Archive for May, 2009

 

To Successfully Enforce Your Patent Do Not Let Form Triumph Over Substance While Writing The Patent

Chemical and pharmaceutical companies protect their investment in research and development and the future of the companies by securing patents on their inventions. Patents help you resist competition. Success or failure of the company often depends on the strength of the patent. The words in the patent document must meet rigid formality requirements under the patent laws. Even if the invention covered by the patent is a fantastic one, the court will throw out the patent if it violates any one of the formality requirements.

The patent document is normally divided into several sections, for example, one section describing the background of the invention, another section describing the invention as a summary, another section describing the drawings of your invention, yet another section describing in detail how to make and use the invention, and a final section that lists various aspects of your invention in numbered sentences, typically from 1 to 20. These numbered sentences or claims form the most important section of the patent.

It is the claims that define the invention. When a competitor wants to design around your invention, he will look to the language of the claims. When you sue someone for infringing your invention, the court will look at the claims in your patent. It is clear that the claims are of paramount importance.

The patent contains independent claims and dependent claims. Dependent claims will refer back to an earlier claim. Independent claims do not refer back to any other claim. For example, dependent claim 2 will refer back to independent claim 1. When dependent claims refer back to other claims, they should meet certain rigid formality requirements, one of which is that the dependent claim cannot be broader in scope than the claim it refers back to. Thus, for example, if claim 1 describes a drug in acid form or its salt form, claim 2 can describe the drug in salt form. However, if claim 1 describes only the acid form, claim 2 cannot describe the salt form. If it so describes, then claim 2 will be broader than claim 1, which is forbidden under the patent laws.

In a recently concluded battle between pharmaceutical giant Pfizer Inc. and generic drug maker Ranbaxy Laboratories, the generic drug maker was able to knock out a patent that covered the blockbuster drug Lipitor. The patent claim that Pfizer asserted against Ranbaxy was held invalid by the high court. Here, Pfizer asserted claim 6 describing a calcium salt of the drug against the opponent. Claim 6 referred back to claim 2 which described an acid form of the drug but not the salt form. The high court held that claim 6 cannot properly refer back to claim 2. The harsh result faced by Pfizer is somewhat surprising because it was believed by many that a court would not look at the form over substance, just as the lower court did. The lower court was reluctant to find fault with the patent claim.

The high court opinion emphasizes the fact that filing a winning patent requires careful consideration of various legal concepts including the intricate formality requirements of the patent law.

Copyright 2006

By: Xavier Pillai

About the Author:

Dr. Xavier Pillai specializes in patent law matters involving chemistry, pharmaceuticals, biotechnology, and polymers; see http://www.leydig.com/Attorneys/AttorneyDetail.aspx?AttorneyID=160.

Filing and Settling Patent Infringement Cases

Patent infringement lawsuits deal directly with patent violations, the violation of an inventor’s right to exclusively market and profit from the novel and original idea. Filing one is costly, and in the United States, the governing body of patents and patent application determines what is unique and original enough to be considered novel.

The U.S. Patent Office does not deal with infringement. For this, a lawyer is necessary in order to file a infringement lawsuit. The filing of a patent infringement lawsuit means that you have successfully obtained rights from the U.S. Patent Office, and whether intentionally or accidentally, someone else has mimicked your patented invention and has begun to profit from it.

Since the U.S. Patent Office generally prefers that all patents are filed through a lawyer or agency, most inventors already have a lawyer. However, those who exercised their decision to file with the U.S. Patent Office via a patenting agency are going to need to acquire a lawyer, as agencies do not handle infringement lawsuits.

Filing a patent infringement lawsuit generally comes after a series of predetermined steps that allows the company or inventor who has created the violation the opportunity to cease production and marketing and return with a infringement settlement offer.

In some cases, the settlement offer is fair and the settlement offer is accepted. However, in most cases the settlement offer is what the company or inventor feels they can handle without presenting too much of a financial hardship on themselves and it really doesn’t reflect a fair offer. Thus, the lawyer will then file on your behalf a patent infringement lawsuit.

