David S. Alavi, PhD
Registered Patent Agent
I can prepare, file, and prosecute a patent
application disclosing your invention in the United States Patent and Trademark Office.
This may include preparation of all parts of the application, filing the
application with all of the necessary supporting documentation, responding
to Examiner Office Actions, amending the application, and arranging the payment
of all PTO fees.
- Establishes "patent pending" status for
- Application can serve as a basis for
- May eventually lead to issuance of a
- Minimal time required to "get your idea
across" to me
- 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
referred to as a non-provisional application.
- The written specification
includes: (1) a brief description of the field of the invention; (2) a background
(3) a summary; (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
the invention "without undue experimentation".
- The drawings must support
the written specification, and the reference characters
used to indicate various elements of the invention in the drawings are referred
to throughout the specification. The drawings must also show every element
of the invention that is claimed.
- The claims are
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, the subject matter to be encompassed by the patent. The primary
focus of the examination of the 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 the patent
application will be spent drafting a comprehensive set of claims. Ideally,
claims of varying scope will be included, ranging from the broadest claims
desired to the narrowest claims acceptable .
- Filing the patent application
- Once the patent application has been
prepared, it must be filed in the PTO. The application must be accompanied
by a declaration, power-of-attorney, and PTO filing fees. About a month
after the application has been filed, the PTO will issue an official Filing
Receipt acknowledging the application.
- Prosecuting the patent application
- About 12 to 24 months (or more), we will receive an Office Action from the Examiner assigned
to the 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 18 to 36 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 as described above, 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 non-provisoinal application had been filed at the outset.
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