Patent Prosecution Practice

Patent Counseling

Protecting an invention by patent excludes others from making, using and selling the invention.  We work with clients to develop cost-effective domestic and international patent protection for a variety of patent applications, utility and design, including provisional patent applications, regular patent applications, divisional patent applications, continuation patent applications, reissue patent applications and international patent applications. 

Our patent attorneys are specially trained in a wide variety of technological arts, including mechanical, electrical and electronics, computer, chemical, bio-technical and emerging arts.  

Often, our attorneys meet with existing and potential clients and review proposed inventions to provide advice on whether an invention is patentable in terms of subject matter, sufficient novelty and compliance with statutory requirements.  Our attorneys also work with clients to review and explain various legal options and legal requirements, and the process for obtaining a patent. 

A significant aspect of patent prosecution involves careful and precise monitoring of dates.  Our firm maintains a state-of-the art docketing system that includes built-in redundancies, to assure that dates are not missed, costs are kept down, and valuable patent term is not lost.

Prior Art Searching

Although not legally required, clients often instruct us to search for “prior art.”  We then search patent and non-patent records, and advise clients whether patent claims of meaningful scope defining an invention may be obtainable.

Our attorneys sometimes perform computer-based prior art searches in-house.  At other times, we may have searches performed by third-party searchers.  These searches may be more in-depth because searchers travel to the Patent Office and meet with patent examiners for assistance in uncovering relevant references.  Also, some third-party searchers may be better equipped to search for non-patent related prior art references.

After references in a search are uncovered, our attorneys analyze the references and are often instructed by our clients to provide a written opinion.  In addition, we request that our clients carefully review any references uncovered in a search in order to help guide the process for obtaining patent protection on an invention.

Preparing a Patent Application

Once an attorney understands an invention, he or she typically prepares a first draft of a patent application for a client’s review.  The draft includes a written description, drawings and claims.  If necessary, our attorneys will meet with or otherwise contact the client to discuss questions and issues raised during preparation of the draft.

After a client reviews the draft and responds to any questions therein, the attorney may make revisions and send the client a revised draft.  This process continues until the application is completed. 

Filing a Patent Application

After the patent application is completed and, in the case of a non-provisional patent application, signed by the client (provisional patent applications need not be signed by the client), our office finalizes and files the patent application with the U.S. Patent and Trademark Office.  The invention then is officially “patent pending.”

We actively utilize the electronic filing system of the U.S. Patent and Trademark Office, where appropriate, to save costs and ensure expediency.

International Patent Protection

Within one year of an earliest claimed priority date, a foreign patent application can be filed that is based on a United States patent application.  Our firm prepares and files Patent Cooperation Treaty (“PCT”) patent applications.  In addition, we handle PCT patent applications through the PCT Patent Office, such as by filing amendments under Article 19 and Article 34 of the PCT Rules, and by filing Demands for preliminary examination. 

In case a client desires to forego filing a PCT patent application and decides, instead, to file a patent application directly in a foreign jurisdiction, we utilize patent services from the hundreds of foreign associates we work with around the world.  Each foreign associate is specialized in a respective country’s patent legal system.

Based on a PCT application, clients may file a national patent application in one or more foreign countries prior to the expiration of thirty (30) months from a patent application’s earliest claimed priority date in order to obtain patent protection in particular countries.

U.S. Patent Applications Based on Foreign Applications

Many foreign clients hire our firm to file and prosecute patent applications in the United States that are based upon patent applications filed elsewhere in the world. 

Patent Prosecution (handling)

After a non-provisional patent application is examined in the U.S. Patent and Trademark Office, a patent examiner issues an official action that may raise objections and/or rejections.  The action may range from minor technical objections to a complex rejection of one or more claims on the basis of prior art or other statutory requirements.  We timely report Office Actions to our clients and work with them in the most cost effective way to respond.

In the event the Patent Office finally rejects an application, our lawyers may pursue various legal proceedings, including preparing and filing an appeal to the Patent Office Board of Appeals, conducting an oral argument before the Patent Office Board of Appeals, and taking formal appeals to the Court of Appeals for the Federal Circuit and, if necessary, to the United States Supreme Court, amongst other procedures.

Interview

Often our clients instruct us to conduct a telephone or an in-person interview with a patent examiner.  Sometimes, a telephone interview is helpful to set forth one or more legal arguments, or to clarify a particular detail of an invention.  At other times, we may recommend that an in-person interview be conducted with the examiner and/or the examiner’s supervisor at the Patent Office, possibly accompanied by the inventor, to demonstrate an invention or to clarify one or more features of an invention.

Allowance and Maintenance

Upon receiving a “Notice of Allowance” in a patent application, our lawyers conduct a final review of the application for completeness and accuracy, as well as for preserving rights for filing continuation patent applications for future protection.  

Issued patents have maintenance fee requirements at 3.5 years from issue, 7.5 years from issue, and 11.5 years from issue.  Our firm dockets issued patents for maintenance fee payments, so our clients can be confident that their patent protection does not inadvertently expire for failure to pay maintenance fees.  Additionally, we can docket annuity payments that are paid generally yearly for foreign patents and applications. 

Ex Parte and Inter-Partes Patent Re-Examination

During the period of enforceability of a patent, a request may be filed for re-examination by the U.S. Patent and Trademark Office of any claim of the patent based on prior art patents or printed publications.  Our firm assists clients with these re-examination proceedings. 

Patent License Agreements

We represent both licensors and licensees in negotiating and drafting patent license agreements.  From sophisticated merchandising agreements to simpler use license agreements, our attorneys are conversant in licensing and able to effectively represent our clients in negotiating and drafting such agreements.

Right to Use Searches and Opinions

Our firm also provides right to use searches and opinions for our clients.  A client may plan, for example, to begin selling a new device, and the client wants to ensure that making, using or selling the device does not infringe an existing patent that is issued to someone else.  Accordingly, we search for existing patents that are currently in force to ensure that a client does not inadvertently infringe patent rights of another party.  In addition to simply locating patents, we study patents uncovered by a search, including the prosecution history of relevant patents, in order to determine whether a patent claim covers a process, machine, manufacture or composition of matter, or any improvement thereof, that a client is planning to make, use or sell, or is already actively doing so.  We also provide detailed opinions related to our findings.

Infringement Studies and Opinions

Our firm also provides infringement studies and opinions for our clients.  A client may have, for example, an issued patent protecting a device and desires to know whether a similar device of another party infringes the client’s patent.  Accordingly, we conduct detailed studies of processes, machines, devices or compositions made, used or sold by third parties in order to determine whether patents owned by our clients are being infringed, and provide detailed opinions related to our findings.