What is a patent?
A patent is a government, time-limited grant to an inventor for the exclusive right to make, use and sell an invention in the United States. The patent statutes generally provide for three types of patents: utility (the most common), design and plant. With a few exceptions, a United States patent is enforceable for 20 years from the earliest application filing date. Enforceability begins on a patent's issue date. Generally, in order to obtain a patent that is enforceable in a foreign country, one must file a separate patent application in that country.

What inventions are patentable?
There are generally four types of "things" that are patentable in the United States: processes, machines, manufactures, or composition of matter. However, almost all things created by man are patentable including computer implemented business methods. Notable exceptions are human beings, naturally occurring things, mathematical algorithms, mental steps and, in some countries, games and software.

What standards must the invention meet?
Inventions must meet the "four doors to patentability" in order for a patent to be obtained. The "four doors" are: 1) utility (most inventions meet this easily);
2) novelty – the inventions must not have been done before; 3) non-obviousness to one having ordinary skill in the art to which the subject matter pertains at the time of the invention; and 4) adequacy of disclosure to the public.

How is a patent obtained?
A United States patent is obtained from the United States Patent and Trademark Office (USPTO) in Washington, D.C. Initially, a patent application is filed at the USPTO. At this point, the invention is "patent pending." A Patent Examiner reviews the application and searches the prior art (i.e., pre-existing patents, pending applications, articles, etc.) to determine whether the disclosed invention meets the "four doors of patentability." Frequently, the Patent Examiner will find prior art that he/she believes makes the invention non-patentable. The applicant is then given at least one opportunity to amend the application and/or argue against the Patent Examiner's findings.

Why pursue a patent?

• A patent is the only way that one's "ideas" that are going to be publicly known can be protected.
• A patent allows you to prevent others from duplicating your processes, manufactures, etc.
• A patent or pending patent provides you with protection when marketing your invention to others that they will be unable to duplicate your invention without your having a remedy.
• A patent provides you with protection against competitors that could otherwise "reverse-engineer" your product to produce a substantially duplicate product.

Other important limitations:

• In the United States, a patent cannot be obtained on an invention that has been on sale or sold, publicly used, or described in a printed publication more than one year prior to the filing of the patent application.
• Most foreign countries have "strict novelty" requirements. This means that the invention cannot have been publicly disclosed, on sale or sold anywhere prior to filing a patent application. Hence, disclosure of the invention prior to filing a patent application in the United States can result in the loss of foreign patent rights in many countries.
• In most foreign countries, once a United States patent application has been filed, a foreign application must be filed within one year for the inventor to be granted the same "priority" filing date of his/her United States patent application.

Search & Opinion
HW strongly recommends a patent search to determine the likelihood of success of obtaining a patent prior to filing a patent application. Obtaining a patent is a business risk, a patent search reduces the risk that patent coverage will not be obtained after thousands of dollars are spent. To have a patent search conducted, HW sends your disclosure to a professional patent search firm in Washington, D.C. which conducts a patent search at the USPTO. Once HW receives the results, we provide you with a patentability study, i.e., an analysis of the patents or documents found and what we believe is the likelihood of obtaining a patent.

Estimated Cost for Patentability Search and Opinion: $_____ .

Retainer required to begin work: $ _____.

Utility Patent Application
HW prepares a patent application for you. Once the application is filed with the USPTO, you can label your invention as "patent pending." Preparing a patent application includes: a study of your disclosure and, potentially, further discussions with you regarding your invention; preparation of the actual patent application which includes a detailed disclosure of your invention and at least one claim; and preparation of necessary documentation such as a power of attorney/declaration of inventorship, and a prior art disclosure statement (if required).

Estimated Cost to File a Utility Application: $ _____.
This fee does not include the government filing fee currently set at $_____ . Additionally, drafting services may be required. Where a draftsman is required:

Drawings: About $_____ per sheet.

Assignment, if necessary: $ _____
This fee includes a government filing fee, currently set at $40.00.

Retainer required to begin work: $_____ .
The balance will be due when the application is ready for your signature, i.e., just prior to filing.

