• Bill Holmes

Filing the Utility Patent

The online showcase which was featuring a computer generated mockup of our product was live and getting a lot of traffic, but no contractual interest. I had several conversations with our account representative who informed me that it would be unusual for a manufacturer to express an interest in producing a product where the inventor had not secured their legal claim to it with a provisional patent. This was for two reasons: 1) If it the inventor didn’t protect it, then anyone could manufacture after one year without paying anyone any royalties and 2) If the inventor didn’t have faith in the product, why should they?

In retrospect, I realized that I was very optimistic about a manufacturer seeing the unique awesomeness of our product and immediately wanting to begin manufacturing! I learned a lot by going through the process of developing the online show case and filing the provisional patent, but I could have saved some money by skipping the middle man. Not quite an “internet shepherd”, but not far off.

I asked the account representative how I could go about filing a utility patent and she suggested that I use the company they used for the provisional. It was a reputable patent law firm who was familiar with my product, but she was careful to inform me that this company was one of several they used, and they had no affiliation with them at all. She provided me with the contact information and I sent them an email requesting a quote.

I also did an internet search and quickly realized that there were many law firms that did this type of work, so I reached out to several of them as well. Within a few days, I had email responses from everyone!

They were all eager to represent me and all sent price sheets. If you though purchasing this type of legal service was like purchasing a car – it is not! There was an initial filing fee which did not include USTPO fees and then a variety of ad hoc fees depending on how the USPOT reacted. If they accepted the initial patent, then all you owed was the filing fee – approximately $5000.00. If the rejected the filing for some reason, then it entered the “prosecution phase” which had several variations. Each with a different fee. After several discussions with different law firms, I determined that the worst case for legal expenses would be $10,000.00. I signed on with the law firm that we used for the provisional patent.

I was immediately contacted by a para-legal who took care of all the paperwork, got all the information about the product and made sure I paid. She told me that the attorney would contact me within a few weeks with a notification of filing. Since we were back to “hurry up and wait” mode, I went back to focusing on manufacturing.

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