FAQ

The information on this page is not legal advice. It is provided for informational purposes only. Because of its brevity, this information can only discuss complex legal issues in general terms. The information here may not be applicable to your individual situation. If you wish to make a business decision, please employ the services of a patent agent or patent attorney.

Q. What is the difference between a patent agent and patent attorney?

A. Patent agents and patent attorneys are both patent practitioners. Both have equal standing before the USPTO to prosecute patent applications. Only patent attorneys, however, may offer advice about patent infringement, represent a client in court, or draft a license agreement. If your needs are restricted to those of patent prosecution, then you may experience considerable cost savings by employing a patent agent.

Q. How do I obtain a patent in multiple countries?

A. The USPTO offers a brief overview here:

Basically, patent protection must be sought by separate applications within the individual countries. However, most countries are signatories of the Patent Cooperation Treaty (PCT), which streamlines the process of obtaining these individual national patents. A properly filed PCT application can be part of the process of obtaining patent protection in these countries.

Patent protection may be obtained in Western European countries through a single procedure before the European Patent Office.

Another option is to follow the Paris Convention.

Q. How much does it cost to prosecute a patent?

A. There are basically two categories of expenses for prosecuting a patent. The first category is the expenses involved in the preparation of the patent (including the services of the patent practitioner). The second category is the fees that must be paid to the USPTO itself. You can find a list of USPTO fees at: http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

Q. What is the America Invents Act (AIA)?

A. The AIA is a comprehensive overhaul of United States patent law which took effect in September 2012. Though it simplified the patent application process in some respects, it made it more complicated in others. In general, patent applications submitted before March 2013, but with exceptions, remain subject to previous patent law. Some of the changes introduced by the AIA include:

• A transition from a “first inventor to invent” system to a “first inventor to file” system, while still maintaining a grace period for public disclosure.
• A new definition of prior art.
• Assignees are more easily able to prosecute a patent application.