J. Furst, Attorney at Law, endeavors to provide cost-effective, quality legal services. We are happy to quote expected fees for each project, and we often work on a flat fee basis. Fees for preparation of a patent application are generally at least $3000, and fees for responding to office actions from the Patent and Trademark Office are generally between $700 and $1500, depending on the amount of work required to prepare the response. Attorney fees may be much higher.

The minimum U.S. Patent and Trademark Office fees are currently $500.00 for filing an application and $700.00 for issue of an application, for an individual, non-profit organization, or small company. Large companies must pay double these amounts. In addition, there may be a $300 publication fee.

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What can I do if I find out someone else has applied for a trade mark similar to my business name?

If the trademark application is still pending before the U.S. Patent and Trademark Office, there are two possible procedures.  First, one can submit a letter of protest to the Patent and Trademark Office.  A letter of protest can be sent prior to publication of the mark, hopefully stopping prosecution of the mark before it ever gets to publication.  The protest letter provides information that the sender believes is relevant to the registerability of the mark.  If the person who reviews it thinks the arguments and evidence have merit, he/she then passes information about it on to the examining attorney.

If the mark has been published, one can file a Trademark Opposition, which is a more formal adversarial procedure for challenging registrtion of the mark.

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How can I file a foreign patent application?

There are two routes you can follow to obtain foreign patent protection. In general, you may file within one year of your US filing date and avoid novelty issues based on your US filing date.

You can file an international application under the Patent Cooperation Treaty (PCT), which many but not all nations have signed. A PCT application does not lead directly to any issued patents, but it does extend the time before significant foreign filing fees must be paid. At 30 or 31 months after your initial filing date, depending on the country, you must file an application in each of the specific countries or regional groups of countries where you want protection. Our office can file and handle PCT applications. The minimum fee for a PCT application is about $1800

You can file directly in one or more foreign countries or regional patent offices, such as the European Patent Office. For each foreign application, you will need a foreign associate who is licensed or registered to practice in that country or region. We can help you find appropriate foreign associates. Foreign filing fees vary, as do the translation and legal fees charged by the foreign associates.

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