Posts Tagged: "patent application"

Last week I wrote about adopting a patent strategy in order to lay the foundation for success. What the article did not touch upon, however, is how you can use procedural mechanisms available at the Patent Office to expand your patent into a patent portfolio, or how to correct unforeseen problems with your patent (or portfolio) that may needlessly compromise…

When setting out on a new endeavor it is not wise to pursue a path to the end and then ask whether what you did was correct. You should seek help along the way to make sure you are doing what is required. Otherwise you are likely to get to a point where the most economical solution is simply to start over.

Fees for patent attorneys are going to vary quite significantly depending upon the geographical market and the attorney’s level experience. Based on 2011 economic data, the national average for a partner level attorney is $441 per hour, the national median is $410.00 per hour, the 25th percentile is $325.00 per hour and the 75th percentile is $535.00 per hour. Cities like Boston, New York and San Francisco tend to be the most expensive (where the average is $555 to $570 per hour). Texas, Chicago and Washington, D.C. also tend to be more expensive than most other parts of the country, but not as significantly so when compared to Boston, New York and San Francisco.

The United States Patent and Trademark Office current fee schedule went into effect on January 1, 2014, and was last revised on April 1, 2015… The lesson here is that fees can add up quickly. It is true, however, that once you file an application it will likely be many months (or perhaps years) before the Patent Office will get back to you so you can usually stagger these additional fees.

Estimating US patent costs is a difficult matter because so much depends on the technology involved, but answering “it depends” is not particularly insightful or helpful. What follows are some general ballpark estimates, which should give at least some guidance when trying to budget for the filing of a patent application at the United States Patent and Trademark Office.

A claim drafted too broadly may not be enabled and hence be invalid. Yet, the temptation to claim broadly often leads the patentee to ignore this risk.

Whether you are an independent inventor, an fledgling entrepreneur or a seasoned inventor who is going out on your own for the first time, the best thing you can do for yourself is to become familiar with the concepts and procedure associated with protecting your inventions. Obtaining patents is not easy for the uninitiated, and without some familiarity you will…

It is absolutely essential to think outside the box when describing your invention in any patent application. Stop and think about different ways that your invention can be made or used, even if you deem them to be inferior. Failure to disclose alternatives will almost certainly foreclose your ability to argue that those alternatives are covered by your claims and disclosure, which will prevent any issued patent from covering that which has been left out.

To bring this principle to bear on the problem of claim breadth, consider a patent disclosing only a single embodiment, with a main claim whose scope extends beyond that of the embodiment (yet inside the ambit of any cited prior art). As discussed at length elsewhere, without diverse claims, courts are likely to determine that the embodiment does not simply illustrate the invention; it is the invention. The court then follows promptly by reading limitations of the embodiment into the claims.

Recent Federal Circuit reasoning should make a patent drafter decidedly averse to single-embodiment patent applications, with good reason. Unfortunately, real-world constraints, principally centering on budget and time issues, have resulted and probably will continue to result in the production of a large number of applications in which multiple embodiments either do not exist or do not justify the time and effort to include them in a patent application… In most instances, the addition of a few sentences would have completely cured the cited problems.

A non-provisional patent application is a domestic U.S. patent application that has the possibility to mature into an issued U.S. patent if after examination the patent examiner is satisfied that the patentability requirements have been met. So you can get a plant patent, a design patent or a utility patent. Obviously, plant patents come from plant patent applications and design patents come from either design patent applications or design patent continued prosecution applications. Utility patents, however, can come from a non-provisional utility patent application, a divisional application, continuation, continuation-in-part and/or a reissue application.

Many times inventors fail to adequately describe their inventions because the invention is obvious to them, and they think it will be equally obvious to others. The law, however, requires that a patent application explain the invention to someone who is not already familiar with the invention. One of the best way to do this is to explain it like a child explains things when doing a show and tell at school. Children explain everything in excruciating detail, no matter how obvious. Kids do this when they describe things because they have no idea what the person listening knows, and to them it is new and interesting so they explain everything with tremendous detail (whether you want to hear it or not). That is exactly what you need to do in the application. Explain your invention with so much detail that you will bore the knowledgeable reader to death.

Simply said, a patent application is only as good as what is included within the application, and general or vague descriptions do nothing more than guarantee that no patent will ever issue. Beyond that, how can you realistically do a patent search on a first level, vague articulation of an invention? At present there have been more than 8.7 million U.S. utility patents granted and over 700,000 design patents granted. I can guarantee that if you vaguely describe your invention it will be easy to find prior art that will be exactly what you have described. Of course, when you see it you will say: “that isn’t anything like my invention.” But if you say your invention is multi-purpose knife, for example, and that is all you say then any multi-purpose knife would be prior art that would prevent you from obtaining a patent.

The first time you will substantively hear from the examiner is when the examiner issues what is referred to as a First Office Action on the Merits (FOAM). At this point you are now truly beginning what most would refer to as prosecution of the patent application. The examiner has told you what, if anything, he or she thinks is patentable, and explained (usually in abbreviated fashion) what claims are lacking and why. The applicant, or attorney, must respond to each and everything raised by the examiner in a response filed no later than 6 months after the date of the First Office Action. Notwithstanding the 6 month period to respond, the Patent Examiner will set what is called a “shortened statutory period” to respond, which for an Office Action is 3 months. The shortened statutory period is the time period within which you can respond without having to pay a fee to respond. After the shortened statutory period, which can be 1, 2 or 3 months depending on what the Examiner sends, you can respond up to 6 months but only if you request AND pay for an automatic extension. Automatic extensions can get expensive, the cost goes up depending on how many months of extension you have to purchase. They are called automatic extensions because the Patent Office must grant the extension if you ask and pay for the extension. You should, however, plan on doing things within the shorten statutory period in order to conserve funds and in order to get the maximum patent term.

Method or process claims are relatively easy to write once you know what the core invention is and what is necessary to be included in the claim in order to overcome the prior art.  Like all claims, method or process claims must completely define the invention so that it works for the purpose you have identified AND it must be unique when compared with the prior art.  By unique I mean it must be new (i.e., not identical to the prior art, a 35 USC 102 issue) and it must be non-obvious (i.e., not a trivial or common sense variation of the prior art, a 35 USC 103 issue). Method or process claims will include active steps to achieve a certain result.  In method claims the transition is typically either “comprising” or “comprising the steps of.”  While legally there may be some distinction between these two different transitions, both are acceptable.