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FREQUENTLY
ASKED
QUESTIONS

How can I determine if our company qualifies for small entity or micro entity discounted USPTO government fees?

7/18/2017

 
Companies smaller than 500 employees may qualify for at least small entity status, and some small entities may further qualify for microentity status.  The USPTO provides a form to allow a user to certify their entity status, which entitles the entity to discounted government fees when so certified. Generally, small entities are any company with less than 500 employees, and microentities are small entities that meet further, even more stringent requirements, as noted below.
To qualify as a micro entity, an applicant must meet all of the following criteria:
  • - Qualify as a USPTO-defined small entity.
  • - Not be named on more than four previously filed applications.*
  • - Not have a gross income more than three times the median household income in the previous year from when the fee(s) is paid. For 2011, the most recent year that data is available, the median income was $50,054.
  • - Not be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor.
Source:  See quote from the USPTO Publication from 2011.

What are the requirements for Patentability?

7/16/2017

 
Title 35 of the US Code sets forth the requirements for patentability, including, e.g.,:
  1. Section 101 - Utility - must be useful, and since Mayo and Alice, must be found to claim significantly more than an Abstract Idea
  2. Section 102 - Novelty - the combination of elements of the broadest claim must not have been previously disclosed, taught or be anticipated
  3. Section 103 - NonObviousness - there should not have been a teaching or a motivation to combine or have been obvious to a Person Having Ordinary Skill in the Art (PHOSITA) to provide the claimed invention
  4. Section 112 - Disclosure - to protect a patent claim, the inventor must make open (patent) their innovation by providing the following disclosure:
  • 112(a), formerly 112, 1st paragraph
  1. Written Description - detailing the claimed invention so as not to require undue experimentation
  2. Enable a Person Having Ordinary Skill in the Art (PHOSITA) to Make & Use the Invention
  3. Disclose Best Mode contemplated by the Inventor at time of filing
  • 112(b), formerly 112, 2nd paragraph - Claim with Clarity and Definiteness
  • 112(f), formerly 112, 6th paragraph - Means Plus Function Claims - Allows claim a means or step for performing function, read narrowly to disclosed structure and equivalents thereof.

How can I search my idea for Patentability?

7/16/2017

 
Various patent search engines exist allowing keyword searching of claimed elements, including, e.g.,:
  1. USPTO Patent Search - http://patft.uspto.gov/ - Patent Full-Text Databases (from 1976)
  2. Google Patents - https://www.google.com/?tbm=pts - Natural Language Patent Search
  3. European Patent Office Patent Search - https://worldwide.espacenet.com/ - database of over 95 million patents
  4. World Intellectual Property Office Patentscope Search - https://patentscope.wipo.int/search/en/search.jsf - Search of all 3.2 million Patent Cooperation Treaty (PCT) published international patent applications (WO) and 65 million patent documents
  5. Japan Patent Office Patent Search - Japan Platform for Patent Information (J-PlatPat) - Search Patents, Utility Models, Designs, Trademarks https://www.j-platpat.inpit.go.jp/web/all/top/BTmTopEnglishPage
  6. SIPO - State Intellectual Property Office of the P.R.China - http://211.157.104.77:8080/sipo_EN/search/tabSearch.do?method=init 

What are the parts of a utility patent application?

