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OUR SERVICES
Call Us At: (562) 598-6418
The range of services provided include:
Prior Art Searches
Provisional Applications for Patent
Utility Patent Applications
Design Patent Applications
Patent Drawings
Prior Art Search
This is a critical first step
in the inventing and patenting processes. In the domestic search, we
research patent literature within the US. In the global search, we
research patent literature in the US and internationally. When
submitting a patent application, the applicant has the duty to disclose
all significant information that is related to your invention, including
all prior art. That requirement is satisfied by conducting a prior art
search and submitting an information disclosure statement.
The prior art search is also a valuable tool when writing the patent
application to make sure you claim your invention broadly, without
infringing on others or claiming what others have already patented or
published.
When you build a fence on your property, you need to know where your
neighbors' property lines begin so you don't build it on their land and
you don't leave out any of your own land. If you build on your
neighbor’s land, you will have to tear it down and start over. The same
thing applies to the patent process; if you don’t know the prior art in
your field, you run the risk of incorrectly defining the true scope of
your invention. This will either under protect your invention, in the
case of claiming too narrowly, and cause much trouble in the prosecution
of the application, in the case of claiming too broadly.
One thing to keep in mind when looking at patent search results is that
it takes 18 months from the filing date for an application to publish
(become public and searchable). So, important unpublished prior art
could exist and not be available until after the filing of your
application. And some applications are not published until allowance,
taking up to and more than 3 years. So, some prior art may be hidden
for months or years after the filing date. As a result, there may a
temporary blind spot in your knowledge of other significant
applications.
We would recommend conducting a preliminary prior art search at the very
beginning of your product development, another just before filing your
patent application, and maybe a year or so after the filing date.
Google Patent allows you to track changes in a search string or patent
classification through an RSS feed, alerting you when any new patents
have been published in a search parameter. This is a great tool to keep
track of an industry, your competition, or others filing similar
applications.
Many people have spent many thousands of dollars on product development,
just to find at a later date that they are infringing on someone else’s
patent. Besides, all patents are teaching tools that are required to
reveal all of the information required to make the invention. Learn
from their mistakes and research to make a better, more patentable, and
more marketable product.
Provisional Application for Patent
Provisional applications have been used
by individual inventors and multinationals to quickly and easily obtain
an early filing date (priority date). However, a provisional
application is not a patent (sometimes incorrectly called a provisional
patent) and will never mature, in itself, to an allowed patent. The
Patent Office will not even look at your provisional in itself. The
provisional application must be followed up a year later by a standard
utility application that will benefit from the provisional filing date.
If not, the provisional will expire and the filing date will be
permanently lost.
A provisional application is an informal means of fully communicating
the patentable features of your invention as soon as they are apparent
to you in the development process. Even though the US, for now, is a
“first to invent” country, the early filing date the provisional
application provides is money in the bank, a solid date to preempt
others from filing for similar inventions. Since the provisional
application will never be examined by the USPTO, the format is relaxed,
only requiring that the invention is fully described along with any
related drawings. This application can even be hand written with a few
decent sketches. No claims or other formalities of the utility
application are required; although, some applicants include one broad
claim.
Even though the formatting of the provisional application is informal,
it must fully describe the invention. Without the full
description, there is a risk that the utility application that follows
the provisional will not be able to fully benefit from the provisional
filing date. So, think of the provisional application as a foundation
for a house, it must be strong, complete, and done with the knowledge
that your entire patent will one day depend on it. The closer the
provisional and utility applications look when compared to one another,
the better.
As many of us know, the invention we start out with soon develops into
something else as the development process moves forward. In response,
some inventors will file a new provisional application with each new
advancement in the invention process. One utility application can
depend on multiple provisional applications, with possibly more than one
priority date.
Provisional applications are a cheap ($100 USPTO filing fee) and easy
way to protect your invention for one year while you go out and try to
sell it or further develop it. That allows you to say that your product
is “patent pending”. But, beware, you must follow up in a year with a
utility application and there must be “no new matter” in the
utility when compared to the provisional, meaning the provisional must
teach what you will eventually claim in the utility application.
Utility Patent Application
For inventions that are novel,
nonobvious, and useful (utilitarian), a utility application is often a
good choice for providing protection. A utility application can either
be filed by itself or it can be filed as a follow up to a provisional
application. The Patent Office (USPTO) fees are much higher for the
utility application compared to a provisional (approximately $500).
However, the utility application will be examined by the USPTO and has
the ability to mature to an allowed patent.
The allowed patent is sort of a government sanctioned monopoly of the
invention you claim within the patent. It gives you the right to
prevent others from making, selling, or using your invention without
your permission. This is really a tradeoff with the government; you
fully describe your invention and they provide you with a monopoly on
your invention for 20 years (from your filing date). After the patent
expires, your invention becomes public domain, being available for use
to anyone. This advances technology, allowing present inventors to
learn from past inventors and build on their initial technology.
Otherwise, without the patent system, many inventions and how to make
them would be kept secret in some corporate library.
Many inventors, when first disclosing their inventions in an application
are tempted to be coy, not revealing every detail of the invention.
This is a mistake. A patent, in order to be fully enforceable, must
reveal all the details of the invention that are core to what is being
claimed, including all of the elements that make the invention fully
operable, how to make the invention (special materials, techniques, and
so on), and any variations (alternate embodiments) of the invention.
Basically, you must reveal everything for which you are seeking
protection (in the claims). There is a mechanism in place for keeping
secrets (called trade secrets), but not in a patent.
