Last week, we discussed the pros and cons of doing your own patent search and what goes into the different parts of a patent application. This week, let’s get into the journey a patent application makes once it is filed.
How fast do you want a patent? The slow road, the main road, and the highway.
Once your application is drawn up, we begin the long hike up patent mountain in earnest. We can take three different paths. The path chosen will determine how quickly your patent application is evaluated (or “examined” in patent speak) by the patent office, which ultimately determines how quickly your patent issues. If you know a little about patent law, this post may be very boring to you and you may be thinking “why does it matter how quickly my patent issues? Don’t patents last for 20-21 years from the date I file?” Yes, yes they do, but there are several reasons why you may want to consider clawing your way to patent issuance with haste.
First, with a notable, narrow exception, a patent application has no legal force until it is issued. That is, if someone copies your invention, you can’t do anything about it until your patent issues! Second, compared to issued patents, patent applications–even awesomely written ones–are significantly more difficult to license, sell, or otherwise monetize. Finally, an issued patent may cover less of your business than the patent application and the earlier you know that, the sooner you can explore additional options to protect your company such as licensing, additional patent protection, and the like.
On the other hand, there are very compelling reasons to take a more sedate path to patent issuance. If your invention will not be ready to enter the market for a few years, immediate patent protection may have little value to you if no one knows of your invention and it is simply being refined in your lab. This may be the case if your invention is, say, a cancer fighting drug, which you believe will have extraordinary value for decades after it hits the market, but still needs to go through a lengthy FDA approval process.
The most commonly used filing path—the main road—is the traditional non-provisional filing. For most emerging companies, the fee is currently $625. The main road is a slow road—the average time to patent issuance is 33 months! There is hope however; the patent office is making great strides to clear their backlog. The patent office estimates that applications filed today will get through in almost a third less time. Still, that’s more than a year later!
If waiting two or three years seems like forever, there is a highway to patent issuance: TrackOne Examination! For a fee of $2,400, the patent office will fast track your application, aiming to complete examination within 12 months! In some circumstances, like where an inventor is over 65, an application may be fast tracked free of charge, as well!
Finally, there is the slow road: filing a provisional application first. Provisional applications do not require claims to be filed with the patent office and are never examined. Instead, you have one year to convert the provisional application into a non-provisional, then the examination clock starts running. In some cases, a converted provisional application will not be examined for more than four years after the provisional was filed! On the other hand, the initial filing fee is only $125, drafting a provisional application is cheaper than a full patent application, and you as the inventor have up to a year to test market/develop your invention and decide if it is worth further investment!
Office Actions—they’re a rite of passage not a setback
Between 3 and 23+ months (depending on which path you chose) after your non-provisional patent application is filed, a patent examiner takes up your application. The patent examiner studies your application and the relevant technology areas and writes an Office Action. An Office Action contains an initial determination of your invention’s patent eligibility. For a variety of reasons, including the examiners being incentivized to reject every application at least once, something like 90-95% of patent applications are rejected at least once, therefore Office Actions are more like a rite of passage, instead of a setback. At this point, you, as the inventor (and your patent counsel), have 3 months to respond to the Office Action and argue for why your patent application should be allowed to issue as a patent! If you would like to take more time to flesh out your arguments, you can extend the reply deadline to 6 months, but that costs over $1,000 in fees! This phase is a lot like a negotiation and ultimately 50-70% of patent applications issue as a patent!
Office actions typically take 1-3 weeks to prepare and, depending on complexity, range between $1,000 and $2,000+.
Patent approval! But don’t forget your issue fee.
Once you and your patent counsel have given the examiner what for negotiated an allowance of your patent, you have reached the summit of Patent Mountain! Your patent will issue on a Tuesday or a Thursday and you’ll be given a shiny US patent number starting with an 8. But first, you have to pay the patent office an issue fee and the issue fee must be paid promptly. Currently, issue fees are $1,170. Some patent practitioners charge a small fee to assist in paying this fee.
Finally, while your patent is in force, maintenance fees are also due to the patent office. They are due at 3.5, 7.5, and 11.5 years after the patent issues and range from $565 to $2,365. Maintenance fees help defray the cost of patent examination and other patent office functions. Often times, inventors inadvertently forget to pay the maintenance fee, or decide the patent is not worth the additional fees, so the patent expires early. In fact, less than half of issued patents pay their 11.5 year maintenance fee!
As you can see, the patent process can involve a bit more than handing a hastily scribbled bar napkin drawing to your favorite patent counsel. And there’s more than I’ve outlined here—if you have additional questions, shoot me an email or sound off in the comments!