Generally speaking, when a person makes an invention, the first step that should be taken is to prepare a written description or disclosure (with sketches) of the invention. The sketches do not need to be professionally done but do need to be understandable and capable of being photocopied.

These disclosure documents should be witnessed and dated by someone other than the inventor(s) and preferably someone who does not have a financial interest in the invention. Alternatively, the documents preferably are notarized.

If a prototype of the invention has been made, photographs should be taken of it and also witnessed and dated, along with any available documentation showing that the prototype has been tested and that it worked. If such photographs and documentation have not yet been made, we typically take Polaroid photographs of any prototype at our initial office conference and likewise witness and date them. We also make, witness and date at least two copies of the client's disclosure documents, one set for the client's files and one set for our files, acknowledging that we are receiving the client's information "in secrecy and confidence."

This all provides documented evidence on the invention and when it was made, which evidence can be useful at a later date.

We then usually conduct a patentability search on the invention through the records of the U.S. Patent & Trademark Office, to see if the invention appears to be patentable and what the scope of patent protection might be. The search may include a conference with one or more of the examiners in the Patent & Trademark Office, who work in the technology involved in the invention. The typical costs of a patentability search are detailed below.

A patentability search is not legally required but usually makes good business sense. It allows the client to know whether or not patent protection is likely available before going to the more substantial expense of a patent application. Also, having the results of a patentability search, allows us to prepare a better, stronger patent application, because we will then know the likely prior references the Patent Office examiner will be considering when the examiner is reviewing the merits of the application, and what aspects of the invention should be emphasized and what aspects are old.

If the search results are positive, namely, the invention appears to be patentable, then we would normally prepare and file, with the inventor's approval, a detailed formal patent application with the U.S. Patent & Trademark Office, which gives "patent pending" status to the invention.

Assuming successful prosecution of the patent application through the Patent & Trademark Office's administrative process, a potential twenty (20) year exclusive "monopoly" on the invention is granted, measured from the effective date of the filing of the patent application.

Usually the prime time to begin commercial exploitation of an invention is AFTER the invention has been potentially protected by "patent pending" status. Typically this will occur approximately two to three or more (2-3+) months after our first visit, assuming a preliminary patentability search is done before the application is prepared and filed.

If desired, our office is available for general advice and assistance with respect to the proper steps to be taken to promote and market the invention. An inventor needs to be particularly careful if he/she is considering signing up with an invention promotion company.

The patent laws effectively require that an inventor be diligent in pursuing his/her patent rights. Once an invention is put "on sale" in the United States, or described in a printed publication anywhere or is publicly known and used in the United States, it begins a one (1) year time period. A patent application must be filed within that one year period, or all rights likely will be lost.

A relatively recently adopted, application filing procedure in the U.S. patent system is a "provisional patent application" which went into effect in June, 1995 as part of the "GATT" effort. The provisional application was intended to be a relatively inexpensive way of delaying the greater costs of a full patent application for approximately a year, although over the longer term the provisional application will add to the over-all costs of obtaining U.S. patent rights.

A further DIS-advantage is that, since a provisional application is NEVER examined on its patentable merits, it will delay for that same one year period the time when a Patent Office examiner will actually evaluate the merits of an invention and hence the examiner's position on the patentability of the invention is known.

When one is trying to make an investment decision on whether to spend the very substantial sums of money in filing for extensive foreign coverage, this lack of any official indication of patentability makes the decisions on foreign filings that much more difficult. The decisions on foreign filings typically have to be made within a year of the filing of the provisional application (or "full" application, if a provisional is not filed), namely, within the same year that the provisional application is pending but not examined.

We generally recommend considering the filing of a provisional application only in those cases where the client is not yet in a financial position to afford the costs of a full or "real" patent application, and a provisional patent application is all that can be afforded within the particular period of time involved, or where it is very important, if not essential, to get some application on file as soon as possible due to, for example, someone else working on the same type of invention or where there is about to be a publication or commercialization of the invention.

