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[michael_e]

Having just joined this forum, I would just like to say that I have found this reading very informative, but am a little confused as to the actual sequence of events surrounding applying for and eventually being awarded a patent. Would it be possible for some of the experienced folks on  this forum to lay out a typical timeline, showing an average sequence of events, the length of time to expect for each one  and the percentage of the total costs associated with each event, leading to a patent being awarded ?  Adding any helpful tips about what NOT to do at any particular step would also be very helpful. Thanks for your consideration !


Michael E.

[Jonathan]

Your question is pretty general and can't be answered without being general. However, I will attempt to answer by giving an electrical engineering-type invention filed in the US. Of course, do realize that even this example is subjective. I will also leave it you to do the percentages.

Preparation of patent application: $8-10k attny fees + $500-$1000 in filing fees, 1-2 months prep time.

Time until first Office Action is received: 2-3 years

Preparation of response: 3 months, $1-3k

Time to receive next Office Action or Notice of Allowance: 3 to 6 months

Preparation of response if a 2nd Office Action is received: 2 -3 months, $1-3k

Receive Notice of Allowance (hopefully): $700-1400 for the Issue Fee, $500-$1000 in attorneys fees.

Time for patent to issue after issue fee payment is submitted: 3-6 months

Maintenance fees due 3, 7 and 11 years after the patent issues: $450-$900, $1150-$2300 and $1900-$3800 + attorney fees for each payment - probably a few hundred dollars per payment.

[JimIvey]

Jonathan's correct.  I'll just expand a bit on the "hopefully" note after the second Office Action.

You can get more than just two Office Actions, so you can budget accordingly.

A second Office Action is quite often made "final".  At that point, your options are limited.  You can appeal, file a Request for Continued Examination (RCE), or abandon the case.  There are other avenues, but one finds oneself limited to these three most of the time.

Appeal can cost $3-5k or more in filing the Notice, the Appeal Brief, and a Reply Brief.  The appeal can take 5 years or more, although I've recently heard that backlog has been reduced dramatically down to about 2 years.  The result of the appeal can be allowance, rejection on the grounds asserted by the examiner in the second Office Action, or new grounds for rejection -- and each can apply to each claim independently of the others.  So, your case can get split up and you might find yourself back in regular examination again, repeating the whole process.

RCE costs about one basic filing fee and about an hour of attorney time.  In addition, the RCE should be accompanied by a response to the second Office Action, another $1-3k.

I think you'll note a bit of circularity in the process, meaning that you can see loops in the process -- e.g., Office Action, response, final Office Action, RCE/response, Office Action, response, etc.  Hopefully, care is taken to make the process end at some point.  I believe someone somewhere on the web has a patent prosecution flowchart.  You might search for that with your favorite web search tool.

You had asked about pitfalls to avoid at each step of the way.  Unfortunately, that is a topic that could easily fill a book or two.  It may sound self-serving, but the only way I can think of to avoid the vast majority of the pitfalls is to hire someone who's done this full time for the past several years and who learns from their mistakes -- i.e., hire a good patent practitioner.  You might try a book like Patent It Yourself, but there's no guarantee that the book will include all potential pitfalls or that simply reading the book will make you skilled in recognizing the pitfalls as you do your own work.

I hope that helps.

[Wiscagent]

One point in the timeline not yet mentioned is publication of the patent application.  Normally the patent application publishes 18 months after it is filed.  

If someone infringes* a claim of the application and subsequently the patent is granted with that claim substantially as published in the application, then the owner of the patent can sue for damages effective as of the date the application published.

In other words, under some circumstances the publication of the patent application can offer some protection for the applicant.

*The use of the word "infringes" is not technically correct.  In the scenario outlined the patent has not yet granted, so the claim can not be infringed.  It would be more correct (and more confusing) to write "if the claim reads upon the item being manufactured, sold, or imported or the process being practiced."


Richard Tanzer

[Jonathan]

Has there been any case law on this yet? That is, has anyone sued on published claims?

[michael_e]

Thank you all for your comments.  The basic idea that I'm getting from these comments is that a person should be very sure of the ability of an invention to be patentable prior to even entertaining the notion of attempting this.  Because of this the search for "prior art" would seem to be of paramount concern in the intial phase of developing a patent application.   In order to limit the cost of this first phase of developing a patent application I would assume that as thorough a search as possible be performed for "prior art" and that this search would only be a minor fraction of the total cost of this initial phase.

I guess that what I'm getting at here is whether the up front costs of applying for a patent are actually split at particular decision points, such as that of finding "prior art" , or whether the largest costs of applying are really just accepted as an up front,  lump sum risk.  I'm not much of a gambler and it would be much easier to pay the costs,  if the initial application process had particular points at which it could be terminated,  if the outcome of the entire process was not inspiring more confidence in success as the costs were increasing.

So, a further question here would be, " Can a rough breakdown be made of that initial $8K - $10K cost in atttorney fees, into steps that would inspire greater confidence in success as the cost goes up ?"

Thanks in advance for any further insight that any of you would be willing to provide.


Michael E.

[Jonathan]

Searching for prior art: Performing a thorough prior art search and having the cost of that search be a small part/cost of producing the application are kind of at odds with each other. Even when a thorough search is performed, there is always a likelihood that something was missed due to the numerous databases of prior art. I am not saying a prior art search is not without its merits, one just needs to recognize the limitations.

Cutting-off points: I would suggest that you get a recommendation from someone you trust on a patent attorney. Also be sure they are experienced in the particular technology and has been a patent attorney for awhile (at least 5 years, preferably 10+). By doing so, you will have gone a long way to ensure that you will receive a quality work product. I think it is kind of impractical to ask a patent practitioner to divvy up their workflow on what is considered a singular event of writing up a patent application - just my opinion.

You can also certainly impose a fee-cap such that your attny knows to stop work on the application once your upper limit is reached. A fee-cap would also hopefully get the attny to alert you early on if it turns out that the application can't be written for the initial cost estimate.