Nonprovisional-Utility – Karen Dana Oster

Non-provisional, Utility Patent Applications

Anticipated Chronology of Patent Procurement	Definitions, Explanations, and Descriptions of Each Event	Client Action and Cost
Approximate costs for my services excluding fees (unless otherwise noted), as of July 2018. Costs are meant to be exemplary. Estimates and quotes will be provided upon request.	During this time, ideally, an inventor should keep the invention a secret. If disclosure is necessary, confidentiality agreements (non-disclosure agreements) should be used. Under pre-March 16, 2013 rules, publications, public uses, and offers for sale trigger a one year statutory deadline for filing a U.S. application, and immediately make it impossible to obtain protection in most foreign countries. Under post-March 16, 2013 rules, although the rules are still being interpreted, the conservative view is to assume that any and all disclosures should be carefully considered. Continue development of the invention. Remain diligent until invention is complete.
Patentability Search Time: 2-6 weeks	A patentability search is optional. A search determines if prior art exists that would render the invention unpatentable. Prior art is anything that previously incorporated all or part of the invention. For many reasons, no search can locate all relevant prior art that may affect the patentability of the invention. Accordingly, not all relevant art may be found.	Provide an invention description* for searching purposes. Approximate Cost: $1,000 search request, $1,000 search agent fees, and $1,000 search analysis (for a simple mechanical invention). (Up to $1,000 may be applied to the cost of filing a patent application.)
Provisional Patent Application A provisional application may be filed that includes only a specification and necessary drawings. A provisional application lasts one year, at which time it must be converted to a traditional application or it will be abandoned. Only subject matter specifically included in the provisional application obtains the benefit of the provisional application’s filing date. Foreign filing and publication due dates would be calculated based on the filing date of the provisional application (the priority date). Fees are based on preparation time, but are generally less than that of a traditional patent application because of the relaxed filing rules.		* Invention Description An invention description may include any combination of the following: • written description; • drawings or working model; • known prior art (from search or otherwise); • description of advantages and special results; • list of problems solved by invention; • alternative embodiments; and • vendor information and part numbers.
Patent Application Preparation Time: 1-3 months	At this point, a complete invention description* from the inventor is needed. Additions and changes to this description, as well as client delays, can significantly add to the original estimate of the costs of preparing and filing the patent application.	Provide an invention description.* Cost: depends on the complexity of the invention. Minimum preparation fee is $6,500-$7,500 (plus preparation costs for additional embodiments ($1,300-$1,500), USPTO fees ($750 to $1,000 for small entities), and drawing fees ($500 to $1500)). A deposit of half the anticipated cost is required to begin preparation.
Review of Patent Application Draft	A draft of the patent application and drawings is prepared from the invention description provided by the inventor.	Review application and figures carefully to determine if best version of invention is described completely and accurately.
Filing Date	Date the patent application is mailed to the Patent and Trademark Office (PTO). This is the date from which the patent term is measured under current patent law. Generally, it is also the priority date.	Sign formal papers and pay balance of application preparation fee. At this point, the product may safely be marked "Patent Pending."
Filing Receipt Time: 2-4 months from filing	Confirms filing date. Usually indicates grant of foreign filing license. Foreign filing has special requirements for each country, and therefore an invention that is patentable in the United States may not necessarily be patentable in foreign countries. The prices are based on a 15 page application and include all fees. Add $150-$200 for each additional translated page.	File in foreign countries up to one year after the priority date. Cost: varies significantly by country. Examples (2005): * Europe $8,500-$11,500 * Japan $7,000-$9,000 * Canada $1,850-$2,100 * PCT $3,500 (plus fees - expect a minimum of $4,000 to $5,000) & $2,000 (optional Chapter II)
Restriction Requirement Time: 1-3 years from filing	An Examiner at the PTO may determine that your application covers more than a single invention and issue a “restriction requirement.”	Although arguments may be presented, usually it is safest to choose a designated invention and pursue the remainder in future divisional applications. Cost: approximately $500-$1000.
Office Action #1 Time: 6-18 months from filing	An Examiner at the PTO examines the application, cites similar prior art references, and notes any other "problems" with the original application. Each patent claim is either objected to, rejected, or allowed. I will provide an analysis and recommendation as to how to respond to the Office action. There are three months to respond without incurring late fees.	Review Office action and respond to my analysis letter. Cost: $1,000-$4,500 (depending on the complexity of the Office action). Note: if patentability is argued, there is a $2,500 minimum.
Publication Time: 18 months from the priority date	A nonpublication request may be made at the time of filing if international protection is not sought. An application may also be abandoned to avoid publication.	Cost: $500 minimum to abandon or to rescind a nonpublication request.
Additional Office Actions or Final Rejection Time: 6-12 months	Additional Office actions similar to Office action #1 may occur. If a "final rejection" is made, a decision must be made as to whether to file a continuation (e.g. RCE) or appeal.	Cost: varies.
Allowance Time: 2-6 years from filing	Notice of Allowance and Issue Fee Due. The fees include the PTO issue fee, the PTO publication fee, and my estimated charges. The fees tend to go up every year.	Cost: small entities $980 large entities $1,460 (including my current fee, but not including optional proofreading and/or correction).
Patent Issues Time: 3-4 months after issue fee is paid	Receive final patent. Damages for infringement may be collected from this day until expiration.	Product should be marked "U.S. Patent No. __________."
Maintenance Fees Time: approximately every 4 years after issue	Pay fees to prevent patent from lapsing or becoming abandoned. The fees include my fees and the PTO maintenance fees. The fees tend to go up every year.	# ..... Small ..... Large 1 ..... $1,150 ..... $1,950 2 ..... $2,150 ..... $3,950 3 ..... $4,100 ..... $7,750
Expiration Time: 20 years after filing	Patent expires. Others may use the technology. (There may be a patent term adjustment (PTA) that changes the anticipated expiration date.

Approximate timing and costs (excluding fees unless otherwise noted), as of July 2018. Timing and costs are meant to be exemplary. Estimates and quotes will be provided upon request.