FREQUENTLY ASKED QUESTIONS
Who are the people behind The Patent and Trademark Firm?
We are patent and trademark attorneys. We have many years of experience, and generally work with corporate and university clients who require, and are happy to pay for full legal services. We started 'The Patent and Trademark Firm' and 'PatentPathway' to give high-quality professional service to inependent inventors who do not have the funds to pay for a full legal service.
What can we do for you?
We file your trademarks and patents for you for a single set fee. We are able to offer a far less expensive service by asking you to work with us, doing some of the things that would lost a lot of money in billable law firm time. Your part of the process is as follows: (1) We work with you so that you do the initial screening of the trademark of patent. We show you how to do this, but we do not do it for you. Only when you are satisfied that you want to go ahead, then we take over for you and file your application. (2) If you are filing a patent application, you will be providing us with the written description of the invention. We will review the claims, which are a critical element, and we will make some changes if necessary, but the application we file will be your creation, not ours, and you take responsibility for what goes into it.
What do we not do for you?
We file your trademarks and patents for you for a single set fee, and we will show you exactly how to screen your trademarks and patent ideas, but we won't act as your attorneys and we won't draft the body of your patent for you.
What will I be expected to do in the process?
Although we take your trademark name and/or logo and file it professionally, we will be realying on you to do some screening work. For a trademark, we will show you how to screen your mark to make sure nobody else has the same of a similar mark applied for or registered in the US, and we'll show you how to search for similar marks online. It's really very simple indeed, but it can take some time, which is why we ask you to do it, so we can charge you a lot less. For a patent application, you will be providing the description of your invention, and will do a patentability questionaire and a prior-art search so tat you can determine if you should or should not file a patent application. This saves you a great deal of money and allows you to be certain that you really want to file a patent application. Many firms do not suggest this and will simply file anything you give them - which can mean it;s a complete waste of money!
How much will it cost?
Our fees will not change and waht is quoted is what you will pay. There are absolutely no hidden extras. However, depending on your application, the USPTO fees might change. Read below.
$450 professional fee + $250 US Patent & Trademark office filing fee*
Total cost = $700
*The USPTO fee of $250 is for filing in ONE class. Each additional class costs an additional $250. The $250 fee is for filing using "TEAS-plus" which is a system where you pick a class description from an approved list. This works for almost all marks. If you really can't find what you are looking for, then you may have to file using "TEAS-standard" where you can make up your own description, but you pay $350 per class. One class is usually all you need. Many times trademarks will be filed in multiple classes, causing extra cost, but providing little extra benefit. If you think you may need to file in multiple classes, just email us to discuss. There is some useful information available, and Nolo press is a very credible source. See: https://www.nolo.com/legal-encyclopedia/trademark-classes.html
PROVISIONAL PATENT APPLICATION
$575 professional fee + $60 US Patent & Trademark office filing fee. Total cost = $635
NON-PROVISIONAL PATENT APPLICATION
$999 professional fee + $364 US Patent & Trademark office filing fee. Total cost = $1363
INTERNATIONAL (PCT) PATENT APPLICATION
$1500 professional fee + $1815 US Patent & Trademark office and Foriegn patent office filing fees. Total cost = $3315
How long will it take?
It will take 1-4 weeks to get your trademark filed. For patents you should expect the process to take 2-8 weeks.
What happens after filing?
After filing all the correspondence from the USPTO comes directly to you. Things may be very easy and your application may be immediately allowed, or the USPTO may ask for further information or may have questions for you. You can chose to respond yourself or you can work with our attorneys, or you can work with with any other firm. It's entirely up to you. Remember to get a firm quote before you hire someone.
Should I use a full-service law firm?
You do not need to pay a full-service law firm to file your trademark or patent. The Patent and Tradmark Firm can take care of everything you need ata fractoin of the cost, but of course you will need to screen the trademark or invention. It's not difficult and it will save you a hugh amoung of money.
Should I use an 'inventor assistance' company?
No. Never! Beware of scams, 'patent mills' and 'invention promotion' companies. online. Only ever use a company that is backed by a real law firm and employs real licensed and experienced US attorneys (like we do)*. There are many unscrupulous people and companies out there who will take your money and give you nothing in return but a worthless so-called application. They employ poorly trained staff and use templates taht will not work for you. They are a total waste of time and money. They are scams!
I want to file a trademark application but am employed by a company
For trademarks for your own busines, it's probably not a problem, but if it's competing with your employer, check your employment contract. There's probably nothing they can do to stop you, but employment contracts sometimes have a no-compete clause.
I want to file a patent application but am employed by a company / university or I am a student - is this a problem?
For patents, it can be more complex. Almost all companies, especially tech-heavy ones, will require you to sign an IP assignment agreement as part of your employment contract. This will automatically assign to the company any IP you invent using company resources or on company time, especially of it relates to the company's technical field. However if you invent something on your own time, not using company resources, and it is entirely different from what the company does, then it should not be covered by the employment contract, and you should retain full rights. You absolutely must read your contract before you decide to file a patent application and you may want to clear it with the company patent attorney first. If the contract claims ALL inventions you create, it may well not be enforceable, but only an attorney (not one who works for the company!) can tell you for sure.
