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 referred to as a non-provisional application.

 

The written specification includes: (1) a brief description of the field of the invention; (2) a background section; (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.

Costs

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