OC Patent Lawyer » FAQs

At the Patent Office, what happens?

James Yang — Tue, 09 Aug 2011 03:42:06 +0000

Once a patent application is filed, you can expect to wait. The Patent Office typically takes about fourteen (14) months or more to examine your patent application on the merits. If the patent application is filed as a provisional patent application, your provisional patent application is not never examined. It is also abandoned after 12 months by operation of law. You must file a subsequent non-provisional patent application within twelve (12) months claiming priority to the provisional patent application to place your patent application in queue for examination. Upon filing the non provisional patent application, the Patent Office reviews your patent application to ensure that basic components of the patent application are in place before it is assigned over to an examiner. For example, the Patent Office may review compliance of the drawings, execution of formal documents, etc. Also, during this time, any patent assignments should be recorded with the Patent Office. An information disclosure statement which discloses prior art (i.e., existing technology) is reported to the Patent Office to assist them in determining patentability of your invention.

Patent applications are examined on a first come, first served basis. When your patent application is up for review, the Examiner will conduct an independent prior art search and render an official action that indicates whether your invention is allowed or rejected. If rejected, the Examiner will provide an analysis why the specific prior art references disclose your claimed invention. Most patent applications are initially rejected by the Patent Office so don’t be discouraged. A response should be submitted in response to the initial Office Action providing arguments and/or claim amendments stressing differences between the prior art raised by the Examiner and your claimed invention. In certain instances, based on the relevance of the prior art and the analysis provided by the Examiner, it may be prudent to incur an additional expense of conducting a telephonic interview with the Examiner to clarify the invention, its benefits and differences from the prior art.

If the Examiner allows the patent application to go to issuance, then you will have to pay an issue fee. At the 3 1/2 year, 7 1/2 year and 11 1/2 year mark after issuance, you will have to pay progressively higher maintenance fees. If the Examiner maintains the rejection, then you will have two options – an appeal or continue presenting arguments before the same Examiner. Once again, the decision may be based on the relevance of any new prior art references cited by the Examiner and the quality of the analysis presented in the second Office Action. Most second Office Actions are final. Thus, we do not have a right to continue to present arguments before the Examiner to convince the Examiner to allow the patent application. To do so, a Request for Continued Examination is filed along with additional arguments and any claim amendments. If you choose to file an appeal, then you can expect to wait for the Board of Patent Appeals and Inteferences to render a decision on your case.

The above steps outlines the patent process that most patent application go through. It is not exhaustive and there are many twists and turns.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

Pitfalls of Online Assisted Patent Filings

James Yang — Wed, 02 Jun 2010 03:14:30 +0000

Many online websites provide assistance in filing a provisional patent application at a low price. Based on my understanding of these online sites, the website prompts the user with a series of questions. Your answers are placed into a patent application format and filed with the Patent Office. However, no legal advice is provided.

In my experience, each person’s situation is different which may require the client to address other issues even before a patent application is filed. For example, ownership issues may have to be addressed prior to filing a patent application. Infringement may be another issue that the client may want to address before filing a patent application. These are some of the issues that may require attention prior to expending the time and money in filing a patent application. Online websites may provide legal information in the form of helpful tips. Unfortunately, these online sites do not provide legal advice on these or any other issues. They do not listen to your situation and cannot provide a recommended course of action based on your particular situation.

Additionally, these online websites do not provide legal advice on how to draft a patent application. Your answers are merely placed in the format of a patent application without any modification or addition. The online websites may provide helpful tips or you may even have a book on how to draft a patent application. However, unless you learn under the guidance and instruction of a competent patent attorney, your patent drafting skills will not significantly improve the quality of your patent application. Patent attorneys do not answer a series of questions in preparing a patent application. Competent patent attorneys have a basic approach to drafting a patent application that they have developed over the course of many years with the help of a more seasoned patent attorney.

As such, seek the advice of a competent patent attorney to determine whether there are any issues that need to be addressed prior to filing a patent application. Also, retain competent patent attorney in preparing and filing your patent application.

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com.

What is the term of a patent?

James Yang — Wed, 26 May 2010 02:41:51 +0000

The general rule is that the term of a patent is 20 years upon filing or 17 years upon issuance depending on the date that it was filed and whether it was enforceable on June 8, 1995. The term may be adjusted to account for delays caused by the Applicant or the Patent Office. If the patent is the second patent in a family of patents, then the patent term is calculated from the first filed patent application except that the filing date of a provisional patent application is not used. A patent’s period of enforceability can be cut short if the patentee fails to pay regular maintenance fees. Moreover, the patent term or the period in which you can enforce your patent does not start until your patent application issues as a patent. There are many different exceptions to the twenty year upon filing rule. As such, please consult a competent attorney to determine whether your patent or a competitor’s patent is enforceable.

You may also be interested in Adjusting Patent Term Due to Delays.

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com