Updated: January 20, 2022
The patent process takes years to complete. With each decision along the way, there are different pitfalls and options. Each route has its pros and cons. For the past nine years, I’ve been helping inventors and businesses navigate the patent process. The first step in being a successful inventor is to develop a cost-effective plan of action that makes sense. We do this through an initial consultation.
The initial consultation is designed to provide a framework within which you can work to protect your intellectual property. We cover seven (7) core concepts to develop a recommended course of action that is both understandable and within budget.
CORE CONCEPTS (see below)
1. Define the invention
2. Review of the prior art
3. Explore different ways of protecting your intellectual property
(i.e., patent, trademark, copyright, and trade secret)
4. Foreign protection
5. Ownership
6. Bars to patentability and the America Invents Act
7. Patent Process
Questions and answers
Recommended next step(s) and estimated fees
The initial consultation lasts about 1 ½ hour to complete. I invite you to contact me at [email protected] or (949) 433-0900 to schedule the initial consultation.
Core concept #1: Define the invention
What is the invention? This is the million-dollar question. An invention can be defined in many different ways. During the consultation, we discuss your invention and try to distill it down to its fundamental components. We broaden up your invention. We also find different applications for your invention to increase the market potential for your invention. This often helps to interest potential investors.
Core concept #2: Review of the prior art
Prior art is defined as existing technology, devices, and methods. Please bring any reference that you believe is prior art to your invention. I will briefly review the reference to determine its applicability to your invention.
Core concept #3: Explore different ways of protecting your intellectual property
There are four main forms of intellectual property protection. They include patents, trademarks, copyrights and trade secrets. Each form protects the invention or idea in a different way. Some are similar to each other. We will explore these other forms of intellectual property and consider how they might be employed to your advantage.
Core concept #4: Foreign protection
For inventors seeking potential licensees and investors, foreign patent protection may be crucial to closing the deal. We cover why you must file a patent application before any type of public disclosure or potential sale to preserve your right to seek foreign patent protection. We also review the timing and cost requirements of filing a Patent Cooperation Treaty (PCT) application to preserve your right to file in foreign countries. Read more about the pros and cons of worldwide patent protection.
Core concept #5: Ownership
Ownership issues arise in numerous situations. It would be fruitless to spend money and time if you do not own the invention. We review your situation to ensure that you have the proper rights and contracts in place before filing the patent application.
Ownership issues oftentimes arise in the following situations: (1) co-inventorship, (2) inventor and investors, (3) employer/employee, and (4) independent contractor situations. These issues should be resolved early. Otherwise, it may be costly and impossible to resolve later.
Core concept #6: Bars to patentability and the America Invents Act
For patent applications filed prior to March 16, 2013, you have one year from the first public use, offer for sale, or distribution of a printed publication to file a patent application in the United States. Beginning March 16, 2013, the United States will transition to the first inventor to file system under the America Invents Act. This means that the patent is awarded, not to the first to invent, but to the inventor who files a patent application with the patent office first. We cover these concepts and their exceptions.
Core concept #7: Patent process
We cover the major steps and timing of the patent process such as a patent search, filing of a patent application, first office action, issuance, and maintenance fees.
Questions and answers
The patent process can be overwhelming. We reserve a portion of our time to answer your questions about the topics discussed. We also answer any questions regarding the patent process to clarify and help you understand the process.
Recommendation and estimated fees
At the end of the consultation, we provide a recommended course of action and refined estimates of fees based on our discussion.