Patent Process
The following is a brief overview of the manner in which a U.S. utility patent can be obtained. For a more detailed overview of the patent process, please follow this link to the United States Patent and Trademark Office (USPTO) website.
A patent is the exclusive right granted by the US government to make, use, and sell an invention for a set term.A trademark is a recognizable sign, design, or name associated with specific products or services to identify a source of the product or services.
Initially, upon receiving a disclosure containing information about the manner in which an invention is able to be made and used, a patent search is ideally performed to ascertain whether the proposed invention is novel and unobvious, the statutory conditions for patentability. The patent search often allows for determination of the expected scope of protection for the invention.
A favorable patent search leads to the next step, preparation and filing of a patent application. There are two types of U.S. utility patent applications, provisional applications and nonprovisional applications. A provisional application is not examined and serves as a placeholder establishing a date of invention which is important under the current "first to file" system. A nonprovisional application, which must be filed within one year of the provisional application in order to benefit from the filing date of the provisional application, is subject to formality requirement review and thereafter, examined substantively. The substantive examination takes the form of Office Actions indicating issues with the patentability of the invention as claimed, and responsive Amendments.
Upon satisfying all patentability requirements, and payment of an issue fee, a patent issues. The patent term is 20 years from the earliest claimed filing date (of the nonprovisional application or an earlier filed nonprovisional in the event there is a preceding, linked nonprovisional application).
Once issued, monetization of the patent through licensing, sale of the patent or a lawsuit for infringement can be initiated.
What we do
We provide assistance throughout the patent process. Typically, we outsource patent searches and review the results providing our opinion on the likelihood of issuance of a patent and the scope of the claims. We have over 25 years of patent prosecution experience and have developed significant expertise in assessing the likelihood of issuance of a patent for an invention and the probable scope of claims. There is never a guarantee of issuance of a patent, but we have been highly successful in obtaining patents corresponding to expected scope of coverage determined based on prior art uncovered in patent searches.
Drafting patent applications is a complex endeavor requiring consideration of important statutory requirements. Our ability to quickly draft patent applications generally compliant with the requirements is an asset, especially operating under the current "first to file" scheme. After accepting a disclosure for patent application preparation, we set a date for expected patent application completion and remain on schedule for filing. Filings with the U.S. Patent and Trademark Office (USPTO) are always filed electronically by our firm, providing immediate assignment of a serial number and indication of successful filing that can be later reviewed by the USPTO for formality compliance..
After filing, our services include assisting with foreign patent application filings using our network of foreign intellectual property attorneys in countries such as Japan, Australia, the European Community, China and Taiwan. Foreign patent applications are generally filed within one year after the US patent application is filed to entitle the foreign applications to the benefit of the US patent application's filing date for invention conception and reduction to practice analysis.
We manage the patent prosecution before the USPTO including reporting issuing Office Action, engaging in telephonic interviews, drafting and filing responsive amendment, and whatever other submissions are necessary to advance prosecution of applications toward issuance. In the unfortunate event an appeal is necessary, our services also include drafting appeal briefs and reply briefs, as well as attending oral hearings. which we have lately handle telephonically.
Once an application is allowed, we engage our clients in.considering additional patent applications to ensure adequate patent protection for invention, filing continuation or divisional applications if warranted.
After issuance of a patent, we manage maintenance fee payments to ensure patent pendency, if requested.
Our services also include considering issues of infringement of patents, whether handled by our form or by other firms. Although we do not engage in litigation, we have developed a small network of highly experienced patent litigation attorneys that we refer cases to for investigation, assisting these attorneys to proactively defend patent rights of our clients.
We welcome any inquiries about our services and what we can do for you to obtain and manage patent rights.