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Patents and the Patent Process

A U.S. Patent may be granted for any new, useful and nonobvious product or process. Even improvements to current inventions or technologies may be patentable. In fact, a complex device or method may result in multiple U.S. Patents. A Registered Patent Attorney can help identify the patentable components of your idea or invention to develop a comprehensive patent portfolio.

Once issued, a U.S. Patent allows the right to exclude others from Making, Using, Selling, Offering for Sale and Importing the invention during the term of the patent. During this time, the Inventor can sell, license or assign the rights to others. In addition, patents can be used to block your competitors from expanding into other areas of business. Our group refers to these strategies as offensive and defensive patenting.

Patent Search

A patent search may be conducted to evaluate the state of the art such as for preparing freedom to operate opinions or to determinine whether not an invention may be patentable. Although a patent search is not a requirement, it is usually a pretty good idea. Advantages of having a patent search conducted include:

    • Researching whether the invention is new or nonobvious
    • Identifying competitors or possible business partners
    • Identifying similar inventions to design around
    • Reducing the likelihood of patent infringement

Our patent search is overseen by a licensed patent attorney. The results of our patent search are provided in the form of a bound report and accompanying CD. Naturally we can tailor our search to your needs. The patent search report can vary in detail as needed and can include:

    • A paper copy or electronic copy of each patent or published patent application identified in the patent search
    • A letter from a US patent attorney including:
      • A description of the patent law requirements for usefullness, novelty and nonobviousness
      • A description of the patent search parameters
      • A summary of each identified document
      • One or more patent strategies

Preparing a Patent Application

A patent sets forth a property right. Therefore a patent attorney should be consulted for the preparation of a patent application. Patent attorneys are aware of the formal requirements and may actually identify quite a few patentable components of a complex invention.

A patent attorney (also called a patent lawyer) is an attorney licensed to practice law and licensed by the United States Patent and Trademark Office (USPTO) to file and prosecute patent applications. Therefore, in addition to preparing patent applications a licensed patent attorney can give legal advice and can therefore assist in developing a comprehensive patent strategy.

Depending on the Invention and patent strategy, a patent attorney will typically recommend at least one of a variety of patent applications. Each may have different requirements. More information regarding each type of patent application is provided below:

    • A Provisional Patent Application
    • A Non-Provisional Utility Patent Application
    • A Design Patent Application
    • A Plant Patent Application
    • An International PCT Patent Application

Once a patent application is filed with the United States Patent and Trademark Office (USPTO), the Inventor can mark the invention “patent pending." The term "patent pending" notifies the public that the Inventor is seeking patent protection on the invention and a patent may soon issue.

Information Disclosure Statement (IDS)

While the patent application is pending, the Inventor has the duty to provide all known references that may affect patentability of the invention to the patent examiner. References are submitted in the form of an Information Disclosure Statement (IDS). Frequently, the results of a patent search are provided as the IDS. The patent examiner will evaluate the IDS, conduct a patent search and determine whether the invention is useful, new and nonobvious.

Office Action

Frequently, inventions are initially rejected over one or more statutory requirements (as intepretted by the patent examiner) in what is called an Office Action. A response to the office action can be filed. A patent attorney should be consulted to identify which of the following would be the best route:

    • Providing Arguments that distinguish the invention from the documents cited in the Office Action
    • Amending the patent application to distinguish the invention from the documents cited in the Office Action
    • Abandoning the application

Once the proper response is filed, the patent examiner considers the response. The patent examiner may issue another Office Action rejecting all or part of the invention or may provide a notice of allowance.

Issuance or Grant

A patent will issue once all pending claims have been deemed allowable and the issue fee is paid. An issued patent grants the owner the right to exclude others from making, using, selling, offering for sale or importing the claimed invention for approximately 20 years from the filing date (although patent term may be extended or shortened).

Maintenance Fees

An inventor must pay maintenance fees periodically to keep the patent valid.