Patent Filing Assistance needed.

TexasFilly · May 4, 2005

My husband has a great invention.. and he's put me in charge of handling the patent filing.. and I have a few questions, before proceeding.

Provisional vs. non Provisional
* After reading the application details in length from the uspto, I'm compelled to go ahead with the non provisional, vs the provisional we originally had in mind.. after learning that a provisional does NOT provide invention protection. I find no real benefit with a provisional.. can you advise?

The filing fee's for a provisional & non provisional vary according to what I can tell.. of about $200 (for one who does not qualify for the Small Entity pricing.. is this correct?

Is a patent search *required* at the time of submitting a patent application? Meaning must I pay for this with the uspto when I submit an patent application?
Is this an optional service? Wouldn't a patent search automatically be conducted during the "examination" of the patent application? I'm in the dark here, on this area..
I've conducted a search freely from the patent office site.. and found one patent with a simular use, yet the method/application are completely different.

Am I correct that the "issue" fee's will not be billed until a patent is approved? And this can take a good measure of time, correct?

Is it necessary to hire a patent attorney in order to file for a patent.. and get approved? Please advise.

Small Entity:

* form PTO/SB/09-12 (small entity statement) is no longer necessary. So how do I confirm being classified as a "small entity"?
Do I automatically qualify as *small entity* if I am an independant/individual inventor?

Thankyou.. I appreciate any professional feedback to this thread.

gworld · May 4, 2005

TexasFilly said:
My husband has a great invention.. and he's put me in charge of handling the patent filing.. and I have a few questions, before proceeding.

Provisional vs. non Provisional
* After reading the application details in length from the uspto, I'm compelled to go ahead with the non provisional, vs the provisional we originally had in mind.. after learning that a provisional does NOT provide invention protection. I find no real benefit with a provisional.. can you advise?

The filing fee's for a provisional & non provisional vary according to what I can tell.. of about $200 (for one who does not qualify for the Small Entity pricing.. is this correct?

Is a patent search *required* at the time of submitting a patent application? Meaning must I pay for this with the uspto when I submit an patent application?
Is this an optional service? Wouldn't a patent search automatically be conducted during the "examination" of the patent application? I'm in the dark here, on this area..
I've conducted a search freely from the patent office site.. and found one patent with a simular use, yet the method/application are completely different.

Am I correct that the "issue" fee's will not be billed until a patent is approved? And this can take a good measure of time, correct?

Is it necessary to hire a patent attorney in order to file for a patent.. and get approved? Please advise.

Small Entity:

* form PTO/SB/09-12 (small entity statement) is no longer necessary. So how do I confirm being classified as a "small entity"?
Do I automatically qualify as *small entity* if I am an independant/individual inventor?

Thankyou.. I appreciate any professional feedback to this thread.

Provisional patent gives protection for 1 year, it means that if you file for provisional patent and some one else files a patent application after 6 month, you can still file for real patent application and your application date is from the time that you applied for provisional patent.

You must do a search and include in your patent appliaction, otherwise it will not be taken seriously but that said, you don't need to hire some one to do it, you can do it yourself through online search.
There are book s about writting to write patent that you can use to write but it is always a good idea to give your draft to a patent lawyer to look at, so you have not missed anything. this is a cheaper alternative than a lawyer writting the whole thing.
You have to apy the application fee, when you make the application.

Theo · May 4, 2005

Don't do it yourself - hire a lawyer. There are lots of reasons behind this, one of which is maintaining a healthy family environment :-D

jberryhill · May 5, 2005

This is a good enough set of general questions for some general answers that may or may not be relevant to your particular situation. A good book is "Patent it yourself" by Pressman. It is more expensive to learn patent law from a lawyer than it is to hire one to do it.

* After reading the application details in length from the uspto, I'm compelled to go ahead with the non provisional, vs the provisional we originally had in mind.. after learning that a provisional does NOT provide invention protection. I find no real benefit with a provisional.. can you advise?

The point of a provisional application is merely to preserve the right to the filing date of the provisional as the effective filing date of (a) a non-provisional application filed within one year of the provisional filing date, and (b) which claims subject matter adequately disclosed within the provisional. There are several reasons why you might want to file a provisional. For example, you are considering eventually obtaining patent protection someplace other than the US, but you have, for example, a first publication or sale of the invention coming up soon. Most countries other than the US operate on an "absolute novelty" basis, which means that you cannot obtain patent protection unless you have a filing date prior to the first disclosure or sale of the invention. Under a set of treaties - e.g. the Paris Convention, the Patent Cooperation Treaty - most countries will recognize filing dates established in other countries. The provisional application, because it has fewer formal requirements, is a "fast" way to nail down a filing date. Again, this is vastly simplified, and is just one example reason of why one might file a provisional.

The filing fee's for a provisional & non provisional vary according to what I can tell.. of about $200 (for one who does not qualify for the Small Entity pricing.. is this correct?

That is correct. That's because a provisional application sits around for a year, does nothing but reserves a potential right to a filing date, and then is abandoned at the end of that year.

Is a patent search *required* at the time of submitting a patent application? Meaning must I pay for this with the uspto when I submit an patent application?
Is this an optional service? Wouldn't a patent search automatically be conducted during the "examination" of the patent application?

You are confusing a couple of things here, based on the way you are reading the fee sheet.

First off - no, you are not required to do a patent search. It can be a good idea to do one for a lot of reasons, but it is not required.

Yes, the USPTO will conduct a search and issue an opinion on your claims, and then a process of negotiation begins. The reason you see a separate "search fee" has to do with procedures for the US stage of certain kinds of international applications, and is not relevant to the procedures for a normal US patent application, which, yes, automatically is searched.

Am I correct that the "issue" fee's will not be billed until a patent is approved? And this can take a good measure of time, correct?

Depending on the area of technology, it can take quite a good deal of time. For internet related stuff, just getting a first office action in 18 months is lightning fast. The issue fee is due you receive a notice of allowability, and is required in order for the application to issue as a patent. If your application is never allowed, then, no, you don't pay an issue fee.

Is it necessary to hire a patent attorney in order to file for a patent.. and get approved? Please advise.

Is it necessary to hire a criminal attorney if you are arrested, in order to avoid going to jail? No, you have every right to represent yourself. Patent law is a very arcane little area, with its own set of bizarre rules, language, and procedures. Unfortunately, it is extremely easy to obtain a patent with about zero economic value, which is the specialty of those late night "inventor's assistance" outfits.

The USPTO site has a directory of attorneys licensed to practice in patent cases before the USPTO at which, among other things, you will find that I have a killer hand for "USPTO registration number poker".

In order to practice in patent cases before the Patent Office, one must have at least a bachelor's degree or educational equivalent in one of several specified technical fields, and one must pass an examination in patent law administered by the USPTO. Patent practitioners which are not attorneys are "patent agents" and those which are attorneys are "patent attorneys". All of them, however, were a techno-nerd of some variety long before they fell into bad company with lawyers. Only an attorney admitted to practice in patent cases before the USPTO can call him or herself a "patent attorney", which is why other attorneys who do some trademark or copyright work sometimes call themselves "intellectual property attorney" - which is a phrase that has no legal meaning.

* form PTO/SB/09-12 (small entity statement) is no longer necessary. So how do I confirm being classified as a "small entity"?
Do I automatically qualify as *small entity* if I am an independant/individual inventor?

There's a long story about that form, and why it is no longer necessary. The short answer is that you will be considered a small entity if you pay the small entity fee.

If you are an independent/individual inventor you are a small entity as long as the invention is not licensed or assigned to entity which would not be a small entity.