If you work for a University, you will have signed an employment contract which assignes all inventions to the University. Again, if you invent something on your own time, not using university resources, and it is entirely different from what the university does, then it should not be covered by the employment contract, and you should retain full rights. With many US universities (such as UC) patent rights are usually equally split three-ways, with 1/3rd each to the university, the department and the inventors. But check this with the university tech-transfer office. If you are an undergraduate student, and you are not employed by the university, then you are almost certainly not under an assignment agreement, and anything you invent is your own. If you are a research student or post-doc etc, especially if you are paid, you may have had to sign a contract and be under an obligation to assign, just like other university employees. But again, if you invent something on your own time, not related to the university research, then it probably belongs to you. See the UCSF policy for a typical assignment policy https://policies.ucsf.edu/policy/100-25
Can I get help with patent drawings?
Yes. There are many excellent companied that will take our hand-drawn designs and draw them professionally so they are acceptable to the US Patent Office. Just email us and we will suggest some you can use with confidence.
I want to file a patent application; will you draft it for me?
No, we will not be drafting your patent application for you, but with our step-by-step guidance and help, you will do a great job. In fact, as the inventor, who knows this invention inside and out, you really are the best person to do the job! We will review your application and claims for formalities issues (not for patentability), and we will draft all the required USPTO filing documents, and file the application for you online. If this seems like too much work, and you want to work with a traditional law firm who will do everything for you in the traditional way, just contact our associated firm, Bell & Associates (www.bell-iplaw.com).
How long does a patent remain enforceable?
Generally, the term of a patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available. For more information click HERE and search for "patent term".
Will you act as my attorney or legal representative?
We will not act as your legal representatives or patent attorneys and will not represent you before the USPTO. We can’t give you any legal advice. But if you decide that you simply want to have a law firm do all the work, then feel free to contact our full-service partner law firm, Bell & Associates HERE. They are experts with lots of experience helping large and small clients. Whatever your needs with patents of trademarks, they can help you.
I want to file a patent application; when can I publically disclose my invention?
The best answer is that you should only publically disclose your invention after you have filed your patent application. This ensures the greatest degree of safety. Public disclosure includes any form of publication, such as posting on the internet in any form, publishing it in a journal or magazine, or even speaking about it at a conference. Now, in the US, you actually get a 1-year grace period from your first public disclosure. So you can file your application up to 1-year from the date of a public disclosure. Great! But some other countries have shorter grace periods, or none at all. And this can cause a big problem! Take this situation for example: You have a great invention, a hot-dog holder so you can eat a hot-dog without your fingers but without the bun - less carbs! You publish it on your food blog! Everyone loves it, and so you file a patent application in the US. But now a huge German company wants to license it for millions of dollars. The trouble is that in Germany, the grace period is not the same, so your publication will create great difficulty in getting a patent in Germany. If it cannot be patented in Germany, then you cannot make money from it in Germany. Bad news! So the best thing is to keep it under wraps till you have filed in the US. Once you have filed in the US, you have 12 months to file anywhere else in the world and claim the same priority date.
For a patent, must I build a prototype before I file a patent application?
No. There is no need to have built or used the invention before filing. Having it described in a document is all you need. The key requirement is that it should be "constructively reduced to practice", which means you must have it clearly and fully described using whatever description and drawings are needed for someone to understand what it is, how it looks and fits together, and how it works.
Provisional and non provisional patent applications - what is the difference?
A provisional patent application is a ‘place holder’ that lasts for a year and does not get examined. It gives you an official filing date, which is important, but to have the application examined you MUST file a nonprovisional application within 1 year. A provisional patent application costs less to file initially. But if you intend to get a patent, and your invention is ready, then there is very little point in filing a provisional, because you just have to pay more fees in 12 months’ time to file your nonprovisional. Sometimes a provisional application is filed because you want to act very quickly to secure your filing date, with the intention of improving or testing the invention, and then filing a nonprovisional application within a year. TO BE CLEAR - YOU MOST LIKELY DO NOT NEED TO FILE A PROVISIONAL APPLICATION, AND WE SEE NO REASON WHY YOU SHOULD. A nonprovisional patent application is a 'real' application, not a place-holder. It gets examined by the USPTO, and it can mature into an issued patent. You can use PatentPathway.com to file either a provisional or a non-provisional application. For more information see the USPTO web site, HERE.
Do you take any ownership or control over my patent or trademark?
No! Absolutely not! Eevrything is in your name and all correspondence comes to you. You have total control. Honesty and quality guide everything we do. We want you to succeed.
Useful information from the USPTO and other sources
Here are some useful links. We not create or own the content and do not take responsibility for the accuracy of any information found therein. So you should use this information at your own risk. However any information from the USPTO website can usually be relied upon to be authoritative and accurate.
For trademark information see this: https://www.uspto.gov/trademarks