Harrington & Harrington

Schedule Of Rates And Minimum Fees

PATENTS

Note: All fees are in United States dollars

TRADEMARKS

NOTES

1. There are several types of searches which may be performed with regard to patents. These may be classified as patentability, infringement, computer searches, or literature searches.

   The patentability search will involve a small search which, like most small searches, bear not much of a statistical relationship to what is available in the world. However, it is clear that "what is out there" is huge. The probability of finding the closest reference is always extremely low unless you are willing to spend many thousands on the search. A British trade journal article published in India in 1953 and properly cataloged at the University of New Deli is just as good as a reference against a patent application as a patent or magazine article of several years ago.

   An infringement search is completely different since the task you are attempting to determine whether or not a specific item or process infringes a patent which is currently in force. As a result, the search will only extend as far in the past as the oldest valid patent. However, the search centers on the claim language of the patents searched. Typically an infringement search may yield several patents as candidates. Next the patents and claims are studied with respect to the item or process. If there is uncertainty, the file histories of the patents are ordered to further verify the exact meaning of the patent. The result is an opinion by the patent attorney stating whether or not there is likely to be literal infringement, as well as infringement by equivalents.

   Computer are available, however these will probably not correlate with the search the Examiner would do. It should be remembered that in mechanical and electrical cases it is easy for inventors to contrive their own terms. A circuit which is called a reset circuit in one patent will be called a restart circuit in another patent. Since computer searches are based upon the words in the patents, in addition to other criteria, any computer search has a significant chance of missing the most pertinent patent. Computer searches can provide additional helpful information in forming more complete invention parameters.

   A literature search is an expanded search which is typically not limited to a patent data base. Since it can be so open ended, the requestor will typically specify how much searcher time/computer cost is to be spent. Often it is desirable to do this in stages so that the general progression of the search can be monitored as the search either produces more and more valuable leads, or simply leads to nowhere. This can be done both with regard to U.S. patent and other data bases. Other patent data bases more often searched include Europe and Japan.

2. The costs for preparation of a utility patent varies depending upon the number of pages needed to describe the invention, the number of claims needed to adequately claim the invention and the number of drawings, if any, required to illustrate the invention (remember that all drawings must be described and that more drawings will create the need for more description). The utility patent application includes a background, summary, brief description of the drawings, detailed description, and claims written in a specialized format. One objective measure of the attorney fee cost is dollars per page of patent application including the claims and abstract. This should cost no more than $190 per 8= by 11 inch page, double spaced. Rarely can even the simplest patent application be adequately expressed in less than 15 pages, and a simple patent seems to average about 20 pages to cost a total of about $5000 in preparation fees. Costs will typically include $575 as the government filing fee for an applicant having less than 500 employees, including Express Mailing and the costs of drawings.
   
3. A design patent fee covers one embodiment with nor more than top, bottom, right, left, front, back, and a perspective view.  Additional aspects, such as covers that open, or housings which have internal features, will cost more for additional drawings and description.
   
4. In addition to the amount quoted as an attorneys fee, will be the cost of the foreign filing associate (not including translations), and correspondence and mailing. This number can vary from about $2000 to about $3500 depending upon the country and the prevailing currency exchange rate. The main cost, on average, for filing foreign arises where a translation into a foreign language is necessary. The cost of the translation is of course dependent upon the length of the case. For example, a Japan application may total over $8000.00 just for filing, while a Canadian application may be possible for $3000.00 or less. Each foreign transmittal by Fed Ex costs from $75 to $150.

   A PCT application is a treaty filing, whereby member countries enable applications to be filed at a later time and still claim the benefit of the original filing date of the first filing. The advantage is to delay the necessity to begin specific filing activities in a variety of countries. Typically this may be done to enable the applicant to get a better idea of which countries have a good market and will ultimately be selected for local filing. One catch is that you have to select the "possible" countries at the time of filing, but can simply not file in a country if it is ultimately not an interest.

