Patenting an invention can be a complex, time-intensive and costly endeavor. It is advisable to work with an experienced, registered patent attorney in order to ensure your invention is handled with strict confidentiality by a professional having the skill and expertise required to navigate the patent process.
The following provides an overview of the patent process.
If you have an invention that you would like to protect, you should prepare a full disclosure of the invention in written form. This disclosure should describe the invention as to how it works, how it can be used, and how it is an improvement over known articles, methods, or compositions of matter (referred to collectively as "prior art"). If applicable, your disclosure should include one or more drawings of the invention, with your written description making reference to the drawings.
Click here to download a copy of an Invention Disclosure Form.
To evaluate whether your invention is patentable, we recommend conducting a patentability search in the United States Patent and Trademark Office (USPTO). A search is optional, but it will help to determine if your idea has already been patented or is in the public domain. The patentability search involves reviewing and copying for your records all properly classified and filed U.S. patents and published patent applications pertinent to your invention as described in your invention disclosure. A patentability opinion letter is prepared indicating the scope of the patent protection which we feel is available for the invention. Foreign patents, periodicals and textbooks are not searched as they are not well classified. Therefore, a patentability search is approximately 90% effective in locating any given piece of pertinent prior art. The patentability search can be extended into additional Patent Office classifications, the technical literature and foreign art databases at an additional cost. The scope of a patentability investigation is quite different from an infringement, or freedom-to-operate, investigation, and the results of a patentability search should not be considered dispositive of all infringement questions.
Patent Application Preparation
The cost and time involved to prepare a U.S. or international application (under the Patent Cooperation Treaty, or "PCT" application ) depends upon the technical complexity of the subject matter, the quality of the written description provided by the inventor(s), and the number of revisions of the application necessitated by the redefining of the invention by the inventor(s) during the application drafting process. The application may be filed with "informal drawings," however formal drawings will be required before a patent is granted.Once the application is filed in the USPTO, it is "patent pending." It is at this time that licensing or transfer of ownership by assignment of the invention can take place. Any marketing efforts should be delayed until after your application is filed. Our firm normally does not get involved in such marketing efforts. In addition, care should be taken in contracting with companies which purport to market inventions because, in our opinion, the inventor is the best person to promote his or her own invention. There are a number of strategies for filing a patent application, including the use of provisional applications, and we can tailor the application preparation process to fit your needs.
Patent Application Examination ("Prosecution")
After the patent application is filed, it is assigned to an Examiner in the USPTO which will do their own search of the prior art and issue an "Action," setting forth their finding as to patentability of the invention. Typically, it can be many months after filing the application before receiving an Action by the Examiner. This part of the patent process is referred to as the "prosecution" phase. If the Examiner's finding is negative, which typically is the case and is mailed to the Applicant in the form of an "Office Action" which contains rejection of the claims and/or the text ("specification") of the application, the Examiner will require the Applicant to file a "Response" to the Office Action. Usually, after one or two Responses, outstanding issues are resolved as to the form of the claims and the scope of protection, and the application is allowed. The length of time required for patent application prosecution depends upon the complexity of the rejection, the reasonableness of the Examiner, the closeness of the prior art as compared to the scope of patent protection desired by the Applicant, and the quality of the Applicant's comments for responding to the Examiner. The period of prosecution, and the interval over which these added costs are incurred, averages one to three years. Accelerated examination is available for an additional cost, which shortens the time between filing the application and final disposition of the application (allowance or final rejection) to one year or less. After allowance, and upon payment of issuance fees, the application issues into a patent. We can advise you all of your options regarding how best to navigate through the prosecution process.
A Patent Examiner, in determining patentability of an invention, must find that the invention is (1) useful, (2) novel; and (3) non-obvious.The invention is useful if it has a present day useful purpose. Novelty is satisfied unless the Examiner finds a single prior art reference which contains all of the elements of the invention which are claimed in thepatent application.In determining whether an invention is obvious, an Examiner may rely on the combined teachings of several patents, printed publications or other prior art references. If a hypothetical person of ordinary skill in the relevant technical field would view the claimed invention either as an obvious combination of the individual features disclosed in several references, or as an obvious extension of the existing technology, then the Examiner will reject the application as obvious and not patentable. The determination of obviousness involves subjective judgment regarding, for example, the actual content of the prior art, the level of skill of the ordinary skilled person in the technical field and the reasonableness of combining features from different prior art references.
If the results of the patent examination are favorable, a patent will be granted. A patent is an exclusive right of its owner to exclude others from making, using, or selling their invention as defined in the claims of the patent for a period of time, which in the United States is 20 years from the date of filing the patent application. After the patent has issued, maintenance fees need to be paid at 3.5, 7.5 and 11.5 years from the date of issue to keep the patent in force.
Patent Application Filing Deadlines
Under U.S. patent law, an application must be filed within one year of the first public use or disclosure, sale or offer for sale of the invention. Equally important, many foreign countries require that a patent application be filed before any publication, demonstration, or sale of theinvention. However, if an application is filed in the U.S. before the first date of any publication, demonstration, or sale, most countries will accord that U.S. "effective filing date" to applications filed in the foreign country within one year. During this one year interval, the benefit of the earlier United States filing date will attach to such foreign patent application. There are a number of strategies for obtaining foreign patents, and if you decide to foreign file, we can tailor a program to fit your needs.
Contact us to discuss our fixed-fee arrangements for preparing, filing and prosecuting your U.S. or international patent application
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