Obtaining Patent Protection: What Inventors and Companies Can Expect

Obtaining patent protection is key element for an intellectual property (IP) portfolio because patents confer the right to stop an unauthorized person from making commercial use of your invention. A patent attorney could counsel clients on obtaining patent protection and other aspects of patent law, but proper patent procurement, enforcement, and inventor/client vigilance are important.

The IP Audit

A patent protection scheme typically begins by assessing what innovations are present and conducting an IP audit. The IP audit could examine all of the company’s existing technologies and any future innovations related to those existing technologies, and assessing whether any patent protection on such innovations may be warranted. The IP audit could also include assessing any new innovations in the company’s pipeline. The IP audit could then be used to prioritize company resources, evaluate future values of the innovation, and provide a patent protection scheme that matches the company’s goals and future business environment. The IP audit could also include an assessment of competitor’s technologies, business practices, and patent protection schemes.

Importance of a Patent Search

Before investing in any patent protection scheme, it is advisable to seek counsel and conduct patent searches for any possible blocking patents. Often times, inventors may have come up with a product that has already been patented and patent searches could help the inventor assess the scope of obtaining patent protection, where to file patent applications, and take measures to prevent possible infringement of existing patents. Results from patent searches could also aid in strategizing a comprehensive patent protection program, drafting the patent application, and, ultimately, in deciding the scope of the claims.

Strategies for Obtaining Patent Protection

If the results of the patent search are favorable, the patent counsel will typically prepare a patent protection scheme that includes strategizing the geographical areas in which to file a patent application, drafting a patent application, patentability and non-infringement opinions, where needed, and providing counsel on any prosecution-related matters. To receive non-provisional patent protection on utility innovations in the U.S., a company can expect to initially invest anywhere between $5,000-$10,000 plus a $500 filing fee for up to 20 claims in the U.S. This cost estimate can vary depending on the state of the technology space, complexity of the innovation, scope of patent protection sought, and filing requirements from a particular patent governing body.

What to Expect After a Patent Application is Filed

After filing the patent application, obtaining patent protection is not immediate. In the U.S., the patent application generally publishes and become public 18 months from the earliest filing date. About 20-24 months from the filing date, the U.S. Patent and Trademark Office (USPTO) typically issues an Office Action either rejecting or allowing the patent application. The applicant must respond to the Office Action or, if allowed, the applicant must pay the requisite issue fees, otherwise the application goes abandoned. Most applications do not receive a first Office Action allowance and the process could require responding to two or three Office Action before the patent application is allowed, if at all. Most applications generally take anywhere from 1-5 years before issuing as a patent and receiving patent protection in the U.S. Some foreign patent governing bodies have even longer average patent prosecution periods.

Obtaining Patent Protection - Patent Grant

Once issued, a U.S. patent generally offers patent protection for a 20-year term calculated from the earliest filing date. This term may be reduced or adjusted by the USPTO. Patent protection in the U.S. may be lost if the patentee fails to pay the requisite maintenance fees at 3.5 years, 7.5 years, and 11.5 years from the date of issuance. After the patent is issued, the patentee and patent counsel should consider asserting their patent protection rights against infringers and, in some cases, license the patented technology to third parties. Foreign patenting bodies may have different term limits, maintenance fee schedules, and patent protection limitations.

About the Patent Law Firm:

At Klemchuk LLP, a patent law firm, we offer comprehensive legal services including litigation and enforcement of all forms of Intellectual Property (IP), as well as registration and licensing of patents, trademarks, trade dress and copyrights. We also provide a wide range of technology, internet, eCommerce and business services, including business planning, formation and financing, mergers and acquisitions, business litigation, data privacy and domain name dispute resolution.