Frequently Asked Questions

Kaufhold & Dix Patent Law has been practicing intellectual property law — patents, trademarks, copyrights and more — for over 20 years. Here are some of the more common questions we hear from inventors, artists and business owners.


Do I need a trademark, patent or copyright?

Intellectual property is typically protected by a trademark, a patent or a copyright, but each serves a different purpose and therefore different circumstances will lead you to one over the other. Generally speaking, trademarks are used to indicate a source of a good, while a patent would protect the good itself. Copyrights, in a nutshell, are used to protect original works of art.

What types of patent protection are there?

The two main categories of patent protection are design patents and utility patents. Design patents cover the ornamental features of an invention, i.e. what it looks like. Utility patents protect the article being manufactured or the method of either making the article or performing a particular task.

I intend on selling my idea, why do I need a patent?

If you intend on licensing your idea, you will generally need something filed or you have no property to license. Also, many larger companies would rather deal with inventors who already have a patent or have patent pending status. For this reason, they will often not sign a confidentiality agreement and will actually have the inventor sign their documents explaining that the inventor, if the inventor wants assurances of protection, should file for a patent. This is because a company may have similar products on the market or in research and development and they do not want to risk the inventor suing for misappropriation of the invention.

I intend on making and selling the device myself, why should I try to protect my idea?

If you intend on making and selling the invention yourself, patent protection may be the only barrier standing between you and someone else who wants to take your intellectual property. Many inventors are concerned that even if someone tries to take their idea, they could never afford the legal fees. However, stopping smaller entities from infringing is not as expensive as one may think and if it is a large company infringing, it will be worth the money to mount an infringement suit.

Do I need a prototype?

You do not need a prototype but instead only need to be able to explain to us how your invention works. In fact, the Patent Office, about 150 years ago, stopped accepting prototypes because of all the room they were taking up. That being said, the more able you are to fully disclose the workings and functions of your invention, the more thorough the resulting patent search and patent application will be. Often a prototype will assist you in perfecting your invention.

What is the process for obtaining a patent?

The first step entails speaking with a patent attorney and fully explaining to the attorney what your invention is, how it works, and how it designed. This may include providing the attorney with drawings, a written description and possibly photos or video if you have a prototype. At this stage you may request a prior art search and opinion be performed. If you decide to move forward with a patent application, your information will be forwarded to a drafter to draw the professionally rendered figures required for your application, though hand sketches may be used if the filing is a provisional application. The attorney will then write the patent application, send it to the client and the client will read through the document to verify that all information therein is correct. The application will then be filed and the client will have patent pending status. If the filing is a nonprovisional application, it will be reviewed by a patent examiner usually between 12 and 30 months after filing. The examiner will issue an Office action and the attorney will respond to the action(s). There are usually one to three Office actions before the examiner issues either a final action rejecting all of the claims or an allowance. If the examiner issues the final action, there are several options still available, including different forms of appeals, continued examination or filing new applications. However, as this final determination will usually be given two or more years after the filing of the original application, the inventor will by and large know whether or not there is ample reason to spend additional funds on further patent prosecution.

I can't find my invention anywhere, why do I need a patent search and opinion?

Usually before beginning the process of applying for a patent, it is a very good idea to have a professionally rendered patent search (prior art search) and opinion. Inventors will often use Google patents or the USPTO search engine to look for patents but each has its shortcomings. Most particular is that without the correct word choice or alternatives, many relevant documents will be missed. This is where a professional searcher comes into play. A searcher will further be able to find foreign references not easily found by Google and impossible to find on the USPTO database. Having a professional search performed may save the inventor thousands of dollars in legal and government fees if the search indicates results that negate any reasons for filing for patent protection.

What is the difference between a nonprovisional patent application and a provisional patent application?

In short, a provisional application can never become a patent because it is never examined by the USPTO. A provisional application is generally filed to establish a filing date and provide you with patent pending status for 12 months. If the inventor wants to potentially obtain a patent with the provisional's filing date, the provisional application must be converted to a nonprovisional application before it goes into abandonment at the conclusion of the 12 months. Unlike a provisional application, a nonprovisional application will be examined and can potentially become an issued patent.

What are the legal fees for filing a utility patent application?

At our firm, a complete service flat fee for filing a nonprovisional application will vary between $2900 and $6900 depending on the type of invention you have. The fee is determined before work starts. Because this fee covers what other firms break into separate billable services, we refer to our flat fee as being for complete service, including any drawing figures required for your application as well as all arguments (responses to the patent office) up to and until either a final rejection or an allowance of the application. Be wary of firms which offer a flat fee to file your application but leave the Office actions open ended as this will easily add several thousand dollars to your costs and when the costs will become due is very hard to predict as the first response may be anywhere from 12 to 30 months after filing. Should you decide to have a provisional application prepared, our firm charges $1,500, however you need to be aware that you will still be paying for a nonprovisional application as well if you wish to obtain an issued patent. The subsequent nonprovisional application is typically at a reduced price but you will pay a higher total overall if you opt for filing a provisional application and later attempt to obtain an issued patent for your idea. Design patents are typically billed at $1,000 per application and again include the cost of drawing figures and responses to the patent office.

What are the government fees associated with patents?

The inventor will pay government fees for the filing of the application, for the issuance of the patent and for maintenance fees paid at 3 ½, 7 ½ and 11 ½ years after issuance. These fees can vary widely depending on the status of the inventor. The USPTO now recognizes three categories: (1) micro entity; (2) small entity; and (3) large entity. Micro entities are those where the inventor makes less than approximately $150,000/year, has filed four or less patent applications, and has not licensed the current filing to another who is not a micro entity. Large entities vary by industry but typically include at least 500 employees. Small entities fall in between. The filing fee will generally be around $400 for micro entities and twice that for small entities. There are other relatively smaller government fees that would be optional and might apply if multiple aspects of your invention are deemed patentable. You are encouraged to contact my office to determine the current fees because these government fees do change periodically. Historically the changes have not been substantial. Because it is typically 2-3 years between the filing fee and the issue fee payments, we collect government fees only as they come due so the correct amount is paid.

Can I file for and obtain a worldwide patent?

The short answer is no. While there are laws in place which provide easier filing in other countries, you must still file for protection in each country you desire it.


Find out how Kaufhold & Dix Patent Law can help protect your intellectual property — fill out our online contact form or call 952-426-0314 for our Twin Cities office or 605-334-1571 for our Sioux Falls office.