The U.S. Patent Office maintains a record of all active and expired patents, and their records are available to the public. If yours has been accepted by the U.S. Patent Office, your patent will be in a searchable database that anyone can search to discover whether their invention or enhancement will be in jeopardy of an infringement violation.

Obviously, in cases of patent infringement, the company or inventor did not adequately search the U.S. Patent Office’s database, or they decided that their invention was close enough to being different and decided to move forward with production. In many cases, violators have filed a request for a provisional patent or for a patent with the U.S. Patent Office and have not yet received a response. The damage caused by law violations is grounds for an infringement lawsuit.

Patent infringement lawsuits are actually on the rise. Lawyers receive a lot of business from those who have filed design patents with the U.S. Patent Office. International laws are quite different, and these laws require interpretation from a highly skilled lawyer.

However, there are laws which determine that foreign violations are illegal as well and an infringement lawsuit can be filed against a foreign patent law violator, provided the laws which were violated apply to international standards. These questions can only be adequately answered by a well informed patent lawyer.

Once an infringement lawsuit has been filed, the violator has the option of fighting the patent infringement lawsuit in court, or making another, more reasonable offer. If the infringement lawsuit ends up in front of a jury, the quality of your lawyer will make a significant difference in the outcome of the infringement lawsuit.

Patent infringement is basically theft of thought, and it is important that victims of violations stand up for their rights and are willing to file infringement lawsuits. This helps to keep the laws stable and accountable. Without lawyers and without infringement lawsuits, patent violations would carry no significant consequence, and thus what would be the motivation for adhering to them?

The U.S. Patent Office only grants patents to unique and original ideas that enhance or better advancement. They are very strict about their regulations, which is why the laws exist. Being the victim of a patent violation undermines the necessary and costly steps you took to protect your invention, and an infringement lawsuit is the only recourse available.

A well educated patent lawyer can help you every step of the way, from filing the initial patent, to understanding laws, to filing an infringement lawsuit. This is just one reason why lawyers are preferable to patenting agencies in the long run.

By: Nick Johnson

About the Author:

Nick Johnson, lead counsel and founding partner of Johnson Law Group, represents individuals or companies with cases involving patent infringement. Find more information at http://www.toppatentinfringementattorneys.com or http://www.toppatentinfringementlawyers.com or call 1-888-311-5522

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Patent Infringement – Who Can Be Sued?

One of the questions that patent holders may have is “who can be sued in a patent infringement lawsuit?” By law, any person who makes, uses, offers or sells something that is protected by a current patent, or who imports into the United States anything that is protected by a current patent, is guilty of patent infringement. Likewise, anyone that makes, uses, offers or sells any product or process that intentionally contributes to it is guilty of infringement as well. Finally, anyone who induces any action that infringes upon a current patent is guilty.

If a company makes a new product that infringes upon an existing and in force patent, it is infringing upon that patent and can be sued. If a company creates a product that relies on a patented process without the permission of the person owning that patent, they are guilty and can be sued. In addition, the law can be interpreted to extend to any store or company that sells a product or process that is protected by a patent, as well as anyone who purchases and uses that product or process.

In other words, if AB Electronic Games were to create a new game system that used as part of its design the joystick that is patented by YZ Game Company, AB Electronic Games may be infringing upon YZ’s patent and can be sued for that infringement.

Likewise, if YZ Game Company had patented a process that only allowed its games to be played on a game system manufactured by them, and AB Company came along and made an adapter using that process so that YZ’s games could be played on any game system, they could be opening themselves to a patent infringement lawsuit. In addition, YZ Game Company would be within its rights to sue every retailer that sold AB’s games or adapter, and every single person that used one of AB’s games or adapters.

