*This blog post is continued from IP Q&A part 1, please see the disclaimer included in the first post.
4. How long does it take to get a trademark registered?
Once a mark is filed, the trademark application is picked up by an Examining Attorney at the PTO in approximately four months. Once examined the mark will either be (1) approved for publication or (2) an office action will issue. The Applicant (or their attorney) has up to 6 months to file a response. Once the mark is approved, it will publish for opposition allowing the public 30 days to oppose the mark. If no one opposes, the mark will register if a “use application” was filed or the Applicant will receive a Notice of Allowance if an “intent to use application” was filed. A mark will not register until the PTO is provided an acceptable specimen showing use in commerce. So, once allowed, the Applicant will be able to show use in commerce or file extensions until there is use in commerce.
A mark with use in commerce and no office action will probably register in a year or less.
5. What is a base cost of a patent?
There are two types of utility patent applications: provisional applications for patent and non-provisional patent applications. Preparing a provisional application generally costs $2,500 to $3,500 in attorney’s fees and another $125 in USPTO government filing fees. By contrast, preparing a non-provisional application generally costs $6,000 to $9,500 in attorney’s fees and $530 to $800 in USPTO filing fees. Simpler inventions will be closer to the lower end of these ranges and more complex inventions, such as electrical and software inventions, are typically closer to the higher end of these ranges. Please note that these are the upfront costs associated with preparing and filing a patent application. Two to three years after filing, additional costs will be incurred for non-provisional applications once they enter the “patent prosecution” phase, which means they are reviewed and examined by a USPTO Patent Examiner. (There are no patent prosecution costs associated with provisional applications since they are never examined by the USPTO; provisional applications never matriculate into patents.)
During patent prosecution, an applicant or her patent practitioner may respond to one or more “office actions” issued by the USPTO concerning the application. For example, the office action may set forth one or more rejections concerning the novelty of the invention. Such rejections are common and must be replied to in a timely and persuasive manner to help secure a patent. The costs incurred during the patent prosecution phase vary considerably, and depend, among other things, on the number of office actions issued. Conservatively, an applicant should expect to spend $2,000 to $5,000 in attorney’s fees and USPTO fees during patent prosecution.
Once an application is allowed by the USPTO, the applicant must pay approximately $1,100 in issue and publication fees to the USPTO in order for the patent to issue. After issuance, the patent owner must also pay the USPTO “maintenance fees,” otherwise the patent expires and the patent term is cut short. Maintenance fees are due for the 4th, 8th, and 12th year anniversaries of the patent issue date. They must be paid 6 months before these anniversary dates to avoid late fees.
Please note that the fees and USPTO costs discussed above are merely exemplary and are always subject to change. In particular, the USPTO costs discussed above reflect the “small entity” fee schedule. Applicants that have 500 or more employees are subject to a “large entity” fee schedule by the USPTO, which is typically twice that of the small entity fee schedule.
6. How soon after filing a provisional patent should the design or utility patent be filed, particularly where features continue to be added to the product being patented?
First, a design patent application cannot claim priority to a provisional application, only a non-provisional patent application can. Second, an applicant has up to a year to file a non-provisional patent application that claims priority to a provisional application. However, practically speaking, an applicant should decide no later than 10 months after filing the provisional application as to whether she will pursue the non-provisional application to allow for adequate time for the preparation of the non-provisional application.
If an applicant has decided that there is market value in their invention they are typically best served by filing their non-provisional patent application sooner than later. The earlier the non-provisional patent application is filed, the sooner it will be examined by the USPTO. The sooner it is examined by the USPTO, the sooner it may issue into a patent. If features are continuously being added to invention during the pendency of the provisional application, an inventor may be best served by filing additional provisional applications that disclose these newly added features. Then, within a year of the first provisional application’s filing date, a non-provisional application may be filed that claims priority to all the provisional applications filed.