Don’t Apply

If you have a purely software solution don’t bother. The patent office recently came down hard on software patents as being too subjective and will reject the application. 

Apply

If you have a methodology or hardware concept in mind. The next step is to find an IP law firm to represent you and help throughout the patent process. Here are two IP law firms who can help: 

• Cooley: https://www.cooley.com/
• Loza & Loza: https://www.lozaip.com/

The US patent office also provides some resources for small businesses and entrepreneurs looking to patent: 

• Patent Pro Bono Program: Some lawyers will do pro-bono work, follow the link below to connect:
  https://www.uspto.gov/patents/basics/using-legal-services/pro-bono/patent-pro-bono-program

• Inventor and Entrepreneur Assistance: You can find more resources provided by PTO by following this link: https://www.uspto.gov/learning-and-resources/inventors-entrepreneurs-resources

Application Process

There are 7 phases to the patent application process. They are listed and described below.

Phase 1 – Provisional Application

Length of Phase: 1 year

Check out Loza & Loza’s PREPARING A PROVISIONAL APPLICATION file.

This is the first step in the process of achieving a patent, and it is important to get this done as soon as possible to establish “First to File,” which is pivotal in patent law within the United States and many other countries. This provides you a year worry free to flesh out your invention without someone else coming in and taking the idea while you get ready for the second phase.

Cost

This depends on how much of the work you did yourself and how well you did it. For us, the cost was as follows: 

More information can be found at: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

Phase 2 – Patent Cooperation Treaty (PCT)

Length of Phase: 1 year

Although this phase isn’t technically needed before applying for the nonprovisional patent within the United States, it provides several benefits:

1. It provides a good indication of success of the non-provisional patent within the country of application. This is because it gives you a report on how original the claims are and whether more importantly the claims are innovative.
2. Opens the possibility of applying for patents internationally (150 regions) and gives you 30-32 months, depending on the country, before you need to apply for any international patents you might also want to apply for.

Cost

This depends on how much of the work you do yourself and how well you do it. For us, the cost was as follows: 

More information can be found at: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

Phase 3 – International Filing

At this phase, you should have a report back from the PCT telling you how original your claims are and, more importantly, how innovative the claims are. If you have innovative claims, it is a good indication you should apply for international patents. This is important because it helps protect you from someone taking your idea and starting it in a country where you don’t have a patent.

Depending on whom you chose to represent you for your Patent Application Process, you might need to look at using a foreign patent filings company like RWS: https://www.rws.com/ Companies like RWS help streamline the process of translation and filing of patents internationally. 

If you are lucky, and the Patent Office of your country gives you an allowance on your patent early enough, you can apply for a Patent Prosecution Highway (PPH), which will accelerate the application process of the country/region for which you are applying for an international patent.

Choosing the countries for your international patents

You will decide which countries/regions to apply to on the basis of your knowledge of the industry and where you think companies are most likely to get investments to start a competing product after you find success.

Cost

This depends on which countries and how many countries you are going to apply to. For example, if you are looking to apply for an international patent in Australia, Canada, China ($3000), Europe (~$7000), India ($600), Israel (~$3000), Japan ($3000), South Korea ($3000), ($3000) Singapore the cost might be around $30,000 US.

Note: Frustratingly, a lot of international patent law firms do not use credit/debit card processes for payment, relying on wire transfers ($50.00 per transfer). Ask for confirmation of payment.

Some countries ask for information about where you are applying and the current status. Below is a table with all of the fields you’ll want to track.

Phase 4 – In Office Action

Length of Phase: 6-9 months

If you have reached this phase, congratulations are in order, because you are probably going to be receiving an allowance for approval by the patent office. However, there might need to be some alterations you will need to do with the application in order to appease the patent examiner. 

We recommend that you agree to the examiner’s requests because getting the patent is the most important thing on your journey through the patent application journey. Don’t worry if there are aspects of the claims that were tossed out that you feel should be in the application; you can handle that in the next stage.

Phase 5 – Approval and Issuance 

Length of Phase: 4-6 weeks

Congratulations! Go and celebrate with your loved ones or co-authors of the patent with whom you have endured the long process of the patent application process. But the work isn’t done yet, you need to pay the Issuance fee and wait 4 to 6 weeks for the patent office to issue your patent after they receive payment.

Phase 6  – Continuation (Optional)

If you made amendments to your patent application to appease the examiners for approval, this is the phase during which you can re-add the claims you took out and apply for an entirely new patent, which will come into play if you decide to sell the patent in Phase 7, but you have to get this done before Issuance of the patent. 

It is also important to note that continuation does not add years to the lifespan of your original patent, but it will protect you against people finding a way around your original patent claims. 

Phase 7 – Selling or Enforcement

This comes down to the major choices: Do you sell or enforce the patent you have received? Each path is discussed below.

Selling

If you decide to sell the patent, the amount of money you will receive from your patent(s) comes down to several factors: how many patents, whether you have international patents, and to whom you are selling. There are two major companies that are very patent oriented: Samsung and Qualcomm. They are probably your best bet to approach to sell.

Back in the 1990s, a company could sell 3 patents for $10 million, which today is closer to 5 for $100 million.This is where the continuations come into play, because each continuation counts as a separate patent.

Enforcement

Enforcement of the patent can be a very expensive battle, so it’s important to keep in mind that a lot of companies would rather just pay out than go to court because paying out would be the cheaper option. It is also important to note that you have 3 years to act on discovery of patent infringement before there is no legal recourse. If you find a company in violation of your patent, a list of steps are provided below:

1. Approach them with an offer to license out your patent. This is a win-win situation because it allows them to continue to operate, provide a potential competitor for you when seeking investment funds and a source of income that will grow as they grow. 
2. If that step doesn’t work, ratchet up to a cease and desist letter
3. Seek legal action for damages, it is important to keep in mind that a company large enough will see you a lawyer and raise you two. So finding a law firm big enough to take on the challenge is vital. So, damages should include the cost of the law firm since even though you won the fight, most of the money goes into your representation’s law firm’s pocket and not yours.

Note: Companies that will always go to court are Qualcomm and Samsung.