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US Patent Protection

IN THE GLOBAL MARKETPLACE

David Fogg
Fogg & Powers LLC
Minneapolis, MN
www.fogglaw.com

Overview
Patent Basics
US Patent: Benefits
Obtaining a US Patent: Process
Cost of a US Patent
Patents in an International Marketplace
Conclusion

Patents: basics
Patents are granted by national governments.

Enforceable only within the country that grants the patent.

The same application can be granted in multiple countries.

International treaties

Paris Convention

Pakistan is a signatory

1 year rule: Treated as if filed on same day as application filed in Pakistan.

Helps spread out expenses

Patent Cooperation Treaty

Pakistan is not a member

International Application

2.5 years to file national applications in selected countries

US Patent: Benefits
Asset: sell, enforce, or pledge.
Mark product: Patent Pending.
Patent is a negative right the right to exclude.

Prevent others from making, using, selling and importing in


the US.

Collect royalties.

May require litigation.

20 year patent term: measured from filing of


application.

Obtaining a US Patent: Process


Provisional patent application: no enforceable rights.

One year period to file non-provisional patent application.

Non-provisional patent application: Steps

File Application.

Receive office action (14-26 months; average 17).

File response.

Receive final action (allowance or rejection) (25-31 months; average 27).

Continued Examination (Average 57 months).

Appeal to Patent Board (Average 87 months).

Patent Allowance rate: between 50 and 80 percent.

Cost of US Patent
Attorney Fees

Filing: $5,000 - $15,000.

Prosecution: $2,000 - $10,000.

Usually hourly; most firms will consider fixed fee.

PTO Fees

Filing, search and Exam fees: $1,600.

Prioritized examination (Track I): $4,000.

RCE: $1,200/$1,700.

Appeal: $2,800.

Issue: $960.

Maintenance: $1,600 (4 years), $3,600 (8 years), $7,400 (12 years).

Small entity: 50% fee reduction.


Micro entity: 75% fee reduction.

Patents in an international marketplace


Business decision: How to protect investment in innovation

Market:

How big is the market?

Where will the product be sold? Manufactured? Imported?

Where will competitors sell, manufacture, or import competing products?

Budget: What budget is available to protect this investment?

Knock-offs:

How easy will it be for competitors to copy this product?

For some innovations, trade secret protection may be sufficient (e.g., Coca Cola).

Inventions that are readily copied may require patent protection.

How easy will it be to detect infringement?

Is this innovation protectable IP?

Conclusion
The decision on how to
protect an invention is
fact specific. You should
consult with a legal
professional before
making a decision on the
best course of action to
protect your valuable
investment. This
presentation is for
informational purposes
only and is not intended