A provisional patent application currently (as of the fee schedule of October 2003) has a U.S.filing fee of $80.00 (compared to a minimum of $385.00 for a "full" application) for an independent inventor or small business or non-profit institution ["big business" (500+ employees) pays twice as much], plus legal costs. The legal costs for preparing and filing a provisional patent application's specification typically is in the range of a minimum of $350.00 to more typically about $2,500.00+ (compared to typically several thousands of dollars more for a "full" patent application), depending primarily on how much work on the invention's description is needed and the "claims" that need to prepared.

A good quality write-up with quality drawings, collectively fulfilling the requirements of 35 U.S.C. 112 (an "enabling disclosure"), from the client can result in the total cost of a provisional application of only about $430-$575. However, the client needs to disclose in the write-up sufficient detail for one of ordinary skill in the technology of the invention to know how to make and use the invention, with the "best mode" then known to the inventor being disclosed in the write-up. An extensive write-up is generally desirable.

However, most clients do not have the background and experience to prepare such a full and complete write-up, so more typically a provisional patent application filing will cost $2,500+.

There can be great risk in relying too much on the filing of a provisional patent application and, in those cases where one is filed, the sooner a "full" or "real" patent application is thereafter filed, usually the better.

A "full" or "real" patent application must be filed within one (1) year of the filing of the provisional application or the benefits of the provisional application are lost. The term "patent pending" or variants thereof can be used after a provisional application has been filed.

If foreign patent rights outside the United States are important, it is usually advisable to file the U.S. patent application BEFORE there is any commercialization or publication of the invention.

Patent matters, like new business ventures generally, usually represent speculative ventures. In our opinion, an inventor usually should not put himself/herself into great financial jeopardy pursuing an invention, particularly if the invention is only in the preliminary, unproven "concept" stage.

The old saying of "build a better mousetrap and the world will beat a path to your door" regrettably is not true. Those inventions that "make it" usually do so only after a great deal of time, effort and perseverance. Inventions typically do not present "an easy road to riches."

To give you a general idea of the average costs involved in these matters, presented below is typical cost information for a patentability search and for the preparation and filing of a full "utility" patent application, as well as a sheet describing the "Additional Costs of Prosecuting and Issuing a Patent Application." Our policy statement with respect to fees and retainers also is included below.

A typical case that goes through the complete patenting process usually represents a total investment of approximately three to eight thousand dollars ($3K-$8K) over a two year period of time for the twenty (20) year patent "monopoly." This averages out to approximately $125-$333 a month over that time period, although the largest single cost is incurred at the time of filing the patent application.

Our patent personnel are well experienced in patent, trademark, and copyright matters. Click here, for brief biographical sketches on the personnel associated with the firm.

Mr. Pugh is a former Examiner with the U.S. Patent & Trademark Office, and the firm over the last approximately 25+ years has specialized in patent, trademark, copyright and related legal matters. This in-depth background and experience allows us, we believe, to be highly effective in representing inventors before the U.S. Patent & Trademark Office, as well as securing effective patent rights in other countries.

We have successfully handled patent litigation and licensing matters all around the country, and have established associates in practically all foreign countries for patent and trademark matters.

The firm uses the latest in computer technology, including immediate on-line access to the databases based on the patent and trademark records of the U.S. Patent & Trademark Office, as well as those of other countries.

If you wish any additional information or assistance, please let us know. We look forward to possibly being of service to you in our specialty area of the law.

The professional/legal fees cover the following services:

- Initial conference regarding basic patent procedures and the desirability of having a patentability search done;

- Reviewing and witnessing of any Invention Disclosure materials;

- Reviewing of Patent Office Classification System to determine most pertinent Classes and Subclasses for search;

- Consulting, as necessary, with U.S. Patent Examiner(s) about the field of search;

- Searching directly or through one or more databases the records of the U.S. Patent & Trademark Office, as well as possibly other sources of info, to attempt to find most readily available, pertinent patents or references (however to keep the cost of the search within reasonable limits, the search typically is restricted to prior U.S. patents, unless the client instructs us otherwise);

- Securing copies of pertinent references found in search;

- Study and analysis of pertinent references; and

- Providing a written report covering the following matters:

a) Field of Search

b) Pertinent Prior Art

c) Legal Requirements for Patentability

d) Discussion of References Found in Search; and

e) Firm's Recommendation

* More typically $575.00-$675.00. After the invention disclosure materials have been reviewed, a more specific cost estimate can be given.