In reality, however, it’s seldom practical to sue individuals who buy or use a product that infringes upon another’s patent. Most patent owners will choose to sue the manufacturing company, the inventor or the importer of the product. Some judges will disallow patent infringement lawsuits against certain classes of defendants for various reasons. In many cases, the laws which cover these lawsuits and their interpretation vary from jurisdiction to jurisdiction. Determining who can and should be sued, and on what grounds they can be sued is not always easy for a layman. Even lawyers who don’t specialize in patent infringement law may find it difficult to determine who can actually be sued in a particular instance.

Experienced patent infringement lawyers understand the current case law and how the U.S. Patent laws have been applied in patent infringement cases throughout the years. This is more true today than ever before, with the number of patent infringement lawsuits increasing with each passing year. Decisions that have been handed down in cases over the past five to ten years have opened the existing patent laws to new interpretations that can be utilized in a lawsuit by experts in the field.

If you are considering a patent infringement lawsuit or believe that your rights as a patent holder are being infringed upon, it’s important to consult with a law firm of patent infringement lawyers who are familiar enough with the current case law and interpretations to evaluate your case on its merits. A good attorney can not only help you determine who can be sued for infringing upon your patent, but may see grounds for a suit that you or a less experienced lawyer might not recognize.

This is a matter that the courts take very seriously. If your invention is being used in whole or in part by someone else who does not have your permission, your rights as a patent holder are being infringed upon. When you bring a successful suit against the infringer, you may be able to:

- Stop future infringements when a judge orders an injunction against further use, sale or offer of the infringing invention or product

- Recover the cost, which may include projected future profits lost due to the infringement

- Recover certain litigation costs

- Recover attorney’s fees

- Be awarded punitive damages that may amount to triple the judgment for actual damages

A law firm that specializes in this kind of litigation is the best judge of whether you have a good case of patent infringement. If you believe that your patent rights are being infringed upon, contact a patent infringement lawyer for a consultation to evaluate your case for a lawsuit.

By: Nick Johnson

About the Author:

Nick Johnson, lead counsel and founding partner of Johnson Law Group, represents individuals or companies with cases involving patent infringement. Call 1-888-311-5522 today or visit http://www.johnsonlawgroup.com for a free case evaluation.

How Attorneys Help Inventors Patent Their Inventions

Going through the procedure of patenting your invention can be both confusing and arduous – especially if it is your first time embarking on the invention and patent services process. However, you can avoid any unexpected conflicts by closely following the right steps – and by hiring yourself a patent law attorney. By using the help of a patent lawyer and adhering to the correct patent services series of actions, one can successfully market his invention.

Before choosing to hire a patent agent to patent your invention, you must first conduct some research. Take a close look your invention’s current market. For instance, if you have chosen to create a new type of cellular phone, one should examine the current marketing and purchasing trends of cellular phones.

* Why are cellular phones so popular? – Convenience, popularity

* Who uses cellular phones? – Practically everyone, from young children to the elderly

* What features to people look for when choosing a cellular phone? – This can change depending on the demographics. Elderly people are probably looking for a simple, easy-to-use phone that is accessible, while younger audiences and teenagers are looking for extra features that offer convenience and entertainment

* What makes certain cellular phones unique? Why are some phones more popular than others? – Certain cellular phones offer additional components and special abilities

* Why do people buy certain cellular phones more than others? Which types of features are popular? When are buying trends at their highest? – Compare and contrast your invention’s abilities to similar popular products

Examine how many competitors exist, which companies are the most successful in the market, the manner in which patented products similar to yours are being sold, how much they cost and who is buying them. After collecting this information, you can compare your product to those of competing corporations and see how your invention compares. You will be able to list all of the similar qualities that your invention has, as well as the characteristics that make your invention stand apart from the products of the competitors. This will give you a general idea of what the retail price of your invention should be – and how to effectively market and promote your product.

After ensuring that your product is a worthwhile commodity in a capital market, you can choose to sell your invention to a larger company that creates items like yours or hire your own patent attorney and market your product yourself. Your patent lawyer will be experienced with situations like yours and will know exactly how to handle your patent services case. Some companies, like the Inventors Network, Inc. offer quality patent services and free initial consultations.

