FILING A PATENT
What – Why – How – Who
WHAT can be patented?
■ New and Useful
■ Process, Machine, Method, Composition,
Design
■ Not phrases, slogans, symbols, logos
(trademark)
■ Not text, art, video (copyright)
■ Not natural substances or phenomena
Patent Search
■ Attorney or Google
■ Search the text of your Claims in Google
Patent
■ Reference similar patents in your
application
Provisional
■ Provisional
– Placeholder that starts patent protection.
– No specific format. Could be your thesis.
– Lasts for one year
■ Nonprovisional
– Full filing.
– Strict formatting requirements.
– Lasts 20 years
WHY get one?
■ Pros
– Exclusive rights
– Resume
■ Cons
– Public
– 20 year limit
– $$
■ Patent/Trade secret
WHAT does it cost?
■ $130 for Provisional Patent Application
■ $800 – 1300 for Nonprovisional Patent
Application
■ Attorney?
■ Patent search?
■ Professional Drawings?
Attorney Fees
Courtesy of ipwatchdog.com
Filing Fees
■ Application Filing Fees
Large Entity
Small Entity
Micro Entity
■ Provisional Filing Fee
$260
$130
$65
■ Utility Filing Fee (Non-Provisional)
$1,600
$730
$400
■ Design Filing Fee
$760
$380
$190
■ Reissue Filing Fee
$3,040
$1,520
$760
More Filing Fees
■
Additional Filing Fees
Large Entity
Small Entity
Micro Entity
■
Claims in Excess of 20 (Per Extra Claim)
$80
$40
$20
■
Independent Claims in Excess of 3
$420
$210
$105
■
Petition to Make Special
$140
$70
$35
■
Accelerated Examination
$140
$70
$35
■
Prioritized Examination
$4,000
$2,000
$1,000
■
Publication Fee - Early, Voluntary or Normal
$300
$300
$300
■
Other Publication Processing Fee
$130
$130
$130
■
Surcharge for Late Filing of Fee or Oath
$140
$70
$35
Filing Fees
Patent Issue Fees
Large Entity
Small Entity
Micro Entity
■
Utility Issue Fee
$960
$480
$240
■
Design Issue Fee
$560
$280
$140
■
Reissue Issue Fee
$960
$480
$240
■
Patent Maintenance Fees (If Timely Paid).
■
1st Maintenance Fee (3.5 Years)
$1,600
$800
$400
■
2nd Maintenance Fee (7.5 Years)
$3,600
$1,800
$900
■
3rd Maintenance Fee (11.5 Years)
$7,400
$3,700
$1,850
HOW to pay for it
■ U of A can help you file and will pay for it
■ Your company
■ The person who pays for it usually owns
the rights to it
■ Inventor ≠ Owner (Assignee)
Patent Contents
■ Background of the Invention
■ Brief Summary of the Invention
■ Brief Description of the Drawings
■ Detailed Description of the Invention
■ Claim or Claims
HOW to Write Your Claims
■ Specific enough to differentiate from prior
art.
■ Inclusive enough to cover multiple
embodiments of the concept.
Text Format Requirements
■ Strict requirements
– Numbered paragraphs
Drawing Format Requirements
■ Simple line drawings that can
be easily photographed
– Line weights
– Shading
■ Not Technical Drawings
■ Black and white (unless color is part of the innovation)
■ Light rays shown with dashed lines where dash length can
indicate frequency of light.
WHO are Inventors?
■ Patents are different than journal articles!
■ “An inventor must have contributed to the
conception of the invention and to at least
one claim on the issued patent.”
■ Name order does not matter.