Winter
2005 Volume 11.1
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PTO Search, Exam Fees |
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Color Camera Patent |
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248 Patents Issued |
Why a Patent Search ?
Some believe that it is better not to do an initial patent search. They may reason that it is better not to find any prior art that might be used against us. Or perhaps they want to cut expenses or time.
However, there are many good reasons for performing an initial patent search, before deciding to write up the patent application. These reasons include:
1. The search may find close prior art, even "Killer" prior art that can block us from getting a patent. We are better finding out now, before we spend the time, effort, and money on writing up and filing a patent that is likely to be rejected.
2. The search can help us to better define the invention - what is really "new" and what is old, contained in the prior art found in our search.
3. We can target the writing of our claims and specification to "get around" the closer prior-art patents we find, increasing the chances of allowance.
4. It helps the Patent Agent get up to speed on the new invention.
5. It helps the Patent Examiner to more quickly understand our invention, since we give the Patent Examiner a list of all relevant patents we find in the search.
6. Allowance is more likely, since we have done some of the Examiner's work for him by doing an initial search. The Examiner has less work to do, and may simply look for more recent patents in his official search.
7. The resulting Patent can be stronger, more likely to withstand a challenge in court. We may have listed a patent from our search that is similar to a patent used by other side trying to invalidate our patent. Our argument in court can go something like: "The Patent Examiner already saw a similar patent, yet still allowed our patent. Your patent is not much different. Since the Patent Examiner is the expert, the court shouldn't over-rule the expert Patent Examiner."
8. The search shows the Examiner that we have done a thorough, professional job. We didn't cut corners by skipping the search, as some do.
9. The Examiner may pick out our case from a stack of applications for a quick allowance. At the end of each quarter, Examiners may be eager to make their quotas (and increase their raises). They may quickly flip through a stack of patents waiting to be examined, and pick out the "easy allowances" - cases that look clean and are easy to understand quickly, requiring little effort by the Examiner. Since we have already done a search, the Examiner knows he has less work to do, and can just do a quick updated search, allow our patent, and get his raise !
As you might conclude, I strongly recommend patents searches for most cases.
In early December the President signed a law that included new patent fees. The PTO was charging just one fee when a patent was filed - the filing fee of $395 for small companies; double for companies with more than 500 employees.
The new fee structure now requires that 3 different fees be paid when filing. In addition to the filing fee, there is a new search fee and a new examination fee. This follows the practice of the European Patent Office, which has long had separate fees for the search and for examination.
While its sounds expensive, the total e-filing fees have increased only 8%, since the e-filing fee was reduced to $75. The total due at filing is now $425 (75 + 250 + 100).
Large companies pay double fees, plus they don't get the e-filing discount. So the total filing fees for large companies is now $1,000.
Additional fees are due when more than 20 claims are included, or for very long patents (more than 100 pages). The extra claim fees have significantly increased, from $9 to $25 per claim over 20, and from $44 to $100 for extra independent claims.
When you go over 20 claims, the chances of allowance drop since you may irritate the Examiner by giving him too much work in one patent. Examiners work on a quota system and are given pay increases based on meeting those quotas. It may be easier for him to reject everything on a technicality or small technical difference. Now Applicants are being charged for the extra work.
PTO Discounts e-Filing
The new fee structure gives small companies a $75 discount if they e-file rather than paper file. The patent office is hoping that this financial incentive will increase the e-filing rate. I have been e-filing dozens of patents since late 2000 and plan to pass on this discount to the inventors or their companies.
Although 95% of Patent Examiners now use the electronic image file-wrapper (IFW) system to view patent applications and correspondence on-line, only about 5% of patent applications are being submitted electronically (e-filed). More than 90% of patent applications are still being filed the old-fashioned way - being printed out and mailed in to the PTO. These applications are then delayed since the PTO has to scan these in to their IFW system before the Examiners can review the applications.
18-Month
Publication
A few years ago, the Patent Office began publishing most applications 18 months after the effective filing date, even before they issue as patents.
This may present a problem, especially for start-up companies still in stealth mode. Since these applications are put on the Internet, they are readily accessible to competitors and others. A quick search by a competitor's engineer may reveal many product details that would otherwise be kept secret.
There is a way around this
problem. The US PTO agreed to 18-month publication at the insistence of
Europe's and
As an added bonus, by opting out of 18-month publication, a $300 publication fee is avoided.
So not only do your keep your patent and all its details secret until after the patent issues, you can save $300 by opting out of 18-month publication. But remember, this is only if you do not plan to file in other countries.
Link to Featured Patent of
the Year:
http://www.delphion.com/details?pn=US06721000__
6721000: Adaptive
pixel-level color enhancement for a digital camera
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Discover The Patent AGENT Advantage... Effective – 248 Patents Issued
Engineers spend less time explaining inventions to another engineer |
New Easy-to-Remember Gmail
Address:
Gpatent @ Gmail.com
248 Patents Issued
After 11 years of writing patents as a full-time Patent Agent, 248 applications that I've written have now issued as patents. Congratulations inventors!
You can view the 248 issued patents I’ve written at:
http://members.aol.com/stuapatent
Rates Set for 2005
My hourly rate for 2005 will be $190 per hour, billed in quarter-hour increments. Fixed-price quotes are available for patent applications to facilitate budgeting and avoid expensive surprises.
Prosecution work such as amendments and other paperwork is billed at the hourly rate. Litigation-support work is billed at a higher rate.
Patent searches are billed at a flat $500 for
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Stuart T. Auvinen
(831) 476-5506 (831) 477-0703 (FAX) Gpatent@Gmail.com StuaPatent@aol.com http://members.aol.com/stuapatent
© 2004 Stuart T. Auvinen,
all rights reserved. The views expressed are
solely those of the author and do not represent legal advice. Stuart Auvinen is a Patent Agent registered with the U.S. Patent Office (Reg. No. 36,435). He is a former IC design engineer who writes patents for high-tech companies. |
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Stuart T. Auvinen Patent Agent Address Correction Requested |
