Searching, Preparing & Filing
of Patent Apps at LERSON.COM
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Searching, Preparing & Filing
of Patent Apps at LERSON.COM
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Frequently Asked Questions (FAQs) on search, filing applications, prosecution of applications, maintenance and monitoring.
PREPARATION AND FILING OF APPLICATIONS
SEARCHWhy would I want to have a patent search conducted?Most inventors conduct patent and technology database searches regularly in order to gradually fuel and shape his ideas of new inventions. Once the invention has been made, it is prudent to conduct another round of search for patentability. The information uncovered during this search should give an informed inventor and his/her patent attorney some idea whether the invention is novel (new) and unobvious (possessing an inventive step). Quite often the inventor may need to add certain angles to the invention or determine an acceptable point of balance between restricting the claims somewhat in order to get a good chance for favorable Office Action vs broadening the claim to cover the subject matter but risking a long fight with the patent examiner. The search results should also be entered into the valuation (determination of the value) of the invention, which may dictate whether or not to file a patent application in any specific territory. What types of patent serch can be conducted?Three broad types of search are routinely performed. A patentability search is performed before appliying for a patent and is already explained in the above FAQ. The second type of search is focused on the possible infringement of other patents once you try to commercialize your invention. The third type of search is performed concurrently on hudreds or thousands of patent documents within the same narrow area of technology in order to conduct a strategic planning of the R&D Division or of the whole company. We have the expertise and experience in conducting all three types of search. How much does a patent search cost?The cost is determined by the type of search and how deep the search should be performed. For a simple patentability search, we charge a basic set-up fee to take care of our fix costs. The variable portion depens on how many relevant patents are uncovered. A typical search costs about US$900 per patent application, a figure that is on par with what are quoted by other search facilities. We have conducted a vast number of searches that cost as little as $50, though. Sometimes, clients would like us to identify technologies related to the patent application but have no bearing on the novelty or the inventive step. We have performed such searches that cost as much as several thousands US dollars. The most expensive search we have ever conducted was a patent document search and analysis to help a company devise its R&D strategy. The cost of this search and analysis was about US$120,000 but the result would pay for itself several times over. There are dozens of patent databases on the WWW that I can access for free. Why would I want to have someone conduct the search for me?There are indeed several good patent databases on the web that one can access at minimal costs. The advantages of having search professionals conduct the search for you have to do with the specialized database used plus the experience of the searchers. These two factors often help uncover important patent literature and other literatures related to your patent application. Unfortunately, specialized databases are costly and experienced searches are hard to find. We subscribe to a couple of specialized databases and employ a few full-time and part-time professional searchers who work on-line for us in the evening. We have a list of our standard databases that can be inspected on demand. If I want to perform the patent search myself, what is the best database to use?The most popular databases are perhaps the US Patent Database, the European Patent Office (EPO) Database, and the Japanese Patent Office (JPO) Database. Each database has its own strengths and limitations that you will soon realize after trying to conduct your own searches for a while. If I use the patent search service at LERSON.COM, what kind of guarantee will I have with respect to the exhaustiveness of the search. In other words, can you guarantee that I will get no rejection from a patent examiner?The patent search services here or anywhere else to our knowledge are offered without any warranty of any kind. Most of the time we find relevant patents and other documents that are useful to our clients. Occasionally, however, the patent examiner, by virtue of having access to much broader govermental and inter-governmental databases than we do, comes up with a prior art that could knock us out for a while. Recently, for example, we conducted a patentability search on an invention and found no problem. Our client then asked two independent search specialists in the United States to conduct the same patentability search just to make sure and they came up with nothing either. We decided to draft and file a US patent application. The US patent examiner, however, uncovered not one but two US patents that were extremely close to our client's invention. We are still in the process of arguing with the US patent examiner to get our patent application through with minimal modifications. If there is no guarantee, why should I bother to have a patent search conducted?Because it would be better than to do it yourself or not to search at all. In fact, it would be difficult, if not impossible, to draft the specifications without having a search conducted. How much surcharge does it cost to have a patent search conducted with guaranteed results, i.e. no rejection from a patent examiner?From our experience, we cannot guarantee no rejection from a patent examiner, no matter how much surcharge we are paid. A rejection does not automatically mean the patent application is dead. Most often it means the application has to be modified. The more the modification, the more cost it is to the client. A good search now can save you much money in the long run. How long does it take to conduct a patent search?It depends a lot on the scope and the depth of the search. A simple search on a simple subject may take one to two working days. A thorough search to map the technology and business profiles could take months. The biggest search we have ever performed took us 18 months to complete. Most of that 18 months was spent on analysis of the uncovered patents by experts in the technical field. How much surcharge does it cost to have a patent search conducted immediately?When you request a serch service, we will first estimate when we can actually start the search and how long the