Patent Process – After The Prior Art Search
The next step in the Patent Process is an important one.
Once you have reviewed the results from the prior art search, you need to decide how to proceed. It may be necessary to have a patent attorney review the results and advise you and the likelihood of success(usually around $1,500 to review a prior art search, but can vary depending upon the number of references found).
Please realize before you spend money having the prior art results analyzed that a) the analysis will be based only on the prior art found, and b) that patent laws and the USPTO’s interpretation
of them can change dramatically from the time of the analysis to the time your application is examined, which can render the analysis relatively useless in light of changes to law or USPTO
examination procedures.
So, how to decide the next step of the Patent Process? Our advice is first to decide if you think you have a reasonable shot at a utility patent. If not, you should consider a design patent, if possible. Design patent applications
are (again) relatively inexpensive, quick, and have a high likelihood of success. Because they only protect the shape of an invention, they usually offer less protection than a utility patent
application, but they may be the best that you are going to get.
Even if you think there is not a reasonable chance of getting a utility patent, there are still additional reasons for considering filing a utility patent:
The inventor is willing to take a chance that the application will be approved anyway. If an issued utility patent would be extremely valuable, it may be worth risking the costs in
filing an application.
Patent laws and their interpretation by court decisions and the USPTO examination procedures may change to the point where an “unpatentable” invention at the time of
filing becomes patentable by the time it is examined (note: the reverse also can happen).
If you decide to go the utility route, you have to decide whether to file a provisional patent application or a utility patent application. A provisional application is a good way to buy
yourself a year of grace period; you are “patent pending” from the day the provisional is submitted, and if you later file a utility patent application based on the provisional within the
year allotted, your utility application will claim the date of the provisional. Provisionals cost roughly half of a utility patent application (generally around $3,000) and can be prepared
relatively quickly, usually within 1 – 2 weeks.