Updated: January 20, 2022
Patent prosecution refers to the process of helping you get a patent. We fill out forms, draft the patent application, and write arguments in response to an office action. We also interview the examiner if needed. These are some of the activities that parent attorneys do to prosecute a patent application on your behalf before the United States Patent and Trademark Office (USPTO). We help you – inventors and midsize businesses – prosecute your patent application through the examination process at the USPTO. Our goal is to help you secure a patent that will increase your bottom line profitability on your invention. Call Orange County patent attorney James Yang at 949-433-0900 to book a consultation.
Free Initial Consultation
To prepare for patent prosecution, we hold an initial consultation with you (inventor or business) to get to know your vision and values better. Don’t expect the same advice everyone else gets. No one-size-fits-all solution exists because the recommended next step varies based on your vision and values. We also answer questions such as:
- What is the overall patent process?
- How much does it cost to get a patent?
- How much time does it take to get a patent?
- How do you get broad patent protection?
- Should you file a provisional or nonprovisional patent application?
- Should you get a design patent or a utility patent?
Our initial consultation provides a practical approach to how patents can be used to protect your idea and make you money. We need to see how the expenses of patent prosecution can be worth it in the overall goal of making you money on your invention. If we don’t see a path to profitability for you, then we will let you know and help you to see that.
Also, our basic strategy is to avoid legal fees unless there is a justification and a specific benefit for spending funds to get to the next step. Our goal is to establish a lifelong relationship with clients. We believe that an honest up-front assessment of your invention, even if that means discouraging you from pursuing your invention helps us to achieve that goal of a long-term relationship. We would prefer that you spend your time and money on a future invention where you might have a better chance to reap a significant monetary reward than on your current invention.
We offer a patentability search (aka novelty search, knockout search). The search is designed to determine whether your invention is new and nonobvious. The process used to search for prior art is the same search process used by the USPTO. Oftentimes, the search yields direct hits which knock out your chances of getting a patent. Many times, it results in the prior art which is close to but not identical to your invention. We get to see what we can and can’t get a patent on. We use this to help us prepare the patent application. We focus our efforts on the areas (i.e., white space) to increase your chances of getting a patent.
Preparation of Patent Application
We prepare for patent prosecution of your patent application before the USPTO by conducting a novelty search (optional) on your invention and distinguishing your invention from the prior art. We identify the minimally viable product (MVP) of your invention. The MVP includes the point of novelty or the parts of the product or the steps that make the entire invention work. The patent application is drafted around the MVP or the point of novelty to give you broad patent protection. Options and backup arguments are then added to the patent application. All these are designed to increase the odds of a granted patent, increase the breadth of patent protection, and help you block others from getting a patent similar to your invention.
After we are formally retained to represent you, a draft of your patent application is provided to you within a few weeks for review and comments. We work on the patent application together until you are satisfied and then the patent application is filed. At this point, patent prosecution has begun and you are now patent pending.
We also help you to secure patents worldwide through the filing of a Patent Cooperation Treaty application or patent applications in the patent offices of foreign countries with our network of foreign patent associates. Read more about the pros and cons of worldwide patent protection.
Examination of Patent Application
Upon the filing of a patent application, patent prosecution of your patent application has started. The patent application is examined with respect to its form and the substance of the invention. We prepare a response to those objections and rejections and can also prepare an appeal to the Patent Trial and Appeal Board should examination before the examiner is at a stalemate.
All of the activities above are related to the pre-grant activities before a patent application is filed with the USPTO and while the patent application is pending before the USPTO. Upon successful patent prosecution of the patent application, the USPTO issues the patent and patent prosecution of your patent application is now complete. We help you to maintain the patent by reminding you of the maintenance fees on your patent.
Working with Clients Throughout Orange County & Beyond
Because we are located in Irvine, many of our clients live or work in Orange County, California communities like Mission Viejo, Aliso Viejo, and Santa Ana. But we also work with clients in surrounding areas, like the San Gabriel Valley, Los Angeles County, and elsewhere in Southern California.