Skilled Patent Drafting
at a Reasonable Cost
John B. Edel
Former Patent Examiner
Call: 225-302-8559
email: john@edelpatents.com
Free Patent Help Below
Top Videos
Top Posts
Patent Search
Intellectual Property
Trademark Applications
Provisional Patent Applications
5 Elements of a Patent Decision
Patent FAQ
Steps in a Patent Application
Patent Application Types
Edel Patents Four Step Patent Process
Teach
You teach me your goals and what makes your invention great.
I teach you about:
- patentability
- the cost involved (Flat fee pricing makes it easy!)
Focus
Your application deserves focused energy and skill. John’s experience as a chemical engineer and a patent examiner reinforce his skills. His excitement for helping inventors brings energy and focus.
Craft
Crafting and drafting patent and trademark applications takes experience. Patent and trademark applications have been John’s primary focus for more than a decade.
Win
The right information, focus, and experience increases your chances of success. Connect with John to get this winning combination.
Patent Application First Steps
Getting started in the patent application process is easy.
In the Free Call …
You will learn:
- about the flat fee consultation,
- basic information on protecting against a loss of potential patent rights,
- and cost information for the two main types of applications.
You can reach John at 225-302-8559.
The Detailed Consultation
The follow up discounted consultation addresses issues that can cause a loss of patent rights. It also covers some assessments relating to whether an invention may be patentable.
There are many filing options. John will help you understand how your selections affect your rights.
Most consultations end with at least a rough proposal for either search or the pursuit of one of the types of patent applications. There is no obligation to move forward after the initial consultation. In fact, after the initial consultation is just about the best time to weigh what you have learned and consider whether moving forward is the best option.
Provisional Patent Applications
There are no provisional patents
A provisional patent application will get your foot in the door at the Patent Office. Provisional applications have very few formality requirements. That makes them cheaper than non-provisional applications.
But, only non-provisional applications can turn into patents. If you choose a provisional patent application, file the follow-up application within 12 months. The follow-up patent application must claim priority to the provisional application.
Preparing and filing a high quality provisional can be a challenge. These tips should help you understand the challenge and when you are ready to talk about a fixed fee provisional application, you can start with a free call.
The provisional cost advantage
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Claims are not required,
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There is no need to file an oath or declaration,
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You don’t have to file an IDS
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An abstract is not required
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The applicant does not need to follow the prescribed application structure
Provisional applications can be fast
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The invention may be in a rapidly developing field,
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You may be approaching the one-year anniversary of a disclosure, or
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You may be have a planned public disclosure and need a quick priority date.
The provisional application plan is a two-application plan
Your provisional application needs a follow-up non-provisional application if you want a patent.
A provisional patent application lasts for 12 months. You file the follow-up application during that 12-month life. A simple application path is below:
The cost advantage is temporary
The provisional application can extend your patent term
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Pharmaceutical companies sometimes start with provisional applications to delay patent coverage.
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When the final year of patent protection is more valuable than the first year, a provisional may make sense.
Uncertainty often favors the provisional application
- Business uncertainty: Unknown marketability is a good potential reason to chose a provisional application.
- Technical uncertainty: Invention details change. If your invention details are still changing, consider a provisional. The provisional will help you get credit for what you have invented so far.
- Investment uncertainty: Inventors often need investment. If you are likely to get funding in the next year, a provisional application may help. The provisional application may help sell an investor on your project.
In general, when there is uncertainty, a provisional application can help spread cost. The spreading of the cost can help deal with the risk.
USPTO fees for provisional patent applications
As of June 2020 the USPTO provisional filing fees are:
| Large Entity | Small Entity | Micro Entity | |
| Provisional Filing Fee | $280 | $140 | $70 |
Most individual inventors should be eligible for the $70 micro-entity filing fee. But, attorney’s fees are the bulk of patent expenses. Current USPTO fees can be found at the Patent Office website.
How much disclosure is enough?
There is no real “Grace Period”
US law will not penalize you for your invention disclosures immediately before filing. The acceptable window is the 12 months before your patent application filing date.
DON’T BE FOOLED:
It is easy to lose rights by relying on the 12-month window.
- You may lose the race to the Patent Office.
- Someone else’s public disclosure can destroy your potential rights.
- Someone else’s comments on your disclosure may even destroy your potential rights.
IMMEDIATE LOSS OF RIGHTS:
Most foreign jurisdictions have no pre-filing disclosure window. Your disclosure can bar you from getting foreign patent rights
Is the invention of work in progress?