FEE PAYMENT(S): Usually a retainer fee of the estimated minimum for the total cost of the patentability search is requested at the time work on the search begins. The exact balance of the cost of the search will be billed at the time of the search report and any balance is then due and payable.

The professional fees cover the following services:

- Compiling all disclosure documents necessary to evaluate the invention;

- Analyzing the disclosure materials in light of the relevant disclosures of the prior art;

- Analyzing the differences between the invention and the prior art in light of the Patent Laws, in particular, 35 USC 102 and 35 USC 103;

- Drafting a set of independent and dependent claims, claiming the invention in view of the disclosure materials, prior art, and the U.S. Code, in particular 35 USC 112;

- Directing as necessary the draftsman as to the proper illustration of the preferred embodiment(s) of the invention;

- Drafting a detailed description of the preferred embodiment(s), numerically coordinated to the drawings;

- Drafting the Field of the Invention, Background of the Invention (with Prior Art Discussion), General Summary Discussion of the Invention, Brief Description of the Drawings, and Abstract sections of the patent application;

- Preparing the necessary ancillary documents, in particular, a cover document with fee computation to the U.S. Commissioner of Patents and Trademarks, a Petition and Power of Attorney, a Declaration by the inventor(s) as to inventorship, etc., and a filing acknowledgment request;

- Providing a complete copy of the application and ancillary documents to the client; and

- Filing of all necessary documents with the U.S. Patent & Trademark Office in the Washington, D.C. area obtaining "patent pending" status.

FEE PAYMENTS: Usually a retainer fee toward the total cost of the patent application is requested at the time work on the application is to begin. Typically the requested retainer is approximately one-half of the estimated maximum amount. The exact balance of the cost of filing the patent application will be billed upon completion of the patent application for possible filing and will be due and payable at that time.

The foregoing estimated fees and costs cover the initial consultation and the preparation and submission of an official patent application to the United States Patent & Trademark Office. Prosecution expenses of an application will be billed later as incurred.

A patent application is usually not acted upon by the Patent & Trademark Office until approximately nine to fourteen (9-14) months after its filing, due to the large backlog of applications awaiting review and action. More often than not, the initial Office Action of the Patent Examiner will include a partial or full rejection of the application, which action begins the prosecution or "negotiation" phase of the case.

The prosecution of an application generally entails an analysis of the Examiner's action(s) and report(s) thereon to the client with the firm's recommendations and cost estimates, the drafting and filing of appropriate response(s) with further reports and, in some instances, an interview with the Examiner.

The costs of the prosecution of the application over the usual nine to eighteen (9-18) month prosecution phase will normally range from about $500 to about $2,000.

In some few cases an appeal to the Patent Office Board of Appeals may be necessary.

Once an application is placed in condition for allowance, the costs remaining are the final government issuance fee, which currently (PTO fee schedule of October 2003) is a minimum of $665, government printing costs (generally not exceeding $30), a publication fee currently of $300, and the firm's fees for processing the final application papers to insure that the patent is properly printed and issued.

It is to be noted that the sequence of the above prosecution and issuance phases of a patent application will normally require an elapsed time of somewhere between twelve to twenty-four (12-24) months over which these additional fees and costs are incurred.

Upon issuance, the exclusive patent rights will be in effect for a potential period of 20 years measured from the effectivea pplication filing date, if the required, post-issuance maintenance fees are paid.

The current patent law requires that maintenance fees be paid three (3) times during the twenty (20) year period, namely 3.5 years, 7.5 years & 11.5 years from the issuance date, at the current minimum rates of $455, $1,045 & $1,610, respectively. Based on average pendency periods, the first annuity would be due approximately 5.5+ years from the beginning of the U.S. patent application process.

