A crucial concern in the protection of your intellectual property is record keeping. It is important that you record your ideas, experimental results, dates of first sales, conferences and trade shows attended, publication dates, etc. These records should be signed and dated by you and witnessed by two people who understand the material. You should also keep all correspondence, receipts, etc., relating to any item of intellectual property.
The following is a brief explanation of the meaning and procedures of intellectual property, and some of the costs relating to patents, trademarks and copyrights.
A patent gives you the right to exclude others from making, using or selling your invention for the life of the patent.
Because there are certain statutory deadlines set by the U.S. Patent and Trademark Office (PTO) you must be sure to inform us of all activity relating to your invention. When an invention is offered for sale or published, a statutory bar (deadline date) begins to run in the United States. An application for patent must be filed within one year of the date of offer for sale or publication, or all potential patent rights with respect to such invention are lost. In some foreign countries, even this one year is not allowed, and no patent application may be filed in such foreign countries after the date of public disclosure except where a United States application has been filed prior to such public disclosure.
If you plan to market your invention in a foreign country, a separate patent application must be filed for that country. Please inform us early on if you think your invention has potential in other countries.
There are two kinds of patents: utility patents and design patents.
Utility patents are for inventions that are functional, while a design patent is for an ornamental design covering the non-functional appearance of certain types of products.
Utility applications are the most common patent applications filed. There are no "forms." The application consists of a specification, claims, and abstract. Each claim defines the invention slightly different to provide the broadest possible coverage of your invention. We will need to review your disclosure in detail; perhaps having several conferences in order to ensure a complete understanding of your invention. The Attorney's fees for preparing a utility application is usually between $6,000.00-$8,000.00, but may exceed those fees if more complex; additionally there are filing fees and drawing fees.
The primary costs for design applications are the fees for the drawings and USPTO filing fees. The fee for preparing and filing a design patent application is usually between $1,000.00-$2,500.00 depending on complexity.
We may recommend that a patentability search be conducted prior to filing. This is a Patent Office records search of issued patents in the fields closest to your invention. If the patents found are too close, or make your invention seem obvious, we may advise you not to proceed with filing an application. The fee for a patentability search is usually $850.00 -$1,000.00, depending on the complexity of the search. Our patentability searches are conducted by affiliates near the Washington, D.C. area.
Once you have authorized us to prepare your application, we will present you a first draft within about three to four weeks. Usually there will be one or two more revisions before we file the application.
Patent Office fees are constantly changing, and the PTO has a two-tiered fee structure for most fees: small entity and large entity. If you qualify for small entity status, your fees will be approximately one-half those of large entity. The current basic electronic filing fee for a utility application is $70.00, search fee $300.00, and examination fee $360.00 for small entity; and $280.00 filing fee, $600.00 search fee, and $720.00 examination fee for large entity. If the claims exceed 20, there is also a charge per each additional claim. The current filing fee for design applications is $90.00, search fee of $60.00, and examination fee of $230.00 for a small entity; and large entity fees are at least twice that amount. After the application is filed in the PTO, you are permitted to use "Patent Pending" on your invention.
Once filed, your application will be assigned to a group art unit and examined by a PTO examiner in that group. The examiner will issue an examination report within about three months to one year. You almost always receive a rejection of the claims in a first examination report, and can receive up to three examination reports during the pendency of the application. Each time we receive an examination report, we will provide you an estimate of costs for preparing the response to the examiner, but they are usually in the range of $1,000.00 - $1,500.00.
When the case is "allowed," the PTO will notify us that an "issue fee" is due. The issue fee for a utility application currently is $890.00 plus a publication fee of $300.00 for a small entity; and $1,780.00 plus a publication fee of $300.00 for a large entity. The issue fee for a design application is $510.00 for a small entity, and $1,020.00 for a large entity.
Once the patent issues, you will have the legal right to prevent others from making, using or selling your invention without your permission. Enforcement of your patent against an infringer usually involves litigation in court. We can discuss those costs and procedures with you if this occurs.
Utility applications require the payment of maintenance fees to the PTO to keep the patent in force for its full term of twenty years from the date the application is filed. The small entity fees are currently $800.00 due at 3½ years, $1,800.00 due at 7½ years. and $3,700.00 due at 11½ years. after issuance. Large entity fees are twice these amounts, and there are currently no maintenance fees for design patents. The life of a design patent is fourteen years.
A trademark or service mark identifies your source of goods/products, or the services you provide, not the goods or services themselves. Marks may be registered with the federal government, or with individual States, or both. There are two bases on which you can federally register your mark: An "intent to use" the mark in commerce, or "actual use" of the mark in commerce. A federal registration will give you the best protection. It generally takes about one year for a mark to federally register. State registrations must be based on actual use of the mark in the State prior to application. If you wish to file a New Mexico State trademark application, we can assist you, or you can obtain an application form from the Secretary of State at (505) 827-3600.
Generally, prior to filing, we recommend a search of computer databases and directories of registered marks for your mark. This will help identify whether your mark conflicts with registered marks used for similar goods or services. We may contract with a trademark search firm to conduct our trademark searches for us. The search fee is approximately $500.00.
Prior to filing the application, or conducting a search, we will discuss the details of your use or intended use of your mark to determine the classes that best describe the use of your mark. A PTO filing fee of $225.00 or up to 325.00 is required per class if filed electronically; paper filings are more. Our legal fee for preparing the application is approximately $1,000.00. As with the case of patent applications, a few months after filing, the PTO will issue an examination report. When we receive the examination report, we will provide you an estimate of costs for preparing the response to the examiner.
Since federal law permits filing based on "intent to use," it is a good idea to file your federal registration application as soon as possible. This will minimize the risk of someone else using or applying for registration of a similar mark. In the case of an intent-to-use application, you can keep the application in effect for up to three years while you are establishing actual use of the mark in commerce.
In some states, such as New Mexico, once the Secretary of State is satisfied that the mark is eligible for registration, the registration certificate will issue without further proceedings. For a federal registration, however, the mark is first published for opposition. If no one opposes the registration during a 30-day period following publication, the registration certificate is issued. An opposition is a proceeding in which a third party objects to your registration by alleging that your mark would be harmful to their trademark rights. Oppositions are not uncommon, but most registrations are not opposed. If your application is opposed, we will discuss the expenses with you at that time. The fact that your registration is opposed does not mean that you must stop using the mark or that you will not be able to obtain a registration.
State registrations are for fixed terms, such as 10 years, and can be renewed if the marks continue in use in the State.
During the year following the fifth anniversary of the registration date, an affidavit must be filed stating that the mark is still in use for all listed goods or service, along with a specimen showing use in order to maintain the registration on the register. There is a USPTO fee associated with the affidavit, which is currently $300.00. Federal registrations have a renewal fee due every ten (10) years and the current renewal fee is $500.00.
The letters "TM" or "SM" or the words "Trademark" or "Service Mark" should appear in conjunction with your trademark or service mark whenever that mark is used with your goods or services. The same identification can be used after state registration. Once a federal registration has been issued you should use the ® symbol. If your mark is infringed, we can discuss the litigation procedures and costs involved.
A copyright is a property right which an "author" possesses in the literary, artistic or software "work" which has been created. Copyright law protects the author from having the work copied by someone else.
Copyright forms are fairly easy to complete so we encourage you to do your own copyright registration, unless you feel uncomfortable doing so, or if the registration involves software. The Copyright Office filing fee is currently $45; or $35.00 for online filers. Copyright information and forms can be obtained from the Copyright Office by calling (202) 707-9100 or online at www.loc.gov/copyright.