Search still matters in provisional applications
No matter what type of patent application you might file, it is important to understand what is new. The best way to do this is with a patent search.
A simple search can save thousands if you find that the invention isn’t new. Google Patents is the best patent search tool available.
The hazard of a provisional without claims:
- If you don’t know what you will claim, you don’t know how much disclosure you need to support the claims.
- Claims tend to focus on what is important. A claim-free application can be a scattershot of irrelevant information. Even worse, the scattershot may miss something important.
A bad provisional can be a path to ruin
A provisional application gets an effective filing date
An ‘effective filing date’ is the way the Patent Office gives you credit for what you knew and when.
- The ‘what you know’ is the content of your patent application.
- The when is the date stamp on the provisional application.
A provisional patent application that does not support patent claims is almost worthless. The false security of a bad provisional patent application can lead to a patent disaster.
File before you market. File before you sell.
Provisionals can help you raise capital
12 months of possible improvement
Confidentiality adds to the possibilities
A picture is worth a thousand words.
5 Elements of a Good Patent Decision
Novelty
You cannot get a patent if your invention is not new. Finding out if your invention is new is as simple as searching.
Once you know what the closest reference is, a patent attorney can help you understand how your invention might fare at the Patent Office.
Cost
Your cost depends on subject matter and application type.
John doesn’t publish fee information but is happy to give general-purpose estimates by phone. Call or email for a free 15 min. phone consultation.
Opportunity
Your ability to make money from an invention relies on commercialization. So, you need a plan.
- How big is the market?
- What share of the market is reasonable?
- What type of profit margin is reasonable?
Will you:
Manufacture? License? Sell the Patent?
Expectation
How likely are you to get a patent? You can count your invention’s new features. Roughly speaking, the more new features, the more likely you are to get a patent grant.
You can get a more accurate assessment by talking to a patent attorney. Remember analyzing ‘new’ starts with a comparison to the closest document/disclosure that is old.
Shelter
Your disclosures may be the greatest challenge you face. Shelter your potential patent rights by filing your patent application first. Filing before you disclose helps avoid a loss of patent rights.
Design Patent Applications
John B. Edel
Baton Rouge Patent Attorney
John focuses his practice on getting patents and registering trademarks.
Crisis Manager
As a father of four, John has developed expertise in managing the unmanageable.
Visit John’s bio page.
“Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.” – 35 USC 171
Design patents protect ornamental appearance
Design patent protection is different and narrower than utility patent protection. Design patents matter when appearance matters.
Easier than a utility patent
As a general rule, it is a lot easier to get a design patent granted than it is to get a utility patent granted.
- The Patent Office rejects utility applications that are different than the prior art.
- The Patent Office grants design applications without large differences.
A design patent needs to be substantially different, not radically different.
Narrower coverage than a utility patent
Design patent protection covers ornamental appearance. Simple but important changes to ornamental appearance can avoid patent infringement.
Design applications don’t protect function
If you want to protect the way that something works, consider a utility application. Utility applications include provisional applications and non-provisional applications.
Form and function work best together
Great products will very often contain important functional aspects and significant ornamental aspects. A design patent application and a utility patent application may both be appropriate. Balance the cost and opportunity associated with each application type.
Ornamental appearance needs to be important
Ornamental appearance can sell your products. Competitors can copy that appearance.
If you rely on appearance for a competitive advantage, consider a design patent.
Novelty is critical
Losing potential design patent rights is easy. Understand your filing deadlines and the risks to your application before it is too late. For most people finding a patent attorney who knows the Patent Office rules is the first step.
Drawings are consequential
Take care with a design application drawings. The drawings make up the core of your claim for protection. Don’t waste an application by submitting inadequate drawings.
Patent Novelty/Is My Invention New?
Novelty, being new, is essential for getting a patent. The many other requirements are secondary to novelty. Two simplified concepts explain novelty:
Priority Date – A relevant patent application filing date.
Prior Art – Most often documents that are older than your priority date.
The novelty test:
Do the features match?
- Old: An invention claiming the features A, B, & C is old if a prior art document teaches A, B, & C.
- New: An invention claiming that features D, E, & F is new if the closest prior art does not teach features D, E, & F.
Novelty, being new, is necessary but not sufficient to get a patent. Obviousness is the next big hurdle.
Disclaimer: The above definitions are simplified for ease understanding. Precise evaluation of your situation with a patent attorney is important. But…
You don’t need a patent attorney to patent search. A simple DIY patent search only takes minutes.
Why Patent Search?
You want to find the best prior art (closest document) for two reasons:
- If you find the document that proves your invention is old, you can save a lot of money.
