| HEPNE®LAW - INTELLECTUAL PROPERTY LEGAL SERVICES |
SELECTING A PATENT ATTORNEY
Selection of a patent attorney should include a balance of credentials, experience and pricing. Most importantly, you must feel comfortable with the specific attorney who will handle your matter.
I am a registered patent attorney with the U.S. Patent & Trademark Office (USPTO), and a member of the State Bar of California. I provide legal services to a number of small businesses, start-ups, and individual inventors/entrepreneurs. I also perform services for a mid-sized intellectual property boutique firm, Shimokaji & Associates. As the former Director of Patent Management and Marketing with The Boeing Company, and Chief Engineer of major programs such as the International Space Station and next-generation software-defined communication systems, I possess a unique blend of technical, business and legal acumen. I understand the intellectual property value creation and mining business from the perspective of the inventor, technology developer, and intellectual property owner. My practice emphasizes personalized service and consultation.
There are very few patent attorneys who can match my resume as a technical professional/engineer and a patent portfolio manager. Even so, my pricing is more than competitive with any intellectual property firm. You will find a wide variety of prices quoted; I would be amazed if any law firm matches mine.
On the other end of the scale, there are “paralegal” firms that advertise patent-related services. They may or may not meet my pricing structure (on the limited non-legal services that they are legally permitted to perform). The inventor/businessperson should be aware that such “paralegals” are not permitted to represent clients in dealing with the US Patent & Trademark Office, and are prohibited from practicing law or offering legal opinions. A patent IS a legal document; it defines legal rights. These paralegal organizations merely format and proofread your inputs, and file the result with the USPTO. They cannot offer opinions on patentability (utility, novelty, non-obviousness, and enablement) or patent claim interpretation. Typically, in addition to not being attorneys, paralegals are not engineers, scientists, inventors or technically trained.
SELECTING SERVICES AND TOOLS - AND RELATED COSTS
Selection of the appropriate tool is based upon your objectives, timeframe and cost. Typically, the decision is between a provisional patent application, a utility patent application, or a design patent application. You will find tutorials addressing the various types of patents and the patent process on the Hepne®Law website at http://hepnerlaw.com/patent.html and http://hepnerlaw.com/start_your_patent_application.html.
PROVISIONAL PATENT APPLICATION:
A summary of the benefits, risks and limitations of a provisional patent application is presented on the Hepne®Law website at http://hepnerlaw.com/patent.html and on the USPTO website at http://www.uspto.gov/patents/resources/types/provapp.jsp.
The principal benefits are speed to file, low cost, the establishment of a priority date for your claim to inventorship, and the ability to use the notice “patent pending” in association with your invention. Some inventors file a provisional patent application, or a series of them, if they want to establish their inventorship but believe that their invention, and particular embodiments of their invention, will continue to mature and/or evolve. These one or more provisional patent applications may then be rolled into a non-provisional utility application that may capture the full maturity of the invention.
Note that a utility patent must subsequently be filed within 12 months of the provisional patent application filing date in order to maintain the provisional priority date and to obtain exclusive patent rights.
The provisional patent application pricing includes up to 20 pages of specification, no limit on the number of drawings, and up to three independent claims. The fees applicable through the filing of the provisional patent application are:
SERVICE FEE (US$) Patent Search (typically, no search performed) N/A Prepare and File Provisional Application Drawing Preparation (average per sheet) (1) USPTO Filing Fee (Small Entity) (1) Cost to prepare drawings may vary from $25.00 (for simple flowcharts) to $200.00+ for complex drawings (such as engine cross-sections).
NON-PROVISIONAL UTILITY PATENT APPLICATION:
A summary of utility patents, including the process and timeline, is presented on the Hepne®Law website at http://hepnerlaw.com/patent.html.
