The patent process is long and complex even when everything goes smoothly. It can take years for a patent to be granted. Along the way, there are many forks in the road, and nobody will necessarily tell you which way to go. That is why wise first-time inventors and most seasoned inventors seek an experienced and reliable patent attorney. Below is a summary of how we can help you prosecute your patent application with the USPTO and get the patent protection your business needs.
What is patent prosecution?
Patent prosecution refers to the entire process of obtaining a patent, from counseling you on whether to get a patent until you get your patent granted. All of the activities involved in helping you get your patent are collectively called “patent prosecution.’ For example, the process of preparing and responding to an office action and interviewing an examiner are are some of the activities that patent attorneys do to prosecute your patent application.
How we help clients prosecute their patents
Whether you’re an inventor or a mid-size business, we’ll guide you through each step of the patent prosecution process. We explain the step, the options and the pros and cons of each step, to help you make a better decision. 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, or read on to learn about the major steps of patent prosecution.
Step 1: Initial Consultation
The first step is the initial consultation. Our consultation is much more than a meet-and-greet: It’s where we get to know your invention and where we get to know your vision and values better. That maximizes the effectiveness of our legal counsel
Don’t expect the same advice everyone else gets. No one-size-fits-all solution exists, because the best next step varies based on your vision, values, and situation. 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 patent application 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 necessary (and maybe even a bargain) for to make you money on your invention. If we don’t see a path to profitability for you, we will show you what we’re seeing and not seeing.
Also, our basic strategy is to avoid legal fees unless there is a justification for and a specific benefit to spending funds to get to the next step. Our goal is to establish a lifelong relationship you, our client. We believe that an honest up-front assessment of your invention – even when that means discouraging you from pursuing this invention today – helps you long-term. We would prefer that you spend your time and money on a future invention where you might have a better chance to make much more money than you might with the current one.
Step 2: Patentability Search
After the initial consultation, the next step is a patent search.
Our 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, our search yields direct hits which knock out your chances of getting a patent. We’ll let you know when that happens. This means you can’t get a patent, but it also means that you won’t waste your time and money trying to get a patent.
But, more often than not, our patent search will uncover prior art that is close to but not identical to your invention. We use that information to help us prepare the patent application. We can focus our efforts on the areas (i.e., white space) to increase your chances of getting a patent.
Step 3: Preparation of Patent Application
The next step after the patent search is preparing and filing a patent application provided the novelty search didn’t find anything that disclosed your invention.
For us to prepare a patent application, we identify the minimally viable product (MVP) of your invention. The MVP includes the point of novelty, the parts of the product, or the steps that make the entire invention work. Our 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.
A draft of your patent application will be provided to you within a few weeks for review and comments. We work on the patent application together until you are satisfied and the patent application is filed. At this point, 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.
Step 4: Examination of the Patent Application
After filing the patent application, the Patent Office will eventually examine whether your invention is worthy of a patent. The patent application is examined with respect to its form and the substance of the invention.
Most of the times, they will reject a patent application for one or more reasons. This is true even if we’ve conducted a patent search. Don’t worry. We’ve handle rejections very well.
We will prepare a response to those objections and rejections and can also prepare an appeal to the Patent Trial and Appeal Board should examine before the examiner is at a stalemate. Each step of the way, we will explain the objections, rejections and the arguments we are going to present to overcome them.
Step 5: Patent Grant
When the patent is being granted, there’s more work to do. You have to decide whether to file a continuation patent application. We will guide you through this decision making process as well.
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.
Schedule Your Consultation: Call (949) 433-0900
Patent prosecution refers to filing and negotiating with the United States Patent and Trademark Office for your patent.
Prosecution refers to a legal proceeding. Although your patent application doesn’t go through a legal proceeding, it is submitted to an administrative body and thus goes through an administrative proceeding.
Patent prosecution refers to all communications between your attorney and the USPTO after filing with the United States Patent and Trademark Office (USPTO).
In particular, after filing, we will receive the official filing receipt and check the accuracy of the data entered by the Patent Office. We will advise you of any errors and correct those errors. Moreover, we will submit an information disclosure statement on your behalf to prevent any allegations of inequitable conduct.
After these steps are handled, we will receive an office action from the Patent Office about 6 months (expedited) to 2 years (not expedited) from the filing date. The Office Action is an explanation of any reasons for rejecting your application for a patent. No need to worry. We will guide you through the review of the office action and a response.
The patent application process refers to the entire process, including steps taken before and after filing the patent application with the USPTO.
For example, before the patent application is filed, we will conduct a novelty search. The novelty search will help you to determine to understand if your invention as a whole is patentable. But, it will also help you to understand which aspects of your invention are patentable if prior art uncovered discloses some but not all aspects of your invention.
We will fill out the patent forms needed to file the patent application, including:
- Declaration of the Inventors
- Application Data Sheet
- Power of Attorney
- Assignment, if needed
- Statement of Ownership under 37 CFR 1.73
We will also prepare the specification and drawings of the patent application. These documents are custom documents that explain in detail how to make and use the invention. More importantly, we will identify the design constraints and protect those design constraints because doing so will give you the broadest patent protection.
All of the above steps are a part of the patent application process including those I’ve discussed in relation to patent prosecution. We will help you through that process.
I’m glad you asked. There are three things that I recommend all inventors do before spending money on a patent application.
The first is to conduct a novelty search. You can do it yourself or you can have us do it for you for a fee.
The second step you can do yourself is to build a prototype or at least draw out your device. By building the device, even if made out of a cardboard box, you can further develop your invention, which may make it into your patent application.
The third step is to do a business assessment. Can your idea make you so much money that it outweighs the cost of securing a patent? No need to do an extensive business plan. But you need to make sure that there is a market demand for a product like yours. If yes, then please schedule your consultation.
The process for obtaining a patent can take about 3 years because of the number of patent applications the USPTO must examine each year: about 500,000, typically. The Patent Office can’t hire their way out of the backlog as well because it takes about 2 years before an examiner is trained-up and given enough discretion to make decisions.
Under normal processing, the USPTO will take about 14 months to 2 years to work through its backlog of cases and finally examine your patent application. Arguing your case before the Patent Office will take another 6 months to 1 year.
You can speed up the time frame to the first Office Action down to 6 months by filing a prioritized examination request. You could get your patent within the next three months if you receive a first action Notice of Allowance and immediately pay your issue fee.
Our patent prosecution service will lay out your options to expedite your patent application or have it processed under normal processing times. That way, timing expenses and securing a patent fit your product launch plan.
It’s too late to get a patent if you’ve disclosed your invention to the public for more than 1 year. That means, if you’ve put your product on Amazon, displayed it at a trade show, or offered it for sale more than 1 year ago, for example, you no longer can get a patent on it.
It may also be too late to get a patent if you’ve offered your products for sale without patent protection (i.e. filing a patent application). If someone else filed a patent application before you, then their patent application could block you from getting a patent on your invention.
Over time, patent prosecution gets easier, in that you will know what to expect and how to deal with certain situations. Also, your communication with your attorney will become smoother, and thus less time-consuming and expensive.