Patent Law Process: Patent Preparation, Prosecution and Licensing

Patent preparation, prosecution and licensing are the three initial steps in applying for a patent.  Among industries typically making use of this type of protection are technology, chemicals, pharmaceuticals, and electronics. Increasingly, so are ecommerce, business methods and software.

The services of a skilled patent attorney are crucial to avoid loss of the exclusivity that is the patent holder’s primary advantage.  The process applying a patent is a lengthy and costly one.  A miscue at one stage can squander the time, expense and effort that went into all the others.

Patent Preparation

Prior to completing an application for a patent, the item’s “patentability” must be ascertained.  This means that it meets the standards of the USPTO (United Sates Patent and Trademark Office).  Inasmuch as technology and other inventions are distributed globally, the application should consider criteria in major trading nations.

The necessary standards that must be met are in one or more of the following areas:

• It is a product or process that is covered by patent protection law.
• It is new or unique in some way.
• It is made in a new or unique way.
• It has a specific use or application.

The cost of a preliminary search may range from $500.00 to $750.00.

Assuming that the item meets all necessary conditions and will therefore be deemed patentable, any of the components on the following list may be a necessary part of the application.

• A description of the invention and how it can be used.
• Drawings of the invention.
• A summary of what currently exists in the field.
• A statement of how, in comparison, this item is new.
• A description of the process involved in producing it.
• A declaration as to who invented it.
• A declaration that the item is not yet commercially available.

The patent attorneys who produce these applications must therefore be skilled, not only in patent law, but in the specific technology or processes involved in producing the new item to be patented.

The cost of preparing the patent application will include $150.00 per drawing and up to $400.00 in filing fees.  The biggest expense is the preparation of the actual application which depends on the complexity of the product.  It can exceed $5,000.00.  This stage takes 2 to 4 months to complete.

Patent Prosecution

Patent prosecution is the process of arguing the merits of the application. The process ends with either final acceptance or final denial of the application.

For each point in the application which is rejected by the examiner, the attorney must produce an amendment which overcomes the problem.  A separate amendment is needed for each unmet legal standard.  Each amendment may cost $1,000.00 to $2,000.00.  Thus the overall prosecution process may add several thousand dollars to the cost of the application and may last as much as two years.

If the patent is issued, additional regulatory and legal fees will arise.

Patent Licensing

The lengthy process that results in acceptance of a patent grants a single right for a specified time.  That right is to exclude others from earning benefits from your item, without your permission.

You may grant – license - an individual or company the right to produce and sell your product for the length of the patent period.

The license agreement will consist of a number of terms.  Among them are:

• The duration of the agreement.
• The exclusivity – or lack thereof – granted by the license.
• Payment terms – flat fee or royalty.
• Reporting requirements.
• Does the license include future product improvements?
• Trademark use.
• Enforcement of infringement.

The three initial steps – patent preparation, prosecution and licensing clearly point to the importance of having expert patent attorneys to oversee the procedure.

• If you have questions or need legal help regarding an Intellectual Property matter, Submit Your Case for a Free Evaluation with a local certified Intellectual Property Lawyer. There is no obligation to receive legal services.