Patent Related Work

If you want to create an invention and protect it, you need an experienced, licensed lawyer, registered with the U.S. Patent Office, and a lawyer who can lead the patent process. Applications include utility patent applications, design patent applications, plant patent applications, or provisional patent applications. We will consult you to inform you which of your inventions is available.

     I. Patent Application

If you want to create an invention and protect it, you need an experienced, licensed lawyer, registered with the U.S. Patent Office, and a lawyer who can lead the patent process. Applications include utility patent applications, design patent applications, plant patent applications, or provisional patent applications. We will consult you to inform you which of your inventions is available.

 A. Step 1: Patent Search

In order to determine if an invention already has a patent, we will search whether the invention is patent-feasible and has novely element to determine if it can be transferred to the patent registration process. If we believe that a patent is already registered for an invention that is the same or similar, you can save money and time by not applying for a patent. However, if your invention is very different from the ones before, we recommend that you go through the patent registration process. This comprehensive search is conducted in conjunction with the U.S. Patent and Trademark Office. In addition to determining patent possibilities, the search results provide additional useful and relevant information.  Typically, our company receives a per-case fee for searching patents with general complexity, but it is charged per hour for complex patent applications such as computer software, electronic devices and business practices. Getting search results depend on the complexity, but it typically takes two weeks. The results include the pdf file of all previous articles and applications we have found, comments on the patent attorney’s patent availability, and writings of the client’s invention, which comprises of the comparison to the previous items we have explored.

     B. Step 2: Patent application and procedure

If the invention is determined to be patentable, an application will be completed. Progress time and charges can vary depending on the complexity and technology of the target. The typical cost associated with our regular utility patent application starts at $8,000. This includes the cost of applying for the first time to the U.S. Patent and Trademark Office and the creation of a drawing. Many other lawyers charge these two separately so you can save a lot of money if you decide to hire us. We will write patent applications that can make you win over your competitors, increase your enforceability, and quality application that is appropriate for protecting your invention in court. Approximately six months to one year after the application is received, the United States Patent and Trademark Office will issue a notice to approval or rejection. Typically, the United States Patent and Trademark Office asks you to make various corrections in your application. Meanwhile, we will prepare practical claims that can overcome the refusals. Applications can only be approved if they are well-addressed with the United States Patent and Trademark Office’s request. As soon as your application is received, you can use the phrase “patent pending” in your invention as a warning to others. This mark may be used to inform prospective patent infringers that they are liable for damages after a patent right has been issued. Note: If you want to protect the appearance of an invention rather than a function, a “design patent application” is more appropriate than the “utility patent application” described above. Design patents are simpler than utilityl patents. The cost of filing a design patent application for our company is $3,000 and it includes the cost of filing with the U.S. Patent Office. We have been directly applying for several overseas patents through the Patent Cooperation Treaty (PCT). Applying for an overseas patent is complex and expensive. Please call for consultation and a quote.


     II. What is an opinion letter?

There are different types of opinion letters such as Freedom to Operate, Infringment, and patent posibilities. Generally, customers will receive infringement letters and need to know the next steps in response to a patent infringement lawsuit. We recommend you to consult with competent patent attorney. Legal opinions have a positive effect in that it prevents you from bigger loss and save attorney fees. Many cases have shown that you can get a good result if you follow effective litigation strategies and practices from patent attorneys. Our opinions are thoroughly prepared, and it also includes strategies of how to defend against potential competitors and possible perspective of a federal judge’s scrutiny.

To avoid costly consequences……. U.S. Patent Law and the U.S. Court of Appeals for the Federal Circuit impose appropriate attention obligations on companies that have infringed patents. If you do not meet your obligations, under Section 284 and 285 of the U.S. Patent Law, the court may charge three times the actual damages and attorney’s fees to those intentionally infringed the patent right.  A thoroughly written opinion helps companies avoid these costly consequences.

Independent legal opinion… With our experience and judgment, we provide high-quality potential infringement and validity opinions for our corporate clients. Our experience in preparing, enforcing, drafting opinions, fighting in litigation and appeals will help you when you’re in a real case or threat.

  1. Patent Search


  1. Notice of Rejection from U.S. Patent and Trademark Office

When a patent application is filed with the U.S. Patent and Trademark Office, a patent examiner is assigned to the application. First, the examiner will determine whether all required formats have been met, and the second is to determine whether the application is novel from the perspective of the patent currently filed and registered. If the examiner finds a reason to reject the application, a notice of refusal will be issued.

You will receive your initial notice at least a few months after you apply for a patent. Generally, depending on the application submitted prior to the USPTO and the workload of examiner, you will receive initial notice after one year from the date of initial filing.

If you have appointed an attorney, all USPTO notices will go directly to your attorney’s office. When a notice of refusal is issued, the attorney and client will work together to discuss the scope of the denial and how to resolve the denial. Notice of rejection is a common thing, and you will receive a notice of refusal at least once, especially in the case of a utility patent application. We have successfully resolved the rejection by countering the denial or amending the application to resolve the reasons for the rejection. In particular, in the case of a second rejection notice or a final rejection notice, conducting a telephone interview with the examiner is very effective in resolving the rejection.

