FAQs part 2

What is a “Small Entity”?

A small entity includes individuals filing for a patent application and organizations that include less than 500 employees. Generally, small entities can qualify for reduced fees in patent filings.

What is a “Micro Entity”?

See my blog post to see if you qualify as a micro entity.

Why do you require an upfront payment?

I require at least a portion of the payment for two reasons.  1) It ensures that a client is serious about going through with the project which means that I am willing to reserve time to work on that project.  2) Having clients pay before I do work for them ensures a lower price for all of my clients. I do not have to spend time and resources trying to get a few dishonest clients to pay, which means that I do not have to try to recover those costs. I.e., you don’t have to pay additional costs that are meant to make up for losses that come from other clients who refuse to pay.

What if I don’t live in Utah/the United States, can you still be my patent attorney?

Yes. Patent law is under the jurisdiction of the federal government. This means that I can do patent work for anyone who wants to file in the United States, regardless of where they live. In addition, communications technology has progressed to the point that even local clients rarely meet with me on a regular basis. Many clients in areas such as California and New York City now seek out patent attorneys in other states because it offers substantial savings and most communication occurs via phone or email.

How long does the patent application process take?

The best that I can tell you is that it will normally take at least one year, but will probably take much longer than that. Each patent application is unique. Different art units at the USPTO have differing backlogs, so some take dramatically more time than others to even begin to examine the patent.

Additionally, you never know how many responses you will need to file. I have worked on patent applications that were issued in the first Office Action. I have also worked on applications where I was filing the ninth Office Action response. I work hard to make sure that an application does not take longer than needed but ultimately there are factors that are beyond the control of any patent attorney.

Does the application automatically become a patent?

The USPTO will examine the application and determine whether or not it should issue as a patent. Even if they reject it, however, you still have a chance to amend your claims or argue that the rejection was improper. You can learn more in my patent process blog post.

What is an IDS?

An IDS (Information Disclosure Sheet) is a USPTO form that discloses to the USPTO references which may be relevant in the Examination of the application. Although the Applicant does not have a duty to actively search for references, once they are known they must be disclosed to the USPTO. These references can include US or foreign patents or patent applications, journal articles, websites or any other printed reference.

Can you prepare the Office Action response even if you did not write the application/previous responses?

Yes, you can switch attorneys at virtually any stage of the application process. Many patent applications are sold or assigned during their lifetime and the new owner would like to change attorneys. Additionally, many people who prepare and file their own application find the process of replying to Office Actions difficult and contact an attorney at this stage.

Why is there an “additional search fee” for patent searches?

The additional fee goes to an outside searching company. You could pay me to do the same search, but it would cost you more in the end. The searching company specializes in performing a keyword search and providing a list of references that may or may not be relevant to your invention.

My fees go toward contacting the searching company, providing them with the required information and then returning the results to you. In addition, I can review the references, and provide you with a written opinion which outlines how the references are relevant to your invention. You can learn more about patentability searches at my blog post.

What is a “Continuation Application”?

A continuation is a second application for the same invention claimed in a prior non-provisional application and filed before the original prior application becomes abandoned or patented. In general, a continuation application is filed in order to claim subject matter that was filed in the original application but was not claimed.

What is a “Divisional Application”?

A divisional application is similar to a continuation application. However, a divisional is filed when the subject matter was original claimed by the Applicant but the Examiner required the claims to be withdrawn.

What is a “PCT Application”?

A PCT application is an international application which preserves the right to file in foreign countries who are signatories to the PCT. The PCT application does not issue as a patent, but it allows you to file in the selected countries within 18 months of the filing of the PCT application or 30 months of the first patent filing in any country

The PCT must be filed before 12 months from the earliest filing in any country. Thus, if you have filed a provisional application, the PCT must be filed during the pendency of the provisional application.

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About Dustin Call (26 Posts)

Registered with the USPTO, first as a patent agent and then as a patent attorney, since April 10, 2006 and licensed in Washington as an attorney since November 16, 2006. I have worked for a large firm and now have a solo practice.


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