consultation with a patent and trademark attorney regarding an intellectual property
is recommended to determine the scope of legal representation required.
In a patent matter the initial consultation may reveal whether patent
protection is available or not. For example, some inventions are
not patentable simply based on a statutory bar. Inventions not prevented from
being patented by a statutory bar are typically recommended to have a search
and formal patentability opinion rendered before a patent application is
prepared. Alternatively, if it appears the invention is most likely not
patentable based on a statutory bar, this opinion should be rendered by the
patent attorney at the initial consultation.
If you have already
been granted a patent or trademark and believe another party is infringing on
your patent or trademark, the initial consultation is necessary to determine
the best course of action.
For those inventions that are not statutorily barred from patent
protection, a search of prior art is completed to determine the potential
patentability scope of an invention. A preliminary search consists of
locating patents and references using Internet resources with more thorough
searches being completed at federal facilities. After relevant prior art is
located, a comprehensive review is completed to ascertain whether the
invention has either been patented or has been disclosed through other means.
The search results and review of those results culminates in a patentability
opinion prepared by the patent attorney that states based on the results whether patent protection is most
likely available or not.
Preparation of a utility patent application will include the drafting of a formal
description of the best mode or version of the invention, a specification on
how it is built and/or operates, and claims as to the uniqueness of the
invention. The broadest claims possible are drafted in view of prior art.
Formal drawings are also required to illustrate the invention. The drawings
are normally prepared by a patent draftsman.
A provisional application is a low cost
alternative to a utility patent application that provides a means to establish
an early effective filing date and allow the term "PATENT PENDING" to be
applied. A provisional application provides simplified filing requirements
with one full year to assess the invention's commercial potential before
committing to the higher cost of filing and prosecuting a utility application
for patent. A provisional application cannot result in a U.S. patent unless
within 12 months of the provisional application date a corresponding
non-provisional application for patent is filed that claims the benefit of the
earlier filed provisional application.
The basic fee for
filing an application for a utility patent ranges from $530 to $1060, dependent
on whether or not the applicant is entitled to status as a small entity. Issue
fees for utility patents range from $870 to $1,740 once an application is
allowed. Publication fee for early, voluntary, or normal publication is $300.
Maintenance fees are due at 3-1/2, 7-1/2 and 11-1/2 years from the date a
utility patent is granted.
A patent attorney's
legal fees for preparing and prosecuting a patent application will be
dependent upon the type and complexity of the invention.
Matthew G. McKinney, Attorney
121 S. Orange Ave., Suite 1500
Orlando, FL 32801