Patent Preparation and Prosecution

                 Edward J. Marshall is a registered patent attorney (Reg. No. 45,395), and has significant experience representing clients before the United States Patent Office (USPTO).  This experience includes preparing and filing US and International patent applications, preparing responses to office actions, filing appeal briefs, and preparing reexamination requests.  Edward J. Marshall also offers other patent related services, including prior art searches, validity and invalidity opinions, and freedom to operate opinions.

THE PATENT PROCESS

Prior art search

                 No search is required under most circumstances

There is no requirement for an inventor to perform a prior art search, except in very limited, special circumstances.  Because of this, many inventors and companies do not perform prior art searches.

                 You might not need a search if you are an expert in the field of the invention

If you are an expert in the field to which your invention relates, or if you are very familiar with research done in the field, you may decide not to perform a search, because you are truly familiar with the technology area you are patenting.  But individual inventors take note…just because you don’t see a product on the market does not mean that that someone has not had the same idea before.  There are countless cases where a patent for an invention is issued, but the patented product never makes it to market.  So unless you are certain that you are familiar with the technology area associated with your invention, saving a few hundred dollars by skipping a prior art search can cost you a lot of money in the long run.

                 A search can result in better claims, and lower prosecution costs and a cleaner file history

Performing a search helps the attorney or agent drafting the claims of the patent to be able to get the broadest possible claim scope without being overbroad.  Fighting to obtain a patent with overbroad claims can result in additional rejections and office actions that require more attorney time to respond.   Additional attorney time usually results in higher costs.  Another benefit of claims drafted with the prior art in mind can result in fewer claim amendments and arguments on the record (a cleaner file history), which can result in a stronger patent.

Preparing the Patent

Preparation of the patent includes drafting the claims, specification and figures.  It is common for drafts to go back and forth between the inventor and the patent attorney or agent at least one or two times, depending on how complicated the technology of invention is.  Often, a draft of the claims will be sent to the inventor for his review and comment.

The specification and figures are drafted, and the figures might be sent to a draftsman to prepare formal figures at this point.  Sometimes, however, preparation of formal figures is delayed until after the patent application is filed.  A complete draft in final form is sent to the inventor for review and approval prior to filing.  If everything meets the inventor’s approval, filing paperwork including an oath/declaration and power of attorney is sent to the inventor for signature.  Sometimes an assignment is also sent to the inventor for his signature at this point.

Filing the Patent

After the patent has been drafted and approved, and all required filing documents have been signed by the inventors, the patent can be filed.  The patent is usually filed electronically, or by US Postal Service overnight mail.  If a prior art search was done, or if the inventor or attorney know of any references, offers for sale, or other information that needs to be disclosed to the patent office, an information disclosure statement will also be filed with the application or soon afterwards.  The patent office will send back an official filing receipt.

Wait

The patent office will probably get to examining your patent application sometime between 1 and 2 years after it is filed.

Patent Application published

Unless a request for non-publication is filed, the patent application will be published 18 months after the date it was filed.

Office Actions

The patent office will almost certainly reject your patent application.  In fact, when budgeting for patent prosecution, you should plan on at least two separate office actions before a notice of allowance is issued.  Of course, you could receive a first action allowance on your patent, but you might have to pursue an appeal before the patent office allows the application.  There is also the chance that the patent office will turn up prior art that keeps you from getting a patent on your invention.  There is really no way to be certain.

Patent is Allowed

After a period of between about 12 months and 36 months, hopefully a patent for your invention will issue.  There are fees to paid to the patent office at this point, and additional fees to be paid 3 ½, 7 ½, and 11 ½ years later.