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After you file the application (and filing fees alone account for a significant chunk of the initial cost), you'll have to deal with an Examiner at the U.S. Patent & Trademark Office. Your application will sit in the "In" box at the PTO for a year or two, but when your Examiner finally gets around to looking at it, she'll probably issue a rejection, in the form of an Office Action. This is basically a letter explaining what the Examiner found while looking for prior art on your invention, and why what you've claimed isn't patentable. You have to respond to this letter by a deadline that's listed in the cover papers. If you fail to respond, your application becomes abandoned, and you won't get your patent. Your response may explain why the Examiner's analysis is wrong (perhaps she misunderstood your invention, or picked prior art that isn't applicable). Or, if the rejection is legitimate, you may have to amend your claims to cover a smaller improvement that you've made over the prior art. You don't have to pay the PTO to file this letter (except possibly late fees, if you don't respond quickly enough) but if you've hired a lawyer to help you, you'll probably have to pay for the lawyer's time to analyze the Office Action and to prepare the response. After the Response to Office Action, the Examiner will take another look at your application in light of the arguments and amendments you've made, and may:
A "Final Office Action" means that your arguments and changes weren't enough to persuade the Examiner that your invention is patentable. You have a few options now: you can give up; make further changes and re-file your application with a Request for Continued Examination (more filing fees apply); or start an Appeal. An appeal is essentially a request to the Patent Office to have more-experienced Examiners review your Examiner's work -- you're saying "I think my Examiner made a mistake!" An appeal costs about the same as an RCE in filing fees, but the paperwork involved is more complex, so it's more expensive if you hire a lawyer to prepare it. After an appeal, your application may be rejected by the more-experienced Examiners (for the same reason as your Examiner stated, or for a different reason); the Examiner's reasons for rejection may be overturned (sending the application back to the Examiner), or (often) the Examiner will pre-emptively start looking at your application again, and issue a new, non-final Office Action. As you can see, this process provides plenty of opportunities for the Patent Office to keep you spinning your wheels and paying your lawyer. They aren't supposed to do that, but the way the PTO systems are set up makes it easy for that to happen. |