A utility patent application is a critically important document. If not prepared correctly and with sufficient technical, legal and business insight, it is a waste of time and money. Unlike a provisional patent application, which is never examined by a USPTO Examining Attorney for consideration of the grant of exclusive patent rights, a utility patent application is examined by the USPTO for novelty, utility and non-obviousness in light of the existing/prior art. The utility patent application must contain a succinct set of claims (which define precisely the metes and bounds of the invention). The disclosure in a utility patent application must meet the enablement standard. The utility patent application must meet stringent USPTO requirements for content and form, and must be compliant with legislation and case law that guide the Examiner. A utility patent application is the most complex legal document that an attorney may develop.
The utility patent application pricing includes up to 100 pages of specification, no limit on the number of drawings, up to three independent claims and a total of 20 claims. (The USPTO charges additional fees for additional claims and pages of specification). Fees and costs are quoted based upon the complexity of the matter. Exemplary fees applicable through the filing of the utility patent application, for matters of moderate complexity, are:
SERVICE FEE (US$) Patent Search without Novelty Opinion (2) 400.00 - 800.00 (4) Patent Search with Novelty Opinion (for 3 prior art references) (3) Application Preparation: - Invention in the Mechanical Arts - Business Method Invention - Invention in the Electrical Arts - Invention in the Computer Arts Drawing Preparation (average per sheet) (5) USPTO Filing Fee (Small Entity) USPTO Search Fee (Small Entitiy) USPTO Examination Fee (Small Entity)
(2) A patent search is necessary to identify the existing art, and to define the novel and nonobvious aspects of the new invention. The search encompasses the USPTO patent database and public domain resources. The search will result in a listing of relevant patents and/or existing inventions. Owing to the enormous volume of the USPTO database and other public domain resources, inability to discover unpublished pending applications, and the unpredictability of how the USPTO may determine which prior art is relevant (for example, by combining two or more patents which may or may not be in the same field of art as your invention to support an obviousness argument), Hepne®Law cannot guarantee that every piece of relevant prior art may be found.
(3) A written novelty opinion is not required. If desired, a written novelty opinion will address the invention in terms of patentability criteria (such as subject matter, utility, novelty and nonobviousness) and in light of the references discovered in the patent search. The novelty opinion cannot state authoritatively whether a patent will or will not be granted. That decision is made by the USPTO. However, the novelty opinion can identify the strengths and risks associated with the particular invention.
(4) Based upon the complexity of the invention and the related art.
(5) Cost to prepare drawings may vary from $25.00 (for simple flowcharts) to $200.00+ for complex drawings (such as engine cross-sections).
DESIGN PATENT APPLICATION:
While a utility patent protects the function of an article of manufacture, the way it works, a design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. A summary of the design patent is presented on the Hepne®Law website at http://hepnerlaw.com/patent.html.
Exemplary fees applicable through the filing of the design patent application are:
SERVICE FEE (US$) Patent Search (typically, no search performed) N/A Prepare and File Design Patent Application Drawing Preparation (average per sheet) (6) USPTO Filing Fee (Small Entity) USPTO Search Fee (Small Entity) 60.00 USPTO Examination Fee (Small Entity) 80.00 (6) Cost to prepare drawings may vary from $25.00 (for simple flowcharts) to $200.00+ for complex drawings (such as engine cross-sections).
Notes:
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USPTO fees as of 9/26/2011; subject to change without notice.
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Hepne®Law fees are subject to change without notice.
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Proposals are based upon the complexity and nature of the specific matter and the services performed.
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Wherever practical, Hepne®Law prefers to quote a specific fixed price for a service or product rather than bill based upon an hourly rate. This provides the client with a greater level of cost certainty and generally results in a significant savings.
Richard J. Hepner
Attorney & Counselor At Law
Juris Doctor - M.B.A. - B.S.M.E.23041 Avenida de la Carlota
Suite 270
Laguna Hills, California 92653
Voice: (949) 280-4800
FAX: (866) 663-2635 inquiries@hepnerlaw.comCLICK HERE to contact HEPNE®LAW
by e-mail at inquiries@hepnerlaw.com
