Counseling Business Clients on various aspects of Patents and other forms of Intellectual Property

(847) 809-4285    (847) 607-0580 fax

North Suburban Location/ Greater Metropolitan Chicago


 


Practice Areas



Phone (847) 809-4285
Fax (847) 607-0580
Email perry@wedoip.com

Address
North Surburban location:

(Cook, Lake Cos., Illinois)

15 minutes from O'Hare International Airport


     

OBTAINING A PATENT

Regarding what types of inventions may be patented, the Supreme Court once noted that "Congress intended statutory subject matter to ‘include anything under the sun that is made by man.'"  Diamond v. Diehr, 450 U.S. 175, 185 (1981).  Although this is not without limit, today's scope of what has become patentable is quite broad.

For a patent to be granted, an invention must be a new, useful and nonobvious process, machine, article of manufacture or composition of matter, or any new, useful and nonobvious improvements thereon.  The preferable first step to take in obtaining a patent is to fully and accurately disclose an invention to a patent attorney, and no one else.  If inventions are publicly disclosed a patent application is filed an inventor might lose the right to obtain a patent.  In the United States, an inventor is given a 1 year grace period from the date of public disclosure to the filing of an application with the Patent Office.  However, a similar grace period does not exist for obtaining patent protection in most countries around the world.

Utility Patents protect the functionality of the technology, whereas Design patents protect the ornamental nature of the design aspects of products. The cost depends largely on the nature of the technology sought to be protected, the level of detail of information provided, and can typically run from about $8,000 to $20,000 for Utility Patents; Designs are considerably less expensive.  A Provisional application is an inexpensive way to get started from about $1,000 to $3,000, however a Provisional patent application must be converted to a full Utility patent application within 1 year of its filing date.  It is important to keep in mind that in order to be eligible for patent protection the technology and/or design cannot have been show or otherwise disclosed anywhere publicly for most foreign countries, or must be on file within a year of such public disclosures for U.S. filings which provide a 1 year grace period. The United States Patent Office web site at www.uspto.gov should be consulted for more information.

The total time after filing an initial application for an invention to be either patented or rejected is generally one to three years, but can be longer. The basic procedure for receiving a patent in the United States is as follows:
  • An application for patenting an invention is sent to the Patent Office.
  • About nine to eighteen months later, the Patent Office sends an office action to the attorney explaining the reasons for allowing or refusing claims of the application.
  • If the inventor wishes to pursue a rejected application further, the attorney will send a response setting forth reasons the application should be allowed.
  • The Patent Office sends another office action, to which the attorney may file another response, and so forth until the application is either allowed or finally rejected, which often occurs as early as the second office action.


    *times and dollar figures are estimates and may vary based on the factors of specific situations.
                                                                                                                                   


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Last modified: 05/13/08