7/16/2017

 
There are several parts of a utility patent application
  1. Claims - these come last, but are the most important part of the application, setting forth the "metes & bounds" of the property right, every word has weight and meaning and creates elements or features of the claimed invention; independent claims do not refer to any other claim and thus are broadest in scope of protection; dependent claims refer to another claim and add or modify more narrowly features and elements thus narrowing the scope of the claim from which the dependent claim depends.  A claim is written in a sentence form, begins with A) a preamble, which should not limit the breadth of the claim unless "breathing life and meaning into the claim", B) a transitional phrase, linking words such as, open lists of "comprising" or "comprising at least one of" meaning "including, but not limited to," or closed lists of "consisting of" meaning "including only," or semi-closed lists of elements of "consisting essentially of" meaning "including substantially only", C) a body of claim elements, where each element is first introduced with the indefinite article "a" and when referred to again is done so by use of the definite article "said", while if referring to something from the preamble, or to something not an element of the invention, by the definite article "the". In the case of computer related inventions you can often have an apparatus or system claim, a method or process claim, and a computer program product or so-called "Beauregard-type" claim.
  2. Drawing Figures - "Pictures are worth a thousand words" and thus can be used to efficiently tell a story, first from a high level, then perhaps in greater detail "peeling back the layers of the onion." Drawings are normally merely black and white line drawings, color is discouraged. Fonts no smaller than 8 point, preferably 12-14 point Arial Narrow, All Capitals can be used in drawings. Drawings are numbered consecutively numerically, such as, e.g., FIG. 1, FIG. 2, FIG. 3A, FIG. 3B, and FIG. 4. Drawing elements for a FIG.1 can be labeled, numbered numerically such as, e.g., 100, 102, 104, 106a, 106b, 106c, 108, 110, and for FIG. 2 can be numbered 200, 202, 204, 206, 208a, 208b, 208c, and 210, etc.  Odd numbered element labels can be later inserted.
  3. Title - a short descriptive title, this has no effect on claim scope.
  4. Field of Disclosure - the environment of the invention, must not mention the invention though, as part of the Background, which is considered part of Applicant's admitted prior art.
  5. Related Art/Background - can discuss conventional technologies, shortcomings of conventional solutions, must not mention the invention though, as part of the Background, which is considered part of Applicant's admitted prior art.
  6. Summary of the Disclosure - can provide a summarized version of the claims normally written in plain English rather than the legalese used in claims.
  7. Brief Description of the Drawing Figures - provides a summarized list of the drawing figures.
  8. Detailed Description of the Drawing Figures - provides a detailed figure by figure, element by element written description of each of the drawings and claimed subject matter, serving to define the terms included in the claims. Each drawing elements label can be defined similar to a parts list. Consistency of description is important. Inclusion of mechanical, structural support for functional language is important, e.g., a computer processor should be described, not just a step of processing.
  9. Abstract of the Disclosure - a short paragraph description of the claimed subject matter, this has no effect on claim scope, but often mirrors the breadth of the broadest independent claim and perhaps a few other optional features of important dependent claims.

What does it cost to file a NonProvisional Patent Application?

7/16/2017

 
​The cost of preparing and filing a NonProvisional Patent Application (NPPA) can vary widely from only the cost of filing a previously prepared application and the US government filing, search and exam fees for a ready to file application, up to the costs of preparing/drafting a full NonProvisional Patent Application (NPPA) including Drawing Figures, Background, Field of the Disclosure, Summary of the Disclosure, Brief Description of Drawings, Detailed Description, Claims, and Abstract. These preparation costs can often cost in the range of $5,000-20,000, depending on the complexity of the invention, and upon how many embodiments are disclosed and claimed.  The government filing, search and exam fees, are often in the range of $500-1,500 (depending on the number of employees of the client entity), and can be found here - Link to USPTO Fee Schedule, updated July 1, 2017.

What does it cost to file a Provisional Patent Application?

7/16/2017

 
​The cost of preparing and filing a Provisional Patent Application (PvPA) can vary widely from only the cost of preparing a coversheet and the US government filing fees for a so-called bare-bones provisional, less than $1,000, and up to the costs of a full NonProvisional Patent Application (NPPA), i.e., $5,000-20,000.  The government filing fees depend on the size of the client entity (i.e., number of employees) filing the application, and can be found here - Link to USPTO Fee Schedule, updated July 1, 2017.

    Author

    Ralph P. Albrecht is a Partner with ATFirm PLLC. Please understand answers provided are of a general nature, cost estimates are merely estimates, and are subject to change without notice, and the information provided is not intended as legal advice, your results may vary.  Views expressed are those of the author only, except as otherwise noted. Please see other Disclaimers below.

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