Even if you have not filed a patent application with us in the first place, please contact us if you have any questions regarding the USPTO’s notice of rejection.

  1. Design Patent Application


Design patents are valid for 15 years from the date of issuance.

Judgment on design patent infringement.

Egyptian Goddess, Inc. v. Swisa, Inc. ruled that the Federal Circuit Court set a new standard for patent infringement. The Federal Circuit Court ruled that patent can be infringing if it looks “substantially similar” in the eyes of “ordinary observer”.

  1. International Patent

International Patent Application and Patent Cooperation Treaty (PCT)

Because jurisdiction is established, Patent applications are only accepted in the country in which the application is filed. Therefore, in order to have a patent right in another country, you must apply for a separate patent in that country. Application for a foreign patent is complex, so below we will look at some of the strategies you can consider after applying for a patent in the United States.

     I. Why apply for an international patent?

Patent applications submitted in the United States are only effective in the United States and are not internationally accepted. In order to obtain an international patent right, you must apply directly to each country because each country has different patent laws. But instead, you can obtain patents in multiple countries with a single patent application through the Patent Cooperation Treaty (PCT). We’ll explain this in more detail below.

So why apply for an international patent? The main reason is to be protected in other countries where you are doing business or intend to do business in the future. By filing a patent application and registering a patent in a country where you do business, you can exercise a patent right against a patent infringer or use it to file a complaint. It can be of political importance, especially if you’re doing business with the government.

     II. Which countries should I apply for a patent?

Simple patent applications can be made in countries where you wish to enforce a patent, but there are also a number of other considerations. The first thing to consider is the country where the transaction takes place, where the consumer sits or where the production is currently in business. Other considerations include where the competitors are located and the countries in which the patent can be used for aggressive purposes, or countries that will earn money through licensing or sales.

In reality, however, because the cost of applying for a foreign patent can be very high, cost-benefit analysis must be done, and it should be taken into account that all countries and jurisdictions have a sophisticated patent system that can realistically enforce patent rights. A company’s overall patent-related goals must be consistent with the company’s budget, analysis of patent jurisdictions, competitors or licensing targets in that country, and time constraints that make patent application impossible after a certain period of time. With respect to the application period, the Patent Law is particularly sensitive to the period restraint, so it may not be possible to apply at all if you fail to apply within the specified time frame abroad. The application period will continue further below.

In general, however, most companies see the United States and Europe as the most important countries in patent applications. Other countries that need to be applied may vary depending on the type of invention you want to protect. Medical equipment is mainly patented in Europe, Japan, China, Korea, Canada, Mexico, and Australia, and “technology” patents are generally made in Europe, Korea, Japan, Taiwan, India, China, Canada, Brazil, Russia, and Australia.

     III. How do you apply for an international patent?

     A. Apply patents directly from other countries

If you decide to apply for a patent in one or two countries, we recommend that you apply directly to that country. This must be done within 12 months from the date of the first U.S. patent application. Some people first apply for U.S. patent, and apply for international patents after receiving permission to apply for foreign patent. Due to the cost of applying for a patent, the translation fee, and the necessary patent attorney or agent’s cost to the government, foreign patent applications can become very expensive. So if you want to apply in multiple countries, applying for a patent directly in those countries can be costly and time-consuming. In this case, the Patent Cooperation Treaty (PCT) may be a good alternative.

     B. Patent Cooperation Treaty (PCT)

Instead of applying directly to countries, you can streamline the international application process through the Patent Cooperation Treaty. If you submit a single patent cooperation treaty application within 12 months of filing a U.S. Patent Application, you may have a priority date for all Patent Cooperation Treaty members. For example, if you want to protect a patent in six different countries, you can apply for just one patent cooperation treaty application on the premise that all those six countries are a member of the Patent Cooperation Treaty. This will give you priority date for U.S. patent applications in each country. Refer to the patent cooperation treaty member countries ( The National Stage Application for Individual Countries is available within a total of 30 months (31 months in some countries) from the date of application for a U.S. patent. The biggest benefit of this is that you can postpone the deadline if you have not fully decided which countries you want to have your patent protected. If you do not currently have a budget to apply for a patent in multiple countries, you can keep your rights for 30 months by filing a single Patent Cooperation Treaty (PCT) application, and you can determine which countries you want to file for a patent. Note in the Patent Cooperation Treaty (PCT) that at least one of the patentees or inventors must be a U.S. citizen or resident, and if not, the application for the Patent Cooperation Treaty (PCT) must be filed in another country.