- If you find the closest document, that knowledge should make your application stronger.
Where to patent search?
Google Patents Search
Simple
Fast
User Friendly
United States Patent and Trademark office (USPTO) Patent Search
Boolean Searching
US Only
Espacenet
European Patent Search
Broad Searching
Good Classification Searching
How to Patent Search?
John has dedicated an entire page to patent searching with Google Patents.
Patent Searching Matters!
Can I Disclose My Invention?
You can’t get much more upset that an inventor who just found out they ruined their chance at a patent. More times than not, that inventor has a disclosure problem. The best way to find out if you have a disclosure problem is to talk to a patent attorney.
Secret inventions don’t have disclosure problems
Avoiding disclosure problems is simple. Don’t disclose your invention until after you file your patent application.
Anything you say can and will be used against you in a court of law.
– Miranda Warning
(Until you know how a disclosure effects you … better to be safe than sorry)
Do I Need a Professional Search?
Whether you search or not, it is a good idea to at least consider getting a professional search. A Baton Rouge patent attorney can search for you or get a third-party search.
Should I stay quiet?
Confidentiality is exceptionally important prior to the filing of a patent application.
What does a patent application require?
- The written description must support the invention as claimed.
- The application must enable a person to make and use the invention as claimed.
- The claims define the protection you are requesting. (claims are optional in provisional applications.)
- The drawings are the annotated images you use to support the text. (Drawings are not always required.)
- The oath/declaration identifies inventorship.
- The Patent Office requires fees.
Can I trust an attorney with confidential information?
Yes, BUT:
The potential client and attorney should agree that the conversation is confidential. Blurting out your idea to an attorney you know at a cocktail party does not count.
Why Trust and Attorney?
Attorneys who violate the rules of professional conduct jeopardize their careers. Confidentiality is an important part of those rules.
Outside of an attorney-client relationship, there is no such guarantee. Use nondisclosure agreements outside of the attorney-client relationship.
When to Seek Investors?
Diligent inventors avoid pre-filing disclosures. Seeking investors after a patent filing is a better idea. If you cannot wait, nondisclosure agreements can protect you.
How do I maintain my patent?
A granted patent will expire in a few years without maintenance payments. View the maintenance status of any US patent on the USPTO maintenance page. The fee intervals for a micro-entity are below:
| 3.5 years | 7.5 years | 11.5 years |
| $400 | $900 | $1850 |
(current as of July 2020)
You can find the regular fees and small entity fees on the USPTO fee page.
Note: You can find out is someone else’s patent has expired by checking the USPTO maintenance page.
Is a Prototype needed?
Patent Applications:
- Do NOT need prototypes
- Do need an explanation of how to make and use the invention
Prototypes are still valuable. They can help you better understand your invention.
How long does it take to get a patent?
It can take 2 to 5 years to get a patent granted from the application filing date. But you don’t need to wait for a patent grant to start commercializing.
Make the most of the delay
It might take 18 months to get the USPTO’s first office action. Use that time to test market your invention. Your marketing success or failure should inform your patent decisions.
How long does a patent last?
Utility patents will generally last 20 years from the application filing date. Design patents will generally last 15 years from grant.
but not always…
Provisional applications, priority applications, and Patent Office delays change the patent term. Utility patents also expire without the payment of maintenance fees. The Patent Office has a patent term calculator to help you get the precise date.
How much does it cost to get a patent?
Most of the cost of a patent is attorney’s fees. Attorneys may not publish their rates, but you can call to ask:
- What is your hourly rate?
- How much do you typically charge for a non-provisional patent application?
- How much do you typically charge for responding to an office action?
- Do you offer fixed-fee services?
Remember: If the scope of work starts to expand, your bill will expand also.
A $10,000 Trap
Some patent attorneys are better with patent examiners. The difference between 2 and 5 office action responses can be $10,000.
Ask your potential patent attorney how they minimize office actions. You may want to avoid attorneys without a good answer.
When is an invention ready for patenting?
Do you need a Prototype? Drawings? Experiments?
You don’t need a prototype, drawings or completed experiments to start working with an attorney, but drawings will probably be made in the patent application process.
The Big Test:
Prototypes, drawings and experiments are secondary to the real requirement …
A patent application must teach how to make and use the invention.
–Paraphrase of a section of 35 U.S.C. 112
What are the steps in the application process?