The foregoing fees assume that the invention is one in which a large business does not have an ownership interest or license under the invention. Fees for an invention involving large entities or "big business" (500+ employees) are twice that for independent inventors, small businesses and non-profit institutions.

The patent gives the patent owner the right to exclude anyone from making, using or selling the patented invention in the United States and its territories (for greater detail see 35 USC 271). Patent protection in any foreign country must be separately applied for.

Usually the prime time to file any foreign patent application(s) is before one year passes from the effective date of filing the U.S. patent application. Consideration of this is usually made between six to ten (6-10) months after the U.S. filing date. An international Patent Cooperation Treaty (PCT) is available which allows for an initial "foreign" filing in English holding the potential rights open in over 100+ countries an additional year and a half (to 30 months from the effective U.S. filing date). Cost estimates for foreign filings are available upon request.

All costs and estimates given herein are intended for general information purposes only and are subject to change without prior notice. Costs and legal fees can vary substantially from case-to-case. However, cost estimates are available without charge and can only be relied on when they are given by an authorized representative of the firm to a particular client for a particular matter. Patent Office fees usually are adjusted on an annual basis (typically around October 1 of each year) and are thus subject to change as well.

We believe it is important and always proper for our clients to understand the quality of work we perform and the basis for our charges for the services we provide them. Therefore, we ask that you take a few moments to read this statement. If you have any questions, please do not hesitate to ask for clarification.

We provide for you well-trained and experienced, technical and legal specialists, competent secretarial services and equipment, and thoroughly modern research and library facilities. Our legal specialists have technical backgrounds and substantial patent and trademark experience.

Your problems are given our continuing personal attention to attain the maximum result possible in a reasonable amount of time.

You may have heard the quotation by Abraham Lincoln that: "A lawyer's time and skill are his stock in trade." Quality legal services, good results for you and early completion of your work require the skill and time which are truly our "stock in trade." Generally, our fees are based on our skill level and our time expended, although some situations may involve other factors.

There is no charge for an initial consultation, and such conferences are held as a matter of professional courtesy for our inventor and business clients.

If our consultation reveals the need for further research or study of the law or of the facts of your case before we can give you an opinion, this further step will be discussed with you and a reasonable fee, calculated on the same basis, will be charged with your approval.

In some matters we may advise, after analysis and opinion, that we should not proceed further. However, if your case does require further work, we will discuss with you all arrangements to undertake this work as your attorneys.

We can quote a general average fee or estimate for standardized services, such as the conducting of a patentability search or the drafting and filing of a patent application.

But in some matters, for example, a court action, it is generally impossible for us to predict how much time and attention we will have to give the matter. Because of these uncertainties, we find it more sensible and fairer in these instances to avoid a fixed fee or specific estimate in advance. We would be glad, though, to furnish you with information on fees charged in similar cases, which you can use as rough estimates of what we believe our fees may be, if no complications or unforeseen difficulties occur.

Our office follows the same practice as a number of law firms do in requesting a reasonable retainer fee. This retainer fee is in the nature of a deposit for our time which we expect to spend on your behalf. We may also request a deposit for costs and expenses at the time we mutually agree to proceed with your matter. Since most of our clients prefer to handle their business and legal matters on a pay-as-you-go basis, you probably will be billed regularly, for example monthly, or upon the completion of the work, for our professional services and expenditures.

Our personnel will keep accurate records of the time spent and services performed on your matter(s). Your bill will clearly outline the nature of the professional services rendered and the fee which the firm considers reasonable. Expenditures made or to be made on your behalf also will be noted on the bill.

Our billings are due and payable when rendered, and billings not paid within thirty (30) days are subject to an interest carrying charge of one and a half percent (1 1/2%) of the unpaid balance per month, WHICH REPRESENTS AN ANNUAL PERCENTAGE RATE (APR) OF EIGHTEEN PERCENT (18%).

Our clients are encouraged to discuss our fee arrangements, the progress of their matters or the details of a particular bill. We try to do what is proper and fair.

We base our relationship with a client on mutual confidence and respect. It is on this basis that we believe we have established our reputation for a cordial and enduring relationship with our clients.

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