     IV.  When should I apply for an international patent?

This is probably the most important thing. In general, international applications (or application for a patent cooperation treaty) must be made within 12 months from the priority date of the U.S. patent application. Therefore, if the first application is a U.S. utility patent application, it is 12 months after the filing date. Assuming that you have applied for a patent cooperation treaty within a period of time under the Paris Convention, you can benefit from the date of your previous application from an international application or a Patent Cooperation Treaty (PCT) application, just as the date of application for an international application will be the same as the date of the previous application. How will this affect provisional applications in the United States? If the application is filed first, it must be filed internationally within one year of filing the application. In the case of direct filing, you must obtain a Foreign Filing License before applying in a foreign country. However, the Foreign Filing License is not required to apply through the U.S. Patent Office if you apply for the Patent Cooperation Treaty (PCT).

If you have applied for the Patent Cooperation Treaty (PCT) one year before the date of application for a utility patent application (or application for a provisional application), you will receive an additional 18 months to apply for the National Stage Application in the designated country when applying for the Patent Cooperation Treaty (PCT).

There are several ways to apply internationlly, but here are some common ways:

(1) Filing a U.S. Utility Patent Application (Regular Application/Nonprovisional);

(2) After applying for the Patent Cooperation Treaty (PCT) within one year

(3) Following the national stage filing process within 30 months from the date of the first U.S. utility patent application application

  1. Track One examination of patent application

The patent process is generally complex, the risk of rejection is high, and it takes a very long time from the initial application to the last approval. In the United States, a utility patent application can take approximately three years to issue and sometimes even longer. However, the U.S. Patent and Trademark Office offers a variety of priority processing programs and other options that can be processed quickly. Currently, the most well-known is a track one patent examination.

Basic information of track-one priotized examination

Trackone prioritized examination is currently a pilot program, but it is the most popular way to expedite patent applications. Track one will apply for a utility or plant patent application as a “request” and can reach the final stage within 12 months. You can also apply for track one when applying for a continuation application and an RCE application. Until 2018, the average time it takes to receive the first notice from the patent application is within two months, and within seven months from the patent application to the final stage (final rejection, waiver notice or notice of approval). Current application costs are $4,000, $2,000, and $1,000, respectively, depending on whether you are a large entity, small entity, or micro entity, including processing costs and basic application fees (see table below). The USPTO receives up to 10,000 requests each fiscal year. Track one is also limited to four independent claims and 30 dependent claims. What’s interesting is that the 2016 record shows a higher approval rate if you applied for track one. (84.9% v. 69.2%)

It should be noted that trackones expedites application process, so applicants also have to meet this pace, and if they don’t, the trackone will be cancelled. For example, when a track member’s priority examination is 1) applying for an extension of the period in connection with the application; 2) Immediately after the USPTO sent the “Final” letter; 3) When the applicant requests a reexamination request; 4) if the applicant appeals; Or 5) If the applicant modifies the application in excess of four independent claims and 30 dependent claims, it will be cancelled. In addition, track one is not possible in the case of us national phase entry (originally filed in a foreign country and then entering the U.S. domestic stage as a priority date for a foreign application) or in the case of re-issuance applications, initial design patent applications, pending applications, and reexamination procedures. However, as mentioned above, track one can be used to request for RCE and re-examination.

Requirements when applying for track one

The USPTO receives up to 10,000 track one requests each fiscal year.

You can check the status in the following link. USPTO

Other requirements include:

Track one request must be requested on the same date as the patent application date. If you wish to request a track one after filing an application, you must apply it with request for continued examination and pay all application and track-one costs;

(2) specification, drawings, claims (multiple independent claims are not allowed, and cannot exceed four independent claims and 30 dependent claims);

(3) The inventor’s declaration and application paper;

(4) the cost of the application to be described later;

(5) Priority examination costs;

(6) Processing costs

Check USPTO Link

The cost of utility patent application with track one examination by USPTO as of June 2020.

Cost detail Micro Entity* Small Entity Large Entity
Utility Patent Filing 430 USD 785 USD 1,720 USD
Request for prioritized exam 1,000 USD 2,000 USD 4,000 USD
Processing Fee 35 USD 70 USD 140 USD
Total cost (excluding fees for excessive claims) 1,465 USD 2,855 USD 5,860 USD

Cost Summary :

Utility Patent Application fee incl. Attorney, Drawing & USPTO fee: $8,000 in total.

Design Patent Application fee incl.Attorney, Drawing & USPTO fee: $3,000 in total.

Additional ways to get patent issuance faster

There are several ways to expedite the examination process, such as accelerated examination, patent prosecution highway/PPH, and expedited examination for a design patent application. You can compare them in You can also check patent’s progress by simply contacting the patent examiner. Examiners often process large numbers of patent applications, but they might check your application first if you request for your patent’s progress.

Similarly, if there is any uncertainty on both sides after receiving the U.S. Patent Office notice, it may be helpful to ask the examiner for an interview. You will not be charged for requesting an interview, and the acceptance of the interview will be left at the discretion of the examiner after the final notice. However, the request will generally be accepted before that. Talking to an examiner about a notice can help you get a notice of approval quickly.