Patent Applications

Key Benefits

• Establishes "patent pending" status for your invention
• Application can serve as a basis for marketing/licensing/manufacturing agreements
• May eventually lead to issuance of a patent
• Minimal time required to "get your idea across" to me

Capabilities

Preparing the patent application

Once you have decided that filing a patent application is the appropriate course, I will begin preparing the application, including drawings, a written specification, and claims.  Such a full-blown, formal application is referrd to as a non-provisional application.

 

The writtenspecification includes: 1) a brief description of the field of your invention; 2) a background section in which the prior art (and presumably its shortcomings) is discussed; 3) a summary, in which are listed the objects of your invention and a general description of your invention; 4) brief descriptions of the drawings; 5) detailed description of the invention in its preferred and alternative embodiments; and 6) an abstract. The written specification must disclose the invention in sufficient detail that a "person of ordinary skill in the art" could practice your invention without "undue experimentation".

 

The drawings must support the written specification, and the reference characters used to indicate various elements of your invention in the drawings are referred to throughout the specification. The drawings must also show every element of your invention that is claimed.

 

The claimsare the legal "guts" of the patent application, and any patent that may eventually issue from the application. The claims very specifically spell out, in precise legalistic terminology, what is encompassed by your invention. The primary focus of the examination of your application in the PTO is on the claims, and the claims are also the basis for enforcement of the issued patent. Consequently, a large portion of the time and effort that goes into preparing your patent application will be spent drafting a comprehensive set of claims. Ideally, claims of varying scope will be included, ranging from the broadest claims you would like to obtain to the very narrowest claims you would be willing to accept.

 

Filing the patent application

Once the patent application has been prepared, it must be filed in the PTO. The application must be accompanied by: 1) a declaration and power-of-attorney signed by the applicant(s); 2) the filing fee; and 3) various supporting documents.  About four months after the application has been filed, the PTO will issue an official Filing Receipt acknowledging your application.

 

Prosecuting the patent application

About six to twelve months after receiving the Filing Receipt, we will receive an Office Action from the Examiner assigned to your application. The Examiner will have inspected the application for compliance with formal requirements, and conducted a search of the prior art to determine if a patent should be granted on the application. The first Action often includes rejection of most or all of the claims based on prior art found during the Examiner's search. It is then our turn to make any required corrections and to try to overcome the rejections, by amending the claims, refuting the Examiner's conclusions, or both. The Examiner will then issue a second Action, and so on.

 

The final outcome of this procedure depends on the prior art found by the Examiner. Possible outcomes are: 1) allowance of all claims and issuance of a patent; 2) rejection of the broader claims, allowance of the narrower claims, and issuance of a patent; and 3) rejection of all claims and abandonment of the application. Obviously, we hope for 1), but 2) and 3) are the common outcomes, with roughly equal probabilities (based on PTO statistics). The entire procedure may take from twelve to thirty-six months from the original filing date, and sometimes even longer. If claims are ultimately allowed, an issue fee must be paid to the PTO before the patent is allowed to issue.

 

Provisional patent application

An alternative type of patent application, called a provisional application, can also be filed. The provisional application must contain the same drawings and written specification, but need not include a complete set of claims. The provisional application is not examined, but merely serves to obtain a filing date. To use this filing date a non-provisional patent application (as described above) must be filed within one year of filing the provisional application, and must specifically refer to the provisional application. The provisional application allows some of the cost of obtaining a patent to be deferred until a later date, although the total cost for ultimately obtaining a patent beginning with a provisional application is somewhat higher than if a formal application had been filed in the first place.

Costs

[ Home | Contents | Services | Information ]