   Further,. It must be remembered that not all countries are PCT signatories, and therefore PCT is not available in all countries. The PCT countries include more than Armenia, Austria, Australia, Barbados, Bulgaria, Brazil, Belarus, Canada, Switzerland and Liechtenstein, People's Republic of China, Czech Republic, Germany, Denmark, Spain, Finland, United Kingdom, Georgia, Hungary, Japan, Kenya, Kyrgyzstan, Democratic People's Republic of Korea, Republic of Korea, Kazakhstan, Sri Lanka, Lithuania, Luxembourg, Latvia, Republic of Moldova, Madagascar, Mongolia, Malawi, Netherlands, Norway, New Zealand, Poland, Portugal, Romania, Russian Federation, Sudan, Sweden, Slovenia, Slovakia, Tajikstan, Trinidad and Tobago, Ukraine, United States of America, Uzbekistan, Viet Nam, and Mexico, and more.

   The European Patent Office may be elected as a single election which would include the countries of: Austria, Belgium, Switzerland and Liechtenstein, Germany, Denmark, Spain, France, United Kingdom, Greece, Ireland, Italy, Luxembourg, Monaco, Netherlands, Portugal and Sweden and more. (however, see below about the waiting times)

   Further, an election of a second group of "lesser" countries may be elected, known as the OAPI group and including Burkina Faso, Benin, Central African Republic, Congo, Cote d'Ivoire, Camaroon, Gabon, Guinea, Mali, Mauritania, Niger, Senegal, Chad and Togo. A third group of even lesser countries has been added including Kenya, Malawi, and Sudan.

   From a financial standpoint, if 3 or more European countries are to be elected, the European Patent Office group should be elected to cover the European grouping, as it may be more economical to use the European Patent Office group rather than to elect European countries individually from the main group.

   The PCT application must be filed within one year of the first patent filing to claim priority on that date. A PCT application claiming no priority may be filed more than a year after the first country filing provided that the first country patent has not issued and that there is no publication regarding the invention.

   Most properly done, the PCT application will be filed within 1 year of the first country filing and claiming priority on such date of first country filing. The filing of a PCT application will extend the time for filing in each country selected (whether by group or individually) to a time (for most countries) of 30 months from the priority date.   Many people wait until the 10th or 11th month after their first country filing to file the PCT application. Assuming that the PCT application is filed during but before the termination of the 12th month of their first country filing, the initial effect of PCT filing is to extend the necessity to file in each PCT elected country by 18 months.

   However, before the 18th month after the priority date, an applicant has an opportunity to request an international examination, and thus enter what is known as "Chapter 2." (required in only 3 or so countries) This filing must be accomplished before the 18th month after the priority date, but only 3 or so countries still require it..

   One who files a PCT application without an earlier priority date, takes the filing date of the PCT application as his priority date. This has the advantage of setting longer than the 18th and 28th month time periods from the date of the PCT filing, but carries the disadvantage that other patents, inventions, filings by others, etc. which occurred after the first country filing, but before the date of the PCT filing, will operate to deny or restrict the PCT applicant's patent.

   The cost for the PCT application will depend upon how many country "boxes" are elected..   This pricing aspect has been generally eliminated such that all filers generally elect all possible countries.  The attorney charge for a PCT filing, roughly, is $1500 plus costs. The costs currently include a cost of  a little over $2500 (depending upon the length of the case) as recently the max out level of countries has dropped. Congress changes (raises) these costs from time to time, but moreover, currency fluctuations can create price changes usually on short notice.

   It may be helpful to think of all patent applications ( but especially the PCT) as an option or insurance policy against success.  Filing a PCT or foreign application typically keeps things open for a time.  The applicant should also consider the need to form closure and get an issued application in a single country.  In 2006-8, the period until first examination for an EPO patent is about 6-8 years.  Filing directly into Germany can yield a completed allowed patent in about two years.  So,   where money is an issue, it may be cheaper to file an EPO patent and keep all of Europe "alive" for 6-8 years (as well as the cost for annual maintenance during the waiting period).  Where an issued  patent is needed "immediately" it may be more advantageous to file in European countries separately to take advantage of the quicker allowance available in the individual countries.