Once a utility application is filed, it may take quite a while before
the examination begins and a while more before a final decision on
patentability. The whole process can take 1.5 to over 3 years. During
the examination, the examiner is tasked with making sure the invention
is both novel (unique) and nonobvious (not obvious).
To be considered novel, the claimed combination of parts of an invention
cannot be described in any published document (patents, books, websites,
common knowledge, catalogs, etc) one year before the filing date of the
application (35 U.S.C. 102). At the time of invention, if it is
described anywhere public, it is not patentable.
Additionally, an invention cannot be obvious, meaning the solution to a
problem would have been readily apparent to someone who is knowledgeable
in your field (35 U.S.C. 103). For example, we all use remote controls
to control the operation of TV’s, ceiling fans, air conditioners, DVD
players, and so on. Using a remote control to control your coffee maker
might be obvious under the new rules for obviousness, and therefore may
be unpatentable. The reasoning is that a person (i.e. an engineer) who
would want to design a coffee maker that is controlled from a remote
position would logically use a remote control to do so or would quickly
come to that conclusion with limited experimentation. The remote
performs as it’s expected; the coffee maker performs as it’s expected;
and, when combined they produce the expected result of controlling the
coffee maker remotely. Now, if you have an invention that produces some
new or unexpected results, this can be patented, even if the individual
parts of the invention are known.
What these new rules (or examination guidelines) mean for you is that,
if your patent is allowed, it will be a much stronger and more
defensible patent, having gone through a more rigorous examination
process. Basically, the truly new ideas get patent protection, and
small, obvious changes to known products do not. As part of our service
to you, we will honestly assess your invention and give our opinion on
the patentability of your invention. However, since these are new
rules, and the patent landscape and prior art is ever-changing, there is
a risk that a patent that was thought to be patentable will not be
granted because of new rule interpretation or previously unknown prior
art being brought forth (see Patent Search section).
After the utility application is filed, the prosecution begins and the
examiner will research the prior art to make sure an invention is
patentable. Sometimes, although rarely, the examiner will not find any
prior art that is close to the claimed invention in the application and
will immediately allow the application, permitting it to become an
allowed patent. More often though, the examiner will find something
related to the claims and issue an office action, listing the allowed
and rejected claims and the reasoning behind the rejections. It is now
the duty of the applicant to respond to each and every rejection and
make any necessary amendments (or changes) to the application to place
it in condition for allowance. If the examiner agrees with the
amendment and arguments, the application will be allowed, if not,
another office action will be mailed (possibly being made final). A
final rejection is not the end of the line; our patent professionals are
experienced in navigating the prosecution process and will help you in
overcoming these rejections, if your invention can be truly be
differentiated from the prior art.
The utility patent application process is long, complex, and full of
pitfalls. With the help of our experienced team, you can navigate
through this process and obtain patent protection for your unique
invention.
Design Patent Applications
Design patents only protect the
ornamental appearance of a product or item. They do not protect the
function of the item or anything beyond appearance. Instead of a 20
year duration, a design patent expires after 14 years. Since only the
appearance of the invention is protected, a design patent is
considerably weaker than a utility patent (which protects function, not
ornamental design).
The benefit of the design patent is that is a much less expensive means
to obtain a patent pending status on your product (roughly $215 for the
USPTO fee). After all, when you are in the design application process
you don’t have to advertise anything beyond just “patent pending”,
whether it’s a utility or design patent will be learned by all when the
patent becomes published. It’s your right to keep the application
status of your invention secret as long as possible.
If you (the licenser) plan on trying to license your patent to a company
(the licensee), a design patent may not be a good choice. Because only
the appearance is protected, the licensee may not have faith in their
ability to prevent others from changing the design by a small degree and
competing with them. Even though a design patent is still a sort of
monopoly, it is a weak one.
Many companies use design patents to protect the look of the product in
conjunction with a utility patent to protect the function. Or, they may
choose to apply for a design patent on an existing (old) product line.
One example is a dish soap company may choose to protect the design of a
new soap bottle, just so a competing company or store branded products
cannot directly mimic the look. Of course, many companies rely on other
protection mechanisms, such as trademark and copyright protection.
Design patents, as briefly discussed, have their benefits and
drawbacks. To see if a design patent is right for your product feel
free to contact us for a free initial consultation.
Patent Drawings
For most every patent application,
drawings must be submitted to fully support the description of the
invention. A few applications do not need drawings, such as certain
processes. Most likely though, provisional, utility and design patent
applications will all need accurate and descriptive drawings.
For provisional applications, formal drawings are not needed. In fact,
a neat and clear sketch will be enough to obtain an early filing date.
When a sketch is clear, it helps to teach the inventive qualities to the
examiner when he/she looks at the provisional application when
referenced by the dependant utility application.
For a utility application, the drawing standards are much stricter. The
USPTO has very particular requirements regarding the layout, numbering,
and even the types of lines that can be used. Most of all, they need to
clearly communicate the invention that is described in the claims. The
examiner should be able to read the claims and, for each part of the
claim, identify a corresponding part on the drawings. Our team of
draftsmen uses CAD software to prepare drawing sheets that are
descriptive and comply with required drafting standards.
For a design application, the level of detail must be extremely high;
and more care must be taken to insure the invention is accurately
represented. Beyond the title and the one claim, there are no
descriptive words that can be used to further enhance the strength of
the patent, relying completely on the drawings.
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