The patent services process can be somewhat slow and costly. This is why it is ideal to have a patent attorney consistently look over your patent law paperwork and any patent infringement forms that you are required to sign. It is crucial that you remain patient during this process. Do not hesitate to ask your patent attorney to clarify any matters that may seem confusing to you.

By: Abby Reid

About the Author:

The Inventors Network, Inc. is a patent law firm that provides inventors with legal patent services.

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Protect Your Business from Patent Infringement

Regardless of the size of your business operation, whether you are a large corporation or a single entity on your own, inventing new product enhancements and new products requires a lot of work. It takes energy, creativity, motivation, intelligence, time, money, and failure. This is why it is important to patent your ideas and protect them with patent laws. This is also why patent infringement is more than just a financial threat – it’s insulting your work and your abilities, the equivalent to cheating on an exam – someone steals your ideas and makes them their own. It is important to protect yourself from this which is one of the fastest growing ‘white collar’ crimes in the United States.

There are a few different measures that you can take to protect yourself from this, although these steps may differ significantly depending on where you work, who you work for and the type and size of the business. If you work for yourself the best way to protect yourself is to hire a patent infringement attorney.

A patent infringement lawyer can lead you through the steps of the process needed to protect you. Lawyers are experts in this arena of delicate and intricate laws and having a lawyer on your side can help to protect you from patent infringement. You will need a lawyer through all the stages of development, registering your patent and then creating and marketing the product.

While hiring a lawyer can not guarantee that you won’t be a victim, but a lawyer can help reduce the chances of you being victimized. Also, a patent infringement lawyer can launch a legal case for you that is much more prosecutable if you are robbed of your patent rights.

Patent laws and what constitutes the violation of those laws is what a lawyer specializes in – they have the resources to discover patent violations and to help prevent them, resources that average individuals do not have access to. If you’ve hired a patent infringement lawyer, then it’s best to heed their advice to the letter – they know what they are talking about having studied the intricate patent laws of the country. Not following your lawyers’ advice can land you in a pile of trouble and in the middle of your own patent infringement lawsuit, either as a victim or as a perpetrator.

Regardless of the ’size’ or caliber of the infringement, it is always necessary to consult your attorney before proceeding. Any ’size’ or level of infringement is prosecutable in a court of law. Your lawyer’s job is to prevent you from infringing on someone else’s patent, and to help keep your patent from being infringed upon – not taking their advice, which you are paying them to give you, could be complete ******* for your product and your business.

When you are choosing a lawyer, it is necessary to interview them to ensure that they understand the industry that you work in, and that your product is being created for. They should have enough knowledge of the industry to help you create the new invention without infringing on other patent rights and to help you maintain your patent rights for the product as you produce it.

Hiring a patent infringement lawyer has a two-fold job – to keep you from violating other patent rights and laws as your product is created and to keep others from violating your patent rights. The lawyer that you hire should have a firm knowledge of the industry for which your product is intended, even a ‘little bit’ of knowledge can go a long way for a lawyer.

Your lawyer should also have a support staff that can research and find the information they will need to help you with the process of patent safety. Having access to the knowledge that they will need is just as important as already having a firm knowledge of the industry. Lawyers have incredible research capabilities between themselves and their staff, as well as their position and access to the courts and documents. It’s important to remember that a lawyer can get documents that you, as an individual and business owner, can not.

Find a skilled patent infringement lawyer to help you protect your business, both as a perpetrator and a victim. Hiring a lawyer before you begin production can literally save you millions of dollars and can help protect your name, reputation, business and assets.

By: Nick Johnson

About the Author:

Nick Johnson, lead counsel and founding partner of Johnson Law Group, represents individuals or companies with cases involving patent infringement. Call 1-888-311-5522 today or visit http://www.johnsonlawgroup.com for a free case evaluation.

