If you have developed an invention and seek to protect it, you need an experienced patent attorney licensed with the state and registered with the United States Patent and Trademark Office (“USPTO”) who can guide you through the patenting process. Your application will either be a Utility, Design, Plant, or Provisional Application. During our consultation, we will advise you as to which type of application is appropriate for your invention.
In order to determine whether your invention has already been patented, it is highly recommended that we conduct a patentability/novelty search to determine whether or not it is advisable to move forward with a patent application. If it is determined that an application has already been filed for the same or very similar invention, you will save thousands of dollars and time by not pursuing the application. However, in other cases, your invention may be different enough from the prior art such that moving forward with a patent application would be a wise and recommended move. The comprehensive search that we conduct is with the USPTO. In addition to a determination of patentability, the results typically provide us with additional relevant information that is often of interest to our client and us. Our firm typically charges a flat fee for moderate complexity patent searches, but may sometimes charge hourly fees for more complex applications such as computer software, electrical device, and business method patent applications. The timing of the search results will vary depending on the complexity, but is typically about 2 weeks. The search includes pdf copies of all prior art patents and applications we find, as well as a written patentability opinion letter from Mr. Cohen, setting forth his analysis of your proposed invention compared to the prior art found.
B. The Second Step: Filing your Application and the Patent Process
If we determine your invention as patentable, we will proceed to draft your application. The turn-around time and fees will vary depending on the technology and complexity of the subject matter. However, our general fees for a nonprovisional utility application typically starts at around $6500. General the statutory USPTO initial filing fees is typically included as well as drawings. This is a significant savings, as most attorneys charge separately for both. You will receive a boutique quality application that is designed to discourage competitors, promote licensability, and protect your invention in court. After your application is filed, approximately six months to a year later, the patent examiner at the USPTO will issue an Office Action either accepting or rejecting the application. Typically the examiner will require various changes in the application. In other circumstances, we must prepare substantive arguments to overcome the examiner’s rejections. Only upon a successful response to the examiner’s office action will the application issue. Immediately upon the filing of your application, you are entitled to place the terms “patent pending” on your invention as warning to others. This marking may serve as notice to potential infringers who copy your invention and that they may be liable for damages once the patent is issued. Note: if you are seeking to protect the look of your invention rather than the functionality (the way it works), then you may be entitled to a “design patent“, rather than an “utility patent” as discussed above. Design patents tend to be less involved compared to utility patent. Our fee for a design patent application is $1500 and already includes the USPTO filing fee for small entities and drawings. Our firm has filed several foreign patent applications both directly in the national states and via the PCT route. Foreign patent applications are complicated and expensive. Please call for a consultation and quotation.
II. WHAT ARE OPINION LETTERS?
There are different types of opinion letters such as freedom-to-operate, infringement, and patentability opinions. Typically, a client receives a cease and desist letter and needs to know the next step in response to the allegation of patent infringement. The answer is to obtain an opinion from a competent patent counsel. We recognize that a well written legal opinion can have a positive impact and avoid exposure for increased damages and attorney fees. Clients who combine opinions with an effective litigation strategy and execution by their patent counsel have historically benefited by the results. Our opinion letters are written as thoroughly as legal briefs, with a view toward potential future attack by the client’s adversary and possible scrutiny by a federal judge.
Avoiding Expensive Consequences… U.S. patent laws and decisions of the U.S. Court of Appeals for the Federal Circuit impose a duty of due care on companies accused of patent infringement. In the absence of due care, Sections 284 and 285 of Title 35, U.S. Code authorize the courts to assess up to three times the actual damages, plus attorney fees, against infringers found guilty of willful infringement. A thoroughly crafted opinion allows a company to evade this costly result.
Independent Legal Opinions… We apply our knowledge and judgment obtained from our experience to rendering high-quality infringement and validity opinions for corporate clients. Clients are well served from patent counsel with experience in preparation, prosecution, opinions, litigation and appeals when faced with actual or threatened litigation.