Patent Attorneys – NYC

In order to protect your patentable invention, you need an experienced intellectual property attorney to guide you through the process.  At Romano Law, our patent attorneys are highly qualified in technical fields outside of the law, including multiple attorneys with engineering degrees.  The team at Romano Law understands the patent world in depth and can identify potential issues early to better protect your assets.

Working with a qualified patent attorney in New York eases the registration process with the U.S. Patent and Trademark Office.  Once registered, Romano Law attorneys continue to protect your intellectual property interests if they have been infringed upon.  Our attorneys’ technical backgrounds give them the fundamental skills to effectively litigate cases and help ensure that infringers are held accountable.

Romano Law attorneys also manage individual or business patent portfolio.  Analyzing your patent portfolio alongside those of other companies helps determine their economic value and helps maintain your competitive advantage.

When holding a patent or embarking on the process to obtain one, consulting with an attorney is essential.  Romano Law’s team can advise you on all aspects of your intellectual property needs, particularly how to protect your patented or patent-eligible work.

Patent counseling is often the first step in the protection process.  During these sessions, our attorneys discuss potential actions and address any issues that have arisen with their patent.  These consultations also establish the foundation of information needed if litigation becomes necessary in the future. 

Patent lawsuits are civil cases in which a patent owner sues a third party, either a company or individual, for allegedly infringing their patented invention.  Our attorneys at Romano Law are experienced litigators who understand the legal complexities, businses realities, and technical subject matter of patent cases.  The main goal of a patent lawsuit is to enforce the patent and protect the patent owner’s interests.

Consulting with an attorney throughout the litigation process is crucial.  Maintaining comprehensive records, including all patent prosecution and registration documents and evidence of possible infringement provides essential support for your case in negotiations and at trial.

A winning patent owner can receive monetary damages or a court order to prevent further infringement of the patented invention.  Romano Law’s attorneys work to protect our client’s inventions through rigorous legal enforcement.

Attorneys at Romano Law are experienced in creating and managing IP portfolios that highlight your invention’s rights and economic value.  This management helps identify both market opportunities and potential risks before litigation concerns arise.

With a patent portfolio created, our attorneys can work with you to implement strategies to maximize your patent’s value.  For businesses, Romano Law conducts periodic assessments of your patents’ market positions and helped to develop strategies to maintain or enhance their commercial value over time.

A post grant proceeding is the trial conducted at the U.S. Patent and Trademark Office to review the patentability of a patent.  These are generally brought by third parties who challenge the patentability of an invention, including issues related to subject matter.  Post grant proceedings are different from inter partes review, which is used to challenge patents on narrower grounds.  Inter partes review usually focuses on the novelty and obviousness of patent claims.

Post grant proceedings begin when a third party files a petition within nine months of patent’s grant by the U.S. Patent and Trademark Office.  Once the third-party petition is filed, the patent owner may file a preliminary response to the claim defending the patentability of the invention.  If the proceeding is not dismissed, a final determination by the U.S. Patent and Trademark Office is issued within one year of the initial petition.  Romano Law’s attorneys provide representation throughout the post grant proceeding process to defend your protected invention.

A patent grants its owner the exclusive right to exclude others from making, using, importing, and selling their invention for a limited period.  However, not every invention may be patented.  According to the U.S. Patent and Trademark Office, an intention must meet five basic requirements to receive patent protection:

• Patentable subject matter: Eligible categories include processes, machines, manufactures, compositions of matter, and improvements to existing inventions. While most inventions satisfy this requirement, the U.S. Supreme Court has established that the laws of nature, physical phenomena, and abstract ideas are not patentable.
• Utility: The invention must have a specific, real-world use. The utility must be particular to the claimed subject matter, not a general utility that could apply to a broad class of inventions.
• Novelty: The invention must not have been known, used by others, patented, or described in any publication worldwide before the applicant’s invention. The invention must also pass the statutory bar, meaning that it must not have been in public use or on sale in the United States or patented or described in a printed publication in any country more than one year prior to the date of its application with the U.S. Patent and Trademark Office.
• Non-obviousness: The invention must not be obvious to a person with ordinary skill in the relevant field at the time of invention, when considering prior art.
• Enablement: The patent application must include a specification with a written description of the invention and instructions for making and using it. These instructions must be sufficiently clear, concise, and complete to enable anyone skilled in the relevant field to make and use the invention. The applicant must also disclose the best known method of practicing the invention.

The duration of a patent varies based on the type of patent and specific circumstances. There are three main types of patents, each with different timeframes and characteristics:

• Utility patents: These protect functional aspects such as processes, machines, manufactures, and compositions of matter. Utility patents last for twenty years from the date the first patent application was filed.
• Design patents: These protect unique ornamental or aesthetic aspects of a manufactured item. Design patents last for fifteen years from the patent’s grant date.
• Plant patents: These protect new and distinct planet varieties. Plant patents last for twenty years from the patent application filing date.

In New York, inventors and businesses typical work with utility or design patents.  Under certain circumstances, patent duration can be extended.  While extensions are most common in the pharmaceutical and biotech industries, they may be granted to compensate for regulatory or administrative delays.  For example, if time is lost during a Food and Drug Administration approval process, the patent term could be extended for up to five years. To apply for an extension, the patent holder must file within sixty days of receiving regulatory approval.

The cost of obtaining a patent depends on several factors, particularly the complexity of the invention.  Filing a patent application requires significant time for a patent attorney to prepare and submit properly.  Due to this extensive preparation and ongoing consultations throughout the registration process, most patent applications cost between $8,000 and $28,000 to prepare.  This range varies widely based on the invention’s complexity—more sophisticated inventions require more attorney time to properly document and file.

Additionally, the total cost of patent ownership extends well beyond the initial application. USPTO government fees include basic filing fees ($350 for utility patents), search fees ($770), examination fees ($880), and surcharges for various procedural matters.  During prosecution (the back-and-forth process with patent examiners) costs include both government fees and attorney time.  While the USPTO doesn’t charge a direct fee for responding to standard office actions, attorney fees for preparing responses typically range from $2,000 to $8,000 per response, with additional fees for extensions of time ($235-$3,395 depending on length). If successful, issue fees ($1,290 for utility patents) are required before the patent is granted.

Once granted, utility patents require maintenance fees at 3.5, 7.5, and 11.5 years after issuance, which increase progressively at each stage ($2,150, $4,040, and $8,280 respectively).  These fees can be substantially reduced based on entity size.  The USPTO offers three fee tiers:

• Undiscounted (Standard) Entity Fees: Apply to large businesses with more than 500 employees and entities that don’t otherwise qualify for reduced fees.
• Small Entity Fees: Businesses with fewer than 500 employees, independent inventors, nonprofit organizations, and universities qualify for a 50% reduction in most fees. For example, the basic filing fee drops from $350 to $140.
• Micro Entity Fees: Individual inventors who meet specific income requirements (gross income less than three times the median household income) and filing limitations (fewer than four previously filed applications) qualify for a 75% reduction from standard fees. For example, the basic filing fee for a micro entity is just $70.

Additional costs may include fees for filing Information Disclosure Statements, requesting continued examination ($1,500 for first request; $2,860 for subsequent requests), or pursuing appeals.  Working with a qualified patent attorney helps navigate this complex process efficiently, ensuring your intellectual property investment is protected while avoiding unnecessary expenses or fatal procedural errors.