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What Any Decision Maker Needs to Know About Patent Protection

What Any Decision Maker Needs to Know about Patent Protection

Richard Neifeld, Ph.D., Patent Attorney and Robert Crockett, P.E., Patent Attorney

I. Introduction

This paper explains the basic information a decision maker needs to know regarding patents. There are certain concepts the understanding of which is a prerequisite for this topic. Those concepts are provided in section II. Section III relates patents to countries. Sections IV and V explain the legal requirements for getting patents and how long patents last. Section VI discusses patent treaties. Section VII provides ballpark cost estimates for acquiring patents.

II. Prerequisite Definitions

The term “property right,” also called “ownership of property,” means the right to exclude others from using the property. Property was historically classified as either land or personal, personal property encompassing all property other than land.

The term “intangibles” means rights that are not land or tangible personal property. Intangibles include contractual rights, good will, and intellectual property.

The term “intellectual property” means property rights in certain intangibles, such as patents, trademarks, and copyrights.

Assignment means transfer of ownership of property. (For basic information on invention ownership issues, see http://www.neifeld.com/introart3.html.)

A patent is a property right that has the attributes of personal property. Those attributes include the ability to be bought sold (assigned), and licensed. Like all property, its exclusive right can be enforced. Enforcement of any property right includes the right to sue in a court for (1) damages and (2) an injunction to stop unauthorized use of the property.

There are different kinds of patents, including utility patents, design patents, plant patents, utility models, architectural design rights, and circuit architecture rights. This paper will describe only the most commercially important, which are utility patents.

Utility patents provide a property right to things having an industrial utility, including products, and processes of making and using products. Under current U.S. law, products include computers programmed to perform a useful function, including, for example, a business accounting function, and methods of using include computers running such programs. European law currently does not allow patents on accounting functions, also referred to as business method patents. On the issue of business method patents, Japan’s law is currently somewhere in between that of the U.S. and Europe.

The exclusive right is defined by the claims and the disclosure of a patent. What the claims cover is called subject matter. That is, claims define or delimit “subject matter” to which the patentee has an exclusive right.

Unauthorized use of an intellectual property right is called infringement. Remedies for infringement typically include damages (money equivalent to the harm caused to the owner of the patent by the past infringement) and injunctions (a court order forcing the infringer to stop his infringing activity).

A specification is a written description, often including figures, of subject matter sought to be patented, such as an invention. I try to limit the use of the word “invention” in this paper because it is in many senses mis-descriptive of what a patent can protect.

A filing date is the date that a national or international patent office recognizes its receipt of an application filed in that office.

Prior art means knowledge generally known by other than the patent applicants prior to when the applicants made their discovery or invention. This is a generally applicable definition in the sense that there are several exceptions and fine points that vary from country to country. One major exception is that almost all countries other than the U.S. define the date of discovery or invention claimed in the patent application as the filing date of the application, not an earlier date when work leading to the discovery or invention was done.

III. Who Grants a Patent and Where is Each Patent Enforceable

Generally speaking, patent rights are granted by nations. Each patent is only enforceable in the nation in which it is granted. There are some international treaties that extend the one patent per nation concept. Europe, for example, has one agency, the European Patent Office, that grants European patents. There are a few other such regional patenting authorities, one for the states of the former Soviet Union, and one for certain states in Africa.

Currently, there is no international patent. That is, there is no single patent granted by any patenting authority that is legally enforceable everywhere. However, a world patent has been discussed for decades, and international organizations are making incremental progress towards such an international patenting system. Don’t hold your breath, though. Most people in the patent business expect no international patent in the near future. Also, see below regarding international treaties that ease the burden of obtaining a patent on one invention in many countries.

IV. How Long Are Patents Enforceable

Generally speaking, patent are enforceable for twenty years from when the application for the patent is filed. There are of course exceptions and variations from country to country and application to application.