An application is normally ready for review about 4 to 6 weeks after we first meet unless otherwise agreed. Please note that the above estimates are determined by the invention information provided to date, our experience in preparing similar patent applications, and our present hourly rates of $_____ . Alterations or additional embodiments of the invention and additional legal advice will result in higher costs.

Duty of Disclosure
United States Patent Rules require that patent applicants disclose all information which is "material" to patentability. Indeed, secreting information relevant to patentability may lead to unenforceability of an issued patent. Accordingly, HW urges clients who are filing a patent application to disclose all relevant information that they are aware of to us (e.g., patents, publications, disclosures by others, etc.) so that we may submit them to the Patent Office.

Patent Application Publication
United States patent law requires publication of all U.S. patent applications 18 months after the filing date. However, applicants who do not intend to file their application in a foreign country or internationally can request that the application NOT be published. Please be aware that if we request non-publication for you and you later decide to file in a foreign country or internationally, the Patent Office must be notified no later than 45 days after the foreign or international filing or the U.S. application will be considered abandoned (unless the delay can be shown to be unintentional).

Patent Prosecution
Almost all patent applications go through a negotiation process with the Patent Office to come to agreement on patentability. This process is called "patent prosecution." Generally, patent prosecution begins when a written correspondence, called an "Office Action," rejecting some or all of the claims in the application is received from the Patent Office. It is not uncommon for more than one reiteration of negotiations to be conducted, i.e., more than one Office Action is received over time. The first Office Action can normally be expected about 9 to 18 months after filing the application. When the first Office Action is received by HW, an analysis of the Office Action is conducted and a recommendation letter is prepared for the client including an estimate of the cost to respond to the Office Action.

To prevent delay in responding to the first Office Action, a $_____ retainer is requested at the time the application is filed so HW can analyze the Office Action and prepare the recommendation letter. This retainer also covers reminders regarding foreign filings.

Responding to an Office Action, normally includes a written Office Action response, sometimes called an "amendment." The response may revise the patent application and/or rebut rejections made by the Patent Office. If necessary, negotiations may also be conducted by telephone or personal interview with the Patent Office.

Estimated Cost of Responding to an Office Action: $_____ for each response.

In some applications, other services such as restriction requirement responses, appeals to the Patent Office review Board, interference proceedings and affidavits, may be necessary. The above estimates do not include fees for these services. When these services become necessary, HW will provide estimates to you.

Patent Issuance
When the Patent Office decides to issue a patent, HW receives a Notice of Allowance and Issue Fee Due Notification which will be forwarded to the client along with a request for a retainer of $_____ . The retainer covers the government issuance fee (currently set at $_____ ), patent copies, HW time to prepare the necessary documentation and disbursements. If the application is published, the request for retainer will be for $_____ , which includes the additional government publication fee. If drawing revisions are necessary, an additional $_____ per sheet will be charged for formalizing the drawings.

Maintaining a United States Patent
Once a patent issues, it is subject to maintenance fees before 3.5, 7.5 and 11.5 years. Failure to pay the maintenance fees leads to expiration of the patent. Reminder notices for these fees may be docketed, free of charge, upon request.

Foreign Patent Rights
Generally, a United States Patent does not create any rights in foreign countries. Accordingly, foreign rights can only be obtained by applying for a foreign patent. Priority to an earlier United States application can be claimed if the foreign patent application is filed within one year of the U.S. application. HW partners with various foreign agents to handle foreign filings. Estimates for filing in foreign countries can be obtained upon request.

Disclaimer
The fees quoted in this document are estimates only. Due to the varying complexity of inventions, the actual fees may be more or less. In addition, many of the estimated fees include government fees that are adjusted annually by the USPTO and vary according to the content of the application and the status of an applicant as a small or large entity under the Patent Rules. HW also partners with other professional companies to provide some of the services described. Therefore, HW reserves the right to adjust these estimated fees in response to adjustments in the government fees and professional partner fees that are charged to HW.

Confidentiality

Hoffman Warnick LLC shall not sell, use, or disclose the ideas submitted by the client without the client's prior written permission.