5. Incoming patent communications must be docketed to ensure that they will be answered in time and the alternatives provided to the client by letter. This charge covers both of these matters, including the making of copies of the cited patents.
   
6. Since the changes to the rules which now require a potential patent period of 20 years from the date of filing, any file wrapper continuation will not further the patent period into the future. File wrapper continuations are becoming less used unless the original filing date reference must be maintained. When the original filing date is maintained, the 20 year term of the patent is computed from such original filing date. Where possible (where there are no statutory bars), a new case would be filed instead of a file wrapper continuation.
   
7. This includes making out the issue fee papers and checking to make sure that the drawings are in order, and submitting the issue fee check with mailing statement.
   
8. An assignment is drafted reflecting the transfer of ownership and in the proportions desired.
   
9. This minimum cost reflects the complexities which must be considered in a license, including a specific structuring of the mechanism to yield the maximum benefit to the client.
   
10. This is believed to be the most complete action that can reasonably be taken to try to reveal the possibility as to whether someone else may be using a trademark you selected and to what extent you may be in danger of infringing someone else's mark. A full state, federal, common law, and business name search is accompanied by an analysis and attorney's opinion.
    
11. This Preliminary Search is performed on computer and includes the federal and state databases as well as more than 10 million business names in North America. No attorney's opinion is given. The searcher selects up to of the 10 most pertinent marks and up to 10 of the most pertinent business names based upon the information supplied.
    
12. The statistical search is an attempt to look across all classes and to find out how many matches and partial matches there are for the word. For example, the word "delta" would be sought in all combinations, along with about 9 other words. All other things being equal, the one with the least amount of "hits" should be the one which you have formally searched (10), perhaps preceded by an Preliminary Trademark Search (11).
    
13. This fee includes the filing fee, docketing & notification, as well as brief telephonic communications to the examiner. Where a written response is required, additional costs will include docketing and reporting to the client by letter as well as the page cost for responding to the PTO.  However, the need to do outside legal research for a response is infrequent, and necessary only for unusual situations. Also not included is the time and cost for preparation of affidavits. One of the most significant reasons for docketing relates to note (16), the filing of the section 8 and 16 affidavits.
    
14. An amendment or statement of use is the mechanism for converting a case from an ITU (intent to use) case to a regular case either before allowance (amendment of use) or after allowance (statement of use), and is necessary before registration can take place.
    
15. In an ITU (intent to use) case, a statement of use is due within 6 months of allowance. An extension may be one of a series of extensions to further delay filing the statement of use. The extension periods may not exceed 24 months.
    
16. This is the most significant reason for docketing since these two items are applied for after five years of continuous use. The section 8 affidavit (showing continuous use) must be filed within 6 years of registration or the registered trademark will go abandoned. The section 15 affidavit (incontestability) is typically filed along with the section 8 affidavit and prevents those from having a use prior to the registrant from petitioning to strip registration based upon a prior use. It does not prevent a petition for cancellation for loss of control over the mark nor from the mark becoming generic.
    
17. A state trademark may be preferable where you have a business that will definitely not affect interstate commerce, or exceed state boundaries.
    
18. An assignment is drafted reflecting the transfer of ownership of not just the trademark (since an attempted assignment of a naked mark is an abandonment) but of other aspects of the business which will make the assignment effective.
    
19. An opposition is necessary where a competitor has filed for a U.S. trademark and you wish to oppose/prevent the issuance of their trademark based upon damage to your prior rights. A petition to cancel registration is similar to an opposition, but the mark has been registered.  A replinishment provision at the indicated level will be required.

         
      
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