V. What are the Core Conditions for Obtaining a Patent on Anything

A. The Substantive Requirements for Obtaining a Patent

The core requirements worldwide for obtaining a utility patent are (1) that the thing is useful and (2) that the thing is novel. There is a third requirement, which is referred to as either the “inventive step” or the “non-obviousness” requirement, which generally means that the thing being patented would not have been readily apparent or immediately obvious to someone working in that technology field. The U.S. applies the non-obviousness standard. Europe applies the “inventive step” standard. (The U.S. has imposed an additional requirement, called the “best mode” requirement, but that is a technicality not relevant to the purpose of this paper.)

B. The Procedural Requirements for Obtaining a Patent

The process of obtaining a patent includes the steps of preparing and filing an application for the thing to be patented, prosecuting the patent to issuance, and paying applicable government fees. While this sounds simple, it definitely is not. The preparation of a quality disclosure for a patent application is essential to the government eventually granting the patent and the resulting patent being legally enforceable and therefore accorded respect by potential business competitors.

Generally speaking, the specification must include a sufficient description to enable one of ordinary skill in the art to which it pertains to make and use the claimed subject matter in order for the application to result in a patent. This is generally true in all countries that issue utility patents. In addition, in the U.S., the specification must also disclose the best mode that the inventor had in mind for making and using the invention at the time of filing of the application.

Failing any of the substantive or procedural requirements can fatally flaw the attempt to obtain a patent.

VI. Treaties that Facilitate Obtaining Patents in More than One Country on the Same Thing

There are currently two mechanisms to facilitate extending patent protection on something to more than one country. They are the Paris Convention and the Patent Cooperation treaty.

A. The Paris Convention

The Paris Convention’s core feature is that it allows the filing of a patent application in a second country that is a member of the Convention to be accorded the filing date of an earlier filed application filed in a first country. That allows a patent applicant to file the application in one country, and then to have copies of the filed application sent to agents in other countries for filing there. The Paris Convention has a time limit of one year (for utility patents). That is, the subsequently filed applications in the other countries must be filed within 1 year of the first filed application in the first country, to be accorded the earlier filing date. This right is incredibly important because, in most countries, public disclosure of the subject matter of a patent application prior to filing the application is an absolute bar to obtaining a patent for that subject matter. The Paris Convention allows the applicant to file a single patent application in one country, and then publicly disclose and sell products and processes disclosed in the application without automatically losing the right to a similar patent in the other countries that are members of the Paris Convention. Almost all countries of industrial/commercial significance are members of the Paris Convention. The Paris Convention has been in existence since about 1900 CE.

B. The Patent Cooperation Treaty

The Patent Cooperation Treaty goes one step beyond the Paris Convention. The Patent Cooperation Treaty allows a patent applicant to legally effect filing in every country that is member to the PCT by filing a single application, a PCT application, in any country that is a member of the PCT. The PCT application, however, will not issue into an international patent. Instead, if the applicant decides to obtain a patent in a country from the PCT application, the applicant must still file and pay for the “national stage proceeding” of the PCT application in that country. The benefits of filing a PCT application instead of national stage applications are (1) the PCT application allows for a minimum of 30 months to file “national stage” application during which time the applicant has no substantial patent related costs, (2) the PCT application reduces the formalities and costs required in filing applications in multiple countries, and (3) the PCT application process can provide an initial indication (prior to the 30 month period just noted) regarding the likelihood that the subject matter of the application is patentable so that the applicant can make an informed financial decision regarding cost/benefit of paying for the national stage proceedings in any country. Almost all industrially significant countries are members of the PCT. There are still some exceptions, like Thailand. The PCT has been in existence since the 1970’s and it has been tremendously effective, with tens of thousands of PCT applications now filed annually.

The PCT incorporates the Paris Convention. What this means is that a PCT application can claim Paris Convention priority to an earlier patent application. Therefore, a patent applicant can, for example, first file an application for a U.S. patent. Then, the applicant can file a PCT application which legally has the U.S. patent application’s priority date because of the Paris Convention. Then, the applicant can enter the PCT national stage in selected countries, for example, selecting the United States, China, Japan, Europe, and Korea for PCT national stage proceedings, and not selecting (and thereby abandoning patent protection in) all other countries.