search should take. If you absolutely cannot wait in line, we can expedite your search by trying to have your search conducted by an outside search specialist who we have worked with (subject to availability). The surcharge is 30% of the total search cost. What about copyright search and trademark search?If we can do it from Thailand or we can locate suitable database or a suitable specialist firm, we can offer the service. For example, we can conduct Thai trademark search for US$150 per mark in a single classification. Trademark search in the Southeast Asian countries are conducted by our associate firms. We can have copyright and trademark (registered and unregistered) search conducted in several industrialized countries, notably the United States. We can also search new plant variety certificates in several countries. PREPARATION AND FILING OF APPLICATIONSHow much does it cost to prepare and file a Thai patent application?The cost for filing a Thai patent application is minimal. It consists of a government filing fee of about US$50 plus the attorney and handling fees of about US$50. That is only about US$100 per filing. For preparing a Thai patent application from scratch, we bill you by our hourly rate. The time it takes includes the actual patent specifications and claim drafting time plus the time it takes us to read your letter/fax/email in order to understand your invention disclosure and any drafts of yours, plus the time you meet with us (if any). If you already have a foreign patent or a foreign patent application, we charge translation fees plus drafting fees that should cost you much less than drafting from scratch. We also have flat-rate fees that is quite popular since you know exactly how much you will spend. For US $3,300 per application, we will have your foreign patent translated, redrafted and filed. We will also take care of the prosecution process up to the official publication of your patent in the Patent Gazette. Eeverything is included in the flat-rate fees. There are no hidden charges. Services rendered after your application is published will be charged to you at our hourly rate. Can I file my Thai patent application through the PCT system?You cannot file a Thai patent application through the Patent Cooperation Treaty (PCT) system for the time-being. Thailand is looking forward to becoming a member of the Paris Union in a few years. Being a Paris Member is a pre-requisite to becoming a PCT Member. Do I have to file a Thai patent application in person?You can file your Thai patent application in person but you do not have to. By appointing us as your patent agent, we can do the actual filing for you. Nevertheless, if you can afford the trip, we would love to have you come to Thailand for a vacation, which can possibly boost your inventive capacity. How long does it take to prepare and file a Thai patent application?Filing is quick. Preparation of the patent application depends on the complexity of your invention and the background material and search results we are provided with. Our recorded fastest turnaround was 2 days: one day for drafting and obtaining authorization from the client and one day for filing. Our slowest record took perhaps about a year. It took that long because we suggested the client to do some additional experiments to strengthen the patent application and it took them a few months to arrive at the results. This particular patent application flew through the prosecution process with ease. How much does it cost to prepare and file a foreign patent application?It depends a lot on the charges from our associate firms in the country of application. We only deal with reputable patent agents. They do not overcharge clients or risk losing the trust from other associate firms, which means losing business. What about trademark application?We have a flat-rate fee of $500 for a Thai trademark application (one mark in one classification) with discounts for multiple filing. Foreign trademark applications depends a lot on the charges from our associate firms in the country of application. For a simple trademark, the cost should be on the order of $1,000 per mark per classification.
PROSECUTION OF APPLICATIONSDo I have to sue the Patent Office to get my patent granted?Not in most circumstances! The term "prosecution" is not synonymous with "litigation" or suing in the court of law. Patent prosecution simply means the process of obtaining a patent, starting with searching the prior arts, preparing a patent application, filing the application, communicating with the patent office, paying fees, making requests, filing a counter statement to a notice of opposition, etc. The steps of searching, preparing the patent application and filing such application have already been covered. How long does it take to get a Thai patent application granted?You may have heard horor stories about having to wait for 10 years or more. That was the past. The Thai Patent Office (under the Department of Intellectual Property, DIP) has made a lot of improvement since its inception a decade ago. In 2001, we did an analysis of Thai patent statitstics and found that the majority of Thai patent applications took 1 to 2 years before patents are granted. It is seldom to have to wait longer than 5 years to get a Thai patent, except in some complicated cases with challenges from other companies. The fastest application process we have handled took the Thai Patent Office only 3 weeks to publish the application and less than a year to grant the patent right. Having a foreign patent for the same invention can speed up the substantive examination process (the process that comes after official publication) quite a bit. Why should I employ you to take care of the prosecution of my patent application?It is easier and hassle-free to have professionals take care of your choir. We communicate with the Patent Office on your behalf so that you are free to improve your invention or invent other new and useful stuffs. MAINTENANCE AND MONITORINGWhat do you do for maintenance?We remind you when to pay maintenance fees in order to keep extending the life of your valuable patent. What do you monitor?We monitor the Thai Patent Publication Gazette for any similar or identical patent publication and notify you of the fact. You then have to decide what to do in response, like filing an opposition. Can you also help find prospective licensee for my invention?Yes, we can advertise your invention on major technology warehouses and technomarts. We can also circulate brochures among our affiliates and hundreds of technology transfer offices around the world. Please let us know what you want us to do. |
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©2003 Lerson Tanasugarn |
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