OK Your Patent Application Has Been Filed. Now What?

          We at ILG have often made the analogy between getting a patent and raising a child. Like giving birth, filing the provisional or Regular Patent Application is only the beginning of the process of dealing with the Federal Government to procure grant of a patent on your invention.

          Another, perhaps easier analogy to understand is likening the patent process to a baseball game.

  • Filing the Provisional Application is like getting to first base;
  • Converting it into a Regular US Application is like getting to second base;
  • Attending to the Prosecution Issues of the Regular Application (which include Responses to Examiner’s Office Actions by amending claims and arguing against cited references, and can include filing Appeals at successive court levels all the way to the Supreme Court) is like getting to third base;
  • When the patent is granted and issues and is published with an official patent number and publication, that is finally crossing home plate.

          So, after filing a Regular Application, all the steps of dealing with the US or foreign Patent Office(s) are together called “the Prosecution.”

          While we can, based on many years of experience, give ballpark estimates of the cost to prepare and file Provisional and Regular Applications (and more on such estimates below), we have no way of predicting how the Prosecution phase will proceed – whether it will go smoothly, or whether the Examiner will try to pick us off base, with tricky prior art.

          That is why, as we discuss with you in the Initial Client Conference and at meetings since then, we cannot quote you an estimate for the cost of the Prosecution phase of the patenting process. Occasionally, when we receive and review an Office Action, we can approximate the cost to respond to that Action. But we cannot know whether the process is over until we receive the patent in hand (when the proverbial “fat lady sings”).

          Recall that we have given you ranges of costs for budget purposes – these are good faith guesstimates only. We rarely give “Not to Exceed” estimates. The reason is simple: the application drafting and prosecution processes are not solely within our control. At the front end, the drafting process involves you, the inventor, and the prior art that that is turned up in the search or drafting process. In our long experience, (over 40 years and more than 500 cases), inventions grow and change direction during the application drafting process. You find something on the Internet, or we discern an issue or teaching in the prior art developed in the search, or you add a new embodiment or change from one preferred design to another, or in discussion with you, we jointly decide the invention has other application and the description must be clarified, modified, corrected, rewritten or expanded. We can’t tell you how many times we’ve heard clients say “oops, it doesn’t work the way we thought,” or “Yeah, we need to add that equivalent structure to the description.”

          Of course, that’s what the Provisional application system, a reservation of rights to file a regular application, is all about. There are typically vast changes between the concept or prototype first disclosed to us and on which the Provisional is based, and the year-later production or pre-production model device. To convert the Provisional to a Regular Application requires careful review of at least three basic questions: 1) What you/your company is doing now vs. the original idea; 2) What is the competition now doing that doesn’t come within the scope of your original idea; and 3) Have parts, materials, dimensions and functionality changed in the interim?

          There is also another cost issue concern: Where we started with photos for the Provisional, now the required formal line drawings need to be prepared.

          Getting a patent is a matter of getting into the details. Addressing those issues will better insure that you have the best opportunity to get fair patent scope coverage for your idea. Attending to those critical details simply takes time, the amount of which cannot be predicted, nor should you expect it to be.

          Likewise as to Prosecution, we don’t know which of the over 3000 Examiners we will get in the USPTO. The US patenting process is an Examination System process. Unlike Taiwan which merely registers patents, the US (and most of the rest of the world) reviews the application text, drawings and claims for compliance with the rules (often changing) and for technical substance (is the invention truly new, useful and not an obvious variation of what has been done before?). That is all determined during the prior art search and analysis phase, done by the USPTO Examiner. This adds another layer of unpredictability. To each determination made by the Examiner, we have opportunities to respond.

          Please understand that it is always our intention to provide you with the highest quality of service at the most reasonable rates. We opt to have as many tasks as possible performed at the paralegal level, but of course, reviewed by the attorney in advance of filing. The office paralegal rate is less than half of the attorney’s hourly rate. Thus, you get a lower “blended rate.” We work efficiently, yet spend as much time as it takes to provide you with solid, experienced, efficient patent representation. But we can’t predict the course of prosecution before any Patent Office. We are simply not in the crystal ball business, nor do we have any control over the US or foreign Patent Office bureaucracies.

          Feel free to call with any questions you may have, at any time. But please do understand that the cost of patent prosecution cannot be predicted, and is billed at our standard hourly rates. The Government also collects a wide range of fees for the privilege of having an application examined and a patent granted.

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