C. Other Treaties Facilitating Obtaining National Patents

Europe has the European Patent Convention. The former Soviet Union has the Eurasian Patent Convention. Some African national have the OAPI treaty.

The EPC allows a single application to issue into a single European patent. However, generally speaking, that European patent is currently not enforceable in any European country unless the granted patent has been translated and filed in the country’s national patent office within 3 months of the date of grant of the European patent. Hence, the substantial translation and national agent costs, and annuities costs, also exist for European countries. The other two treaties are currently of negligible importance.

VII. Costs and Cost/Benefit

No one can file a patent for an invention in all countries of the world. Anyone that thinks they can is fooling themself. Consider the following rough outline of costs. These costs estimates are ball park, and generally independent of country.

Initially, there is the cost of any determination whether to file a patent application (internal corporate patent committee review, patent prior art search and evaluation). Next, there is the cost of drafting a patent specification, claims, and figures. That currently ranges for typically patent applications from three to twenty thousand dollars, depending upon the importance of the invention, technological complication, budget, etc. Most of that cost is the cost of drafting the specification and claims, typical a few tens of hours of attorney time. There is the government cost of filing the application, which typically ranges between one and three thousand dollars. That is the cost to file a first application.

Consider now the cost to file Paris Convention or PCT national stage equivalents. This cost includes the foreign agent’s docketing and filing charges, typically one to two thousand dollars, and the foreign government’s filing fees, typically one to two thousand dollars. That is per country. If, however, the target country does not accept filings in the language in which the specification was originally drafted, then include the cost of a professional translator skilled in patent translations. That ranges from 0.20 to 0.40 cents per word. For a 50 page specification having 300 words per page at one and one half line spacing (15,000 words total), that will cost three to six thousand dollars. If you have a 100 page specification, double that value. If you have a 200 page specification, triple that value.

You have now considered the cost to get the application on file. Add to that the cost of complying with each government patent office’s formalities requirements, and responding to each government patent office’s examiner’s review and rejections or requirements, including both the foreign agent’s fees and the national agent’s fees.

Now add in each government’s charges for granting the application, the foreign agent’s charges for paying for the grant, typically about two thousand dollars, the costs for your national agent to handle those transactions, and then the foreign government annuities, the costs for the foreign agent to track and pay those fees, and the cost for your national agent to track report to you, and pass along your instructions. The foreign government annuities vary from country to country, the determination of the date on which they are due varies from country to country, and the fees typically increase from about one hundred dollars the first year to over a thousand dollars near the end of the 20 year patent term. The foreign agent’s fees depend upon the magnitude of the government fees but are never less than about one hundred dollars.

All of the foregoing assumes that no one challenges your patent application via an opposition proceeding or the like. Any proceeding involving more than just the patent application and the government will increase by tenfold the costs for that country, and impact the costs in the other countries as well.

Thus, to file for, obtain, and maintain a patent for something in all countries of the world would cost millions of dollars. Given those constraints, any patent applicant must make cost/benefit analyses to determine in whether and in which countries to seek patents. Moreover, the cost benefit analysis and timing of incurring costs in the patenting process are substantially influenced by the procedures (national, Paris, PCT, and EPC filings) used to obtain patent protection.

VIII. Further Information

This article has discussed some of the basics of patent law that every decision maker needs to know. Additional articles and resources on patent law and intellectual property can be found at www.neifeld.com.

By: Richard A. Neifeld

About the Author:

Rick Neifeld is a Ph.D. (in Physics) patent attorney and managing partner and President of Neifeld IP Law, PC, whose URL is www.Neifeld.com. Neifeld IP Law is located near the USPTO, and it specializes in U.S. and international patent protect ion, licensing, advise, and counseling, and specialty matters at the USPTO. Rick is also a patent interference practitioner, former Chair of the Interference Committee of the AIPLA, and co-owner of the patent related services provided at www.PatentValuePredictor.com.