Every application is different. Here are some typical step for a non-provisional patent application
- Inventor does a brief patent search
- Initial phone consultation with attorney
- In-person consultation with attorney
- Attorney hired through engagement letter
- Attorney collects a retainer or other fee
- Applicant provides a full disclosure of the details of the invention
- Optional extra patent searching
- Attorney prepares a draft of the application
- Attorney and client work out the final details for the application
- Attorney files the non-provisional application
- 18 month wait for the examiner to take up the application
- Examiner rejects most claims (the most common response from the Patent Office)
- The applicant replies to the office action by making amendments and arguments.
- Examiner issues a final office action indicating potentially allowable subject matter.
- The applicant replies to the final office amending the claims.
- Examiner issues a notice of allowance.
- Applicant’s attorney pays the issue fee.
- The patent grants.
The possible variations are endless. Bullets presented in italics are more speculative.
Can I use an invention submission company?
Invention submission companies are sometimes scams and sometimes overpriced.
I have never had a client say they were happy that they used an invention submission company.
Never Forget:
Invention disclosures can lead to a loss of potential patent rights. Don’t pay someone to ruin your chances of getting a patent.
The Federal Trade Commission guidance on invention promotion firms will help you avoid a scam.
Can you save my already filed patent application?
Taking over a troubled application can be expensive and challenging. These factors can impact your chances of a successful rehabilitation.
Bad Signs
- an inventor drafted the original application
- the original application has minimal details
- the original application is abandoned
Encouraging Signs
- an attorney drafted the original application
- the original application has great detail
the original application has quality drawings - the original application is an un-expired provisional patent application (A great sign)
John does take over and rehabilitates troubled applications. These cases tend to be unique. Understanding your chance of success requires a consultation.
Free Patent Help
Take advantage of the free patent search help and answers to patent questions below by former patent examiner and Baton Rouge patent attorney, John Edel.
How much does an application cost?
You cannot begin to answer this question without knowing the type of application. Patent, trademark, design, provisional or non-provisional? A patent attorney’s price is means little without understanding the application types.
Can I make money off this invention?
It is possible to make money off an invention without understanding these five basic concepts for patent business success. Why risk it? Your chances are much better if you know the basics.
Where should you patent search?
When to seek investors? Is a prototype needed? Should I stay quiet? What are the steps in the application process?
How can I win at the Patent Office?
John suceeds at the United States Patent and Trademark Office with a very simple strategy.
Resources
Plant, Utility, or Design
Application Subject Matter
Plant Patents
Protects an Asexually Reproduced Distinct and New Variety of Plant
Relatively Inexpensive Compared to Utility
Utility Patents
Protects any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof
Relatively Expensive to Obtain Compared to Other Types
Design Patents
Protects the Ornamental Appearance of an Article of Manufacture
Relatively Inexpensive Compared to Utility
Get a fee estimate by phone.
Provisional or Non-Provisional
Application Type
Provisional Patent Application
Lower Formality Requirements
Lower Attorney’s Fees
Lower USPTO Fees
No Formal Patent Examination
Expires after 12 Months
Does Not Directly Result in a Patent Grant
Non-provisional patent application
Higher Formality Requirements
Higher Attorney’s Fees
Higher USPTO Fee
Is Examined by a Patent Examiner
Must Engage in Examination to Keep Alive
Can Result in a Patent Grant
Patent Pending
Incorrect patent markings can be illegal.
But, “patent pending” can be rewarding. Know when and how to market products. Below are some simple guidelines.
- Don’t mare unpatented products as patented.
- Don’t say “patent pending” without a live patent application.
- Don’t expand “patent pending” markings outside of covered products and services.
- Stop indicating “patent pending” after you abandon the application.
- Update your patent marking after a patent grant.
Signaling effect
- It tells your competitors that you may soon have exclusive patent rights.
- It tells your potential customers about the innovative nature of your invention.
Expectation of Rights
“Patent Pending” is a warning that competing products may soon infringe. No one wants to cancel their new product when your patent issues. That fear can stop a potential competitor from becoming a competitor.
Expectation of Unique Offering
Consumers do not tend to over-analyze a products and services. “Patent Pending” gives rise to two thoughts:
Unique &
Exclusive
Use your marketing to build on this advantage.
Many paths to patent pending
There are many paths to “patent pending”:
- a provisional patent application
- a non-provisional patent application
- a design patent application
- a plant patent application
First, choose your application subject matter. Then choose the application type.
Cost for patent pending
Watch out!
People thinking about patent applications tend to have serious goals. Jumping into a cheap provisional application can undermine those goals.
A weak invention description is the most common flaw in provisional applications. The Frequently Asked Patent Questions section can give some additional context.
Call: 225-302-8559
Email: john@edelpatents.com