Patents - Utility, Design, Plant
A patent prevents others from making, offering for sale, importing, using, or selling an invention. We provide clients with a full range of patent services including:
- Patent Validity Studies/Opinions and Searches
- Drafting and Filing of Patent Applications
- Prosecution of Patent Applications
- Assignments and Licensing
- International Patenting
- Documents Required for Obtaining Filing Date
Patentability Search based on a client's invention disclosure, we search the records of the U.S. Patent and Trademark Office for U.S. and foreign patents and literature relevant to the invention. Our report letter gives our opinion on patentability and the estimated costs involved in filing and prosecuting a patent application.
State of the Art Search provides a client with relevant U.S. patents in a specific field of endeavor.
Infringement Search provides a search of the records of the U.S. Patent and Trademark Office for patents that may be infringed by a client's invention.
Validity Search includes a search of the records of the U.S. Patent and Trademark Office for "prior art" that may invalidate a patent.
Drafting and filing of patent applications
An application for a U.S. patent must be filed before another files for the same invention and within one year of the first date that your invention becomes publicly available anywhere in the world, e.g., by publication, public use, sale or offer for sale. We are now a first to file country as opposed to a first to invent so the earlier the patent application is placed on file, the better. Public availability of the invention any time prior to filing the U.S. application may jeopardize the filing of equivalent applications in certain foreign countries. Application can be paper filed at extra cost or electronically filed, as we always do, at the U.S. Patent and Trademark Office (PTO). We encourage using the Patent Prosecution Highway (PPH), if applicable.
Prosecution of patent applications
A patent application is prosecuted before the U.S. Patent and Trademark Office for a period of approximately nine months to two years prior to issuance of a patent. We handle interviews; preparing responses; expediting examination; and Information Disclosure Statement (IDS). There are several procedures that may be used to expedite the prosecution of a patent application. Not every application becomes a patent usually because of prior art.
Appeals to the Patent Trial and Appeal Board
If necessary, we can appeal the decision of a Patent Examiner to the Patent Trial and Appeal Board (PTAB) or if necessary to federal courts.
Preparation of assignment and licensing agreements
A patent can be the subject of numerous and varied licenses and assignments. We represent clients in negotiating assignments and licenses of their patents and/or know-how.
International patent filings
Under the terms of international conventions, a one-year period exists from the filing of a U.S. application within which to file corresponding applications in other countries and still obtain the benefit of the filing date of the U.S. application.
Protection in foreign countries may be obtained either by filing applications in the desired foreign countries within the one-year period of the U.S. filing, or by filing within the one-year period an international application in the U.S. Patent and Trademark Office under the Patent Cooperation Treaty, designating those countries where patent protection is desired. The effect of filing under the Patent Cooperation Treaty is to extend the time (and expense) for filing documents in the various designated foreign countries.
Documents Required for Obtaining Filing Date
1. Specification plus claim(s) in English. Applicant can be inventor(s) or assignee. No claims required for a Provisional application. In an emergency, foreign language specification can be used, with additional charges. Specification for Design Patent is usually a brief description of the drawings which must show a view from every side of claimed object; the views (Figures) must have surface shading. Application must include a claim.
2. Completely filled in, signed and dated declaration including power of attorney accompanying the specification; no legalization or notarization required. Email or facsimile copy is acceptable for all documents except a priority document. The declaration can be subsequently filed with a late filing fee. No declaration is required for a Provisional application.
3. One set of drawings is required if applicable; however, must file formal drawings if and when required.
4. Priority document can be filed anytime up to Issue Fee with a fee but should claim priority and file the certified copy of the priority document(s) within four months of the U.S. filing date.
5. Assignment can be filed anytime. Do not need original. No notarization or legalization required. Only signature of the assignor(s) is/are required.
6. All documents for filing Utility, Design, or Plant Patents must be completed before execution by inventor(s) or assignee(s). U.S. Patent Lawyers or Agents are prohibited from filing in or changing documents after signature by applicant(s) or assignee(s), except for minor changes in the specification.
7. Whenever an individual making a declaration cannot understand English, the declaration should be in a language such individual can understand or be explained to him.
8. You must promptly disclose to the PTO all pertinent prior art that inventor(s), assignee(s) or instructing agent learns of, up to and after patenting in U.S.
9. The patent specification must set forth the best mode known to the inventor(s) as of the filing date of the U.S. application.
10. "Small Entity" ---To obtain benefit of "small entity" reduced fees, a declaration should be filed at or before the time the fee is due, signed by at least one inventor, or assignee, provided none of his rights are obligated to another "small entity". If so obligated an individual authorized to sign for such other "small entity" should sign another declaration. Only one "small entity" declaration need be filed by each entity having an interest in each application. PTO must be notified of any change of status resulting in loss of "small entity" status, and higher fees paid thereafter. No refunds possible from PTO for fees paid prior to the filing of a "small entity" declaration unless: (a) "small entity" declaration is filed within 3 months of the payment of the higher fee; and (b) a request for refund is filed which we will do.