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Today a reader emailed a comment regarding my last post on USPTO patent application fees. He wanted to know why I claim the government fee for a non-provisional utility patent application is $400 (micro entity status) when the USPTO fee schedule says the basic filing fee is only $70. He is correct that the basic filing fee is $70, but at the time you file your patent application you also have to pay the utility search fee and the utility examination fee. For a non-provisional utility patent (micro entity status) these three fees add up to $400.

The same "three fee" formula is used for utility patent applications with small entity status and standard status, totaling $800 and $1600, respectively.

To find the total government fee for design patent applications, add up the design basic filing fee, design search fee, and design examination fee.

Provisional utility patent applications only have one government fee to worry about, the provisional application filing fee.


The current (2013) USPTO fee schedule can be found here.

 

Got a call this week from a potential client asking about the government fees related to patent applications. Specifically he was asking "what's up with the ArmillaryIP website stating government fees for provisional patent applications are 'usually $65'?" I replied that I also hated the vague wording of "usually", but given the USPTO's three-tier fee structure, vague was the best we could do before knowing a little more about the inventor.

USPTO breaks down their fee schedule into three categories: 1)Micro entity, 2)Small entity, and 3)Standard. The current (2013) USPTO fee schedule can be found here. The 2014 USPTO fee schedule can be found here.

  1. Micro entity: Most individual inventors fall into this category. The inventor's annual gross income must be less than $150,000, and the inventor must not have more than four previous utility patents. An inventor can also qualify for micro entity status if they are associated with an accredited university.
  2. Small entity: To qualify, the inventor must be an individual, a small business, a university, or non-profit organization.
  3. Standard: Inventors that don't qualify for Micro entity or Small entity status.


For provisional utility patent applications, this is the breakdown for government fees:

  1. Micro entity: $65
  2. Small entity: $130
  3. Standard: $260


For non-provisional utility patent applications, this the breakdown for government fees:

  1. Micro entity: $400
  2. Small entity: $800
  3. Standard: $1600


For design patent applications, this is the breakdown for government fees:

  1. Micro entity: $190
  2. Small entity: $380
  3. Standard: $760

 

Provisional patent applications are only valid for one year, giving you time to get the more complex non-provisional patent application drafted and filed. But what happens after one year if you haven't filed a non-provisional patent application. Are you out of luck? No, you're probably OK.

Our latest client had a provisional patent application drafted by another patent professional. The provisional expired after a year, and she was told that the USPTO rules prohibited her from ever getting patent protection for her invention.

This advice was wrong. The USPTO rules prohibit the granting of a patent for an invention that was filed more than a year after the invention was disclosed. If you publish details of your invention, that would be an example of disclosure, but merely filing a provisional patent application is not disclosure.

In our new client's case, she had not disclosed her invention to the public. We filed a new provisional patent application to give her some protection while we drafted the non-provisional. One month after she was told that she was out of luck, she instead had a full non-provisional patent application filed with the USPTO.

File your patent application before you disclose your invention to the public. Our advice to clients is to hold off on disclosure until after the non-provisional patent application is filed. With provisionals it's just too easy to let it lapse after a year. If you do publish your invention and you then let your provisional lapse, then you really are out out of luck.

 

A client called this weekend with another copyright issue. Last year I had filed the copyright registration for his first business website, but being a Type-A personality he preferred to do things himself. He wanted to complete the copyright registration for his second business website. No problem, I walked him through the registration form process, discussed the deposit requirement, and sent him on his way. An hour later he called back and said the registration form was completed, but the deposit requirements were too challenging for him to figure out in an afternoon, and could I jump it to complete and file the copyright registration for his latest website.

Like other copyright registrations, a website registration requires you to submit a deposit (which is a sample or example of your art) to the Copyright Office. Creating a website deposit is not technically difficult, but the process can be time-consuming and a little confusing for first-timers. You have a couple of options in how to prepare a website deposit:

  1. Submit a printout of every webpage of your website
  2. Burn a copy of your entire website to CD, and also submit printouts of five example webpages of the website

Easier said than done. Just hitting "Print" from your web browser produces a printout that looks very little like the web page you see on the screen. In order to preserve the formatting of the webpage on a hardcopy, the easiest method I know is to make a screen capture of the webpage, and then print the resulting image file. For lengthy webpages I used to fire up Photoshop to stitch multiple screen captures into a single long image file, but there are now add-ons to Firefox and Chrome web browsers that allow you to capture the whole page in one image. Make sure each page has the copyright notice (example: Copyright © 2013 ArmillaryIP) displayed, usually in the webpage footer.

For the website CD deposit, it's easiest to use website copier software to save the whole website to a folder. There are many website copiers out there, but I've had outstanding results with the free WinHTTrack software. Once you have a local copy of the website saved to your computer, burn it to CD. Label the CD jewel case with the Title (example: XYZ website), author, and copyright notice.

 

The USPTO recently adopted significant changes to the patent registration process. If you are an inventor you may have run across the phrase "first to file", which is key to the new USPTO rules.

Let's first look at the old USPTO rule, which was "first to invent". Even if another inventor files for a patent before you, if you can provide evidence that you invented before they did, then you would prevail.

With the new "first to file" rule, it is a race to the Patent Office, because the inventor that files first will prevail. Even if you invented first, you would lose your intellectual property rights to the invention if the other invetor beat you to the Patent Office. We could argue the inherent fairness or unfairness of this new rule, but the operative effect for inventors is to "file as soon as you can".

Armillary's advice to inventors is to file for patent protection as soon as practical to preserve their intellectual property rights. A provisional patent application provides quick and inexpensive protection, and gives you a year to draft a polished non-provisional patent application for your invention.

 

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