Patent applications
Patent applications in the US come in two primary types: utility applications to protect the structure and function of an invention, and design applications to protect ornamental appearance.
Utility patent applications
A utility patent application protects the functional aspects of an invention, with a focus on the structure. Many types of subject matter qualify for protection by utility patents, including mechanical devices, methods in various subject matter areas, electronics, and computer software.
A utility patent application requires extensive written description of the invention with drawings and claims that define the scope of protection.
A utility patent application has a term of 20 years from the filing date, if the maintenance fees are paid after issuance.
Utility patent application – application preparation
Working with Justin to prepare a utility patent application is a collaborative process. The first step is disclosure of the invention. This process varies depending on the preferences of the client and the area of technology. Disclosure can include written description, CAD models, photos, sketches, or other disclosure that can be used to create an explanation and drawings of the invention.
Justin uses the disclosure to outline the application and brainstorm the problem-solution statements that are later rewritten as claims. This process of outlining and brainstorming is repeated multiple times over several days, providing the opportunity for fresh perspectives.
In parallel, a set of edited and organized informal drawings are provided to a professional patent draftsman, who creates formal patent drawings. Justin reviews the disclosure and drawings to create part names and associated reference numbers, which are used to label the drawings.
Finally, the application outline and claims brainstorming is combined with the reference numbers and drawings to create a patent application. The draft application is proofread and edited multiple times, including using automated patent application checking software that looks for errors and confirms support for referenced terminology.
The application is then provided to the client for review and comment. Justin can discuss the application by phone, video, or email, then incorporating any changes the client requests. When the application is ready to file, filing documentation is provided to the client for electronic signature. The application is then filed with the Patent Office.
The invention is now Patent Pending.
Utility patent application – pre-exam processing and wait time
After filing, the application is initially examined by pre-exam processing. A basic check is performed, confirming that fees have been paid and the required paperwork has been filed.
The application is then sent for classification, where it is assigned to a particular art unit inside the Patent Office based on its area of technical subject matter.
The application then awaits examination at the assigned art unit.
Wait times vary depending upon the art unit, but the average pendency for utility patent applications is 18 months or more.
Utility patent application – substantive examination
When the application has reached the top of the assigned examiner’s queue, it is substantively examined. The assigned examiner conducts a prior art search to look for published patent applications and issued patents that can be used to construct a rejection. Utility patent applications initially receive a rejection from the patent office approximately 90% of the time. Most commonly the rejection is based on a combination of prior art, where the examiner argues that two or more patents in combination result in the claimed invention.
This rejection is provided to Justin, who will email you with a flat-fee quotation for a response and a link to set a phone call to discuss.
Following payment, Justin will prepare the response, discuss with the examiner by telephone, review with you, and then file.
From that point forward, substantive examination often proceeds to an allowance, where a payment of an issue fee will result in a patent. Or the examiner may again reject the application, at which point there are many options that Justin will discuss with you.
Design patent applications
A design patent application protects the ornamental appearance of an invention. Protection is limited to the ornamental, non-functional elements of the invention.
Design patent applications last 15 years from the date of issuance.
Design patent application – application preparation
To prepare a design patent application, Justin needs either a CAD file of the design or a physical sample used for photographs. Sketches are not enough — the Patent Office is particular about drawings being consistent between views, which is not possible without a three-dimensional reference.
Filing papers and a brief description of the invention accompany the drawings.
When the drawings and filing papers are ready, the application is provided to the client for review and comment. Justin can discuss the application by phone, video, or email, then incorporating any changes the client requests. When the application is ready to file, filing documentation is provided to the client for electronic signature. The application is then filed with the Patent Office.
The invention is now Patent Pending.
Design patent application – pre-exam processing and wait time
After filing, the application is initially examined by pre-exam processing. A basic check is performed, confirming that fees have been paid and the required filing paperwork has been filed.
The application is then sent for classification, where it is assigned to a particular art unit inside the Patent Office based on its area of technical subject matter.
The application then awaits examination at the assigned art unit.
Wait times vary depending upon the art unit, but the average pendency for design patent applications is 16 months or more.
Design patent application – substantive examination
When the application has reached the top of the assigned examiner’s queue, it is a substantively examined. The assigned examiner will conduct a prior art search to look for published patent applications and issued patents that can be used to construct a rejection. Unlike utility patent applications, it is unusual for a design patent application to receive a substantive rejection. An office action may be issued requesting changes to the drawings, which Justin handles at no charge.
An allowance is likely in design patent applications. Upon payment of the issue fee, the patent application issues as a design patent.
Patentability searches
A patentability search is a search for issued patents and published patent applications that disclose inventions similar to the invention. The issued patents and published applications are referred to as “prior art” because they predate the filing date of the application.
The goal of a patentability search is to help the client decide the value associated with the patent application and the scope of protection that the issued patent may offer.
Patent applications are investments. A patentability search can help a client decide whether it is worth spending the time money to file a patent application.
The input for a patentability search is a complete understanding of the invention. This can include written description, drawings, CAD files, and any other form of disclosure the client has available.
Justin uses this disclosure to prepare an invention summary for review. After approval by the client, Justin will conduct the patentability search. A patentability search includes determining relevant classifications at the Patent Office, reviewing examination history of relevant applications, and repeated sorting and resorting of located references.
When Justin has limited the search down to five to eight prior art references, he will e-mail the client with a summary of each reference and the opportunity to discuss further by phone or video.
Non-infringement research and opinions
Determining whether or not a product infringes a patent is a complex process. The impetus for such research can be a patent notice letter received from the third party, or a client who is interested in offering a product for sale that is similar to a patented product but wants to avoid accusations of infringement.
The research process
The research process varies depending upon the needs of the client and the complexity of the device, but generally begins with an understanding of client’s invention and their goals.
If a similar product is known, the product may be purchased or the website checked to determine whether there are any patents associated with the product. Additional research may be required to determine the holder of associated intellectual property and a review of patents assigned to that entity.
If relevant patents are located, the patents are compared against the client’s product.
Infringement determination
For design patents, the issue is whether, in light of the prior art, the client product is substantially similar to the patented design.
For utility patents, the issue is whether every limitation of a single claim from within the utility patent has a corresponding limitation within the client product.
Patent holder research
Research into the patent holder is at least as important as locating the relevant patents. This includes a review of litigation history associated with the patent holder, the relevant patents, related entities, and so forth. Determining the attitude and aggressiveness of the patent holder is reviewed in conjunction with the likelihood of infringement to help the client make a business decision as to how to proceed.
Non-infringement opinion letters
If there is an argument that the product does not infringe the patent, the client has the option of Justin preparing a non-infringement opinion letter. Such a letter may limit damages in any future litigation by providing support for the argument that any infringement was unintentional.