Due credit goes to Bob Hunter, at www.webpatent.com (Now retired) for his early support when I first thought of becoming an agent, as well as for his very thorough FAQ section.
I have "copied" some of his questions (and answers), and added some of the ones that I had when I was in your shoes.
What the heck is a Patent Agent?
In addition to the patent inventors, The United States Patent and Trademark Office (USPTO) allows two types of professionals to represent others in obtaining patent protection these are Patent Attorneys and Patent Agents. While both patent attorneys and agents must have a degree in science or engineering and pass the same Patent Bar exam, only a patent attorney (who must be admitted to a state bar) can give opinions about patent infringement or validity, prosecute trademark applications, prepare contracts, represent a client in court, etc.
However, when it comes to obtaining a patent (the process of writing an application and defending it in front of the USPTO examiners, called patent prosecution), both agents and attorneys have equal standing. Net-net, most agents are a cheaper way to obtain a patent.
The industry standard to prepare an application is 40 to 60 hours. That means that if you go to an established firm, and pay $300 to $500 an hour to have your patent prepared, you will usually get charged from $12,000 to $20,000 for the application to be prepared! There's going to be another five to 20 hours charged during the prosecution (that the arguing with the examiner part). That could be as much as $10,000 more. (I know, the ticketing company I co-founded spent over $75,000, only to abandon the application!).
Hey, if you don't mind, and have the money, spend it (you won't be alone), but there's a smarter way to go. I charge you whatever time it takes me (at $200/hr), but no more than $8,000 (usually more like $6K to $7K). So you go into it knowing what the costs will be to apply. In addition, when the office actions come, I'll charge you the same hourly rate I was charging you at the time of the application. Thus, as my practice grows and I raise my rates, you have built in inflation protection.
My main advantage is my lower overhead, and the fact that you are getting my 20+ years of experience at reasonable cost. I have participated in large R&D and product fielding (I participated in the development of the MaxiCode 2-D barcode as well as the DataMatrix 2-D barcode and their readers, so if you get a UPS parcel or a piece of mail with a 2-D postage stamp, my DNA is there). In addition, I've done medical equipment work, and started an Internet ticketing company, plus some Classified Defense work a long time ago (What? I forgot about it?). I like writing, enjoy speaking to people, and usually enjoy the work. Finally, I can tell when I'm out of my depth, so don't be surprised if I refer you to someone else who can help you better.
Spell it, what services can MPA perform for me?
Explaining your IP options, and helping you determine the best way(s) to protect an idea
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Novelty searching to find out whether an invention is new
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Establishing whether an invention meets patentability requirements
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Developing intellectual property protection strategies
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Preparing, filing and prosecuting U.S. patent applications
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Including:
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Provisionals
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Utility Application
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RCEs (Request for Continuing Examinations)
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Appeals
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…and many many more procedures!
Recommending providers for non-U.S. applications through affiliates
Training staff in technology management and intellectual property protection
What is a Patent?
A Patent, is a government grant of temporary monopoly rights (in the US, 20 years from the date of application) on innovative processes or products. In short, it is the right to preclude others from making or selling your invention. In exchange for these rights, you teach others how to make or practice your invention.
There are four principal types of patents, Provisionals, Utility, Design and Plant.
A Provisional patent lasts for one year, and it is a sort of "temporary" place holder to your invention. You describe your invention, but the USPTO does not examine or validate anything. For this reason, a Provisional has no claims (which are the language that specifically defines what you have an exclusive license to), and lasts for only a year.
A plant patent covers an actual plant (as in weeds and trees). Sorry, I can't help you directly on this, but give me a call and I'll probably be able to refer you to someone.
A Design Patent covers the specific design of an item. It is very graphic minded, and unfortunately any change made to the design will probably mean that such a change falls outside the scope of your patent (and hence, you probably won't get anything). In the US, their patent number starts with a D. They do have a use, but in general if all you can get is a design patent, the protection is not very large.
The "meat and potatoes" of the business is the Utility patent. Its three main components are the Specification, Drawings and Claims. The first two (spec. and figures), are here to define the claims. Claims are said to be "allowed", because my job as your agent is to get you the most you can get, and the job of the examiner at the USPTO is to limit how much you get. The examiner's decision is based on the existing prior art as well as the USPTO rules.
How long does the process take?
A provisional lasts for one year, and there is little involvement by the USPTO. They take your application, date stamp it, and off you go. A year from that date, it expires. No one looks at it, no one tells you if there are other patents like it. Nada, zilch.
A non-provisional is what you typically think of as a patent. You file it, and if the important parts are complete, they USPTO issues a filing date. It then further checks the application, to ensure it is complete. If there are any shortcomings (of forms, not of content), it may give you 2 months to correct. After that, the waiting begins for the Office Action (OA).
The OA waiting is a function of the area under which the patent application (PA) is classified. The EFS System (USPTO computer program that tells you the status of your application) has a 1st OA prediction function. For some OAs classified within the mechanical arts, I’ve seen a prediction of 15 months, followed by an actual 1st OA in 10 months. I also have a business method application that predicted 92 months! So it depends.
When the time comes, the examiner gets to look at the application. S/he searches for examples of what you are trying to do. This search may be other patent applications, patents, patents in other countries, papers, brochures, etc. In short, ANY reference to your product which (in the US) predates you invention more than a year from your filing date (this is where Provisionals become important, for correctly executed, they would give you TWO years from disclosure).
The examiner then mails you either an approval of your patent (rare, but it has happened) or rejections. These are usually 112, 101, 102 or 103s (named after the Federal Code where they are described). Most common are 102’s (someone did it before you), or 103 (the obvious combination of two previous things (not necessarily patents)) does what you do.
This is where your Attorney/Agent earns their keep. For now, we “go do battle” for you with the USPTO examiner, and work on the arguments. Having had to deal with some notorious “prima donna” engineers as a manager, I can’t tell you enough how pleasant it is to deal with examiners that have to operate within some boundaries!
So you either explain the differences, or narrow the claims. You get one more byte of the Apple (usually), then either the Patent is approved, or you have to appeal. Assuming it is approved, you then get 90 days (not 91, 90), to pay the issuance fee, and you are a Patented Inventor!
Luis Figarella PE
USPTO Reg. #58300
27 Todd Rd.
Nashua, NH 03064
603-557-8420 (C)
603.821.7400 (H/O)
206-494-7597 (Fax)
@MXPatent @Figarella
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