We prepare patent applications based on discussions with the inventor(s) as aided by a written invention disclosure. Our role is to identify the significant features of the invention, to craft an appropriate scope of the invention, and to effectively describe how to make and use the invention. We work with the inventors to discern the novel features; to identify problems which the invention addresses; and to compare the invention to what others have done in the field.
During the preparation phase, we also investiage potential bars to patentability and identify contributions made by various personnel. We
determine who are to be named as inventors, because an incorrect listing of inventors may invalidate a patent. We seek to find out whether any publications, offers for sale, or other public disclosures of the invention have been made, as these may bar patentability in many jurisdictions. See Title 35 of the United States Code, §102.
We perform original patent filings of applications prepared by us, and of those prepared by our foreign associates. We also perform patent filings based on priority applications pending in the US PTO or in non-US jurisdictions. As part of the filing process, an oath or declaration is executed by the inventors; and a power of attorney is executed by the Applicant.
We typically recommend that the Applicant strive to file the application as soon as possible, because in a majority of jurisdictions, including the US, Europe, and Japan, only the party who filed first will be entitled to a patent under the "first-inventor-to-file rule"
A patent application typically includes a written description of the invention accompanied by a set of drawings and a set of "claims." The written description typically includes a background section, a summary of the invention, and a detailed description of specific embodiments of the invention. Sufficient scope and detail must be disclosed to enable one of ordinary skill in the field of the invention to make and use the invention as claimed. The drawings serve as an aid to better understand the written description of the invention. In the US, the claims are written in a required style that defines exactly what features the Applicant regards as being included in the invention. These claim features are used to distinguish the invention from the existing prior art, and are compared by the patent office to the prior art before the patent office will issue a patent.
We represent cients in the exchanges with the patent office conducted as part of the patent prosecution.
Filed applications are assigned to an examiner who works in an examining technology center responsible for patent prosecution in the field encompassed by the invention. Applications generally are examined in the order filed. The examination includes a study of the application for compliance with legal requirements; and an art search for determining whether the claimed invention is new, useful, and nonobvious. The search is performed by the examiner and encompasses U.S. patents, U.S. patent application publications, foreign patent documents, and available literature.
If two or more inventions are claimed in a single application, and are regarded by the Patent Office to be of such a nature that a single patent should not be issued for both, the applicant will be required to limit the application to one of the inventions. The other invention may be made the subject of a separate application if timely filed.
In a first Office "action" the applicant is notified in writing of the examiner’s initial decision. Such action normally is mailed to us, as the attorney of record. The Office action will include reasons for any adverse objections and rejections, and list the art references the examiner considered in forming the initial decision.
A response to the Office action is made in writing; must include a request for reconsideration of any unfavorable initial decision; must distinctly and specifically point out errors in the initial decision; and must provide a bona fide basis to advance the prosecution to a final decision. Every ground of objection and rejection must be addressed. Claims may be amended (without introducing new matter) when making the request for reconsideration. Remarks in support of the claim amendments point out how the claims distinguish over the art of record. Interviews between us and the examiner may be arranged to facilitate the prosecution.
After the Applicant's response is submitted, the application will be reconsidered. Another office action then may be mailed notifying the Applicant of whether the initial objections and rejections have been withdrawn, and whether any new objections or rejections are made.
The second office action may be made final, which limits Applicant's further response. Under limited circumstances complying with the After Final Consideration Pilot Program, a response to a final office action (which requires only minimal examiner consideration) may be considered and entered. Alternatively, the Applicant can appeal or file for continued examination, which activities require payment of additional US PTO fees.
If the patent application is found to be allowable upon the examination of the application, (including at a later stage during the reconsideration of the application), a Notice of Allowance is mailed. Upon payment of the requisite fee cited in the Notice of Allowance, (i.e., within a non-extendable 90-day period allotted for payment), the application will be issued as a US patent. Maintenance fees are to be paid periodically thereafter to maintain patent rights in the issued patent. Should Applicant fail to pay the maintenance fees, or upon expiration of the patent term, the patent rights lapse or expire.
We perform patent investigations and provide corresponding opinions. Properly used, patent investigations can be a cost-effective tool for clients.
Investigations are conducted for a variety of different purposes, including patentability, freedom to operate, validity/invalidity and infringement/non-infringement. Investigations include idenitfication and analysis of materials found necessary to reach a competent opinion. A competent opinion can guide product development to avoid patent infringement, and can shield a company against willful infringement and corresponding excess damages.
Investigations relating to issues of infringement and validity encompass an analysis of the patent, the prosecution history, the prior art cited therein, and when applicable, foreign counterpart patents and published applications.
Infringement / non-infringement investigations will additionally include a thorough description and evaluation of the product or process being investigated as well as a claim chart, or its equivalent, comparing features of the claims with features of the product or process under investigation.
Invalidity investigations may include additional searching in the general field, as needed. The analysis will encompass a basis for invalidity and set forth the appropriate legal standards. In the case of prior art defenses, a thorough discussion of the invalidating references in the context of Sections 102 or 103 is presented.
The America Invents Act broadens the U.S. system of post-grant patent review to include new inter partes proceedings in addition to the existing ex parte reexamination. Inter partes review and post-grant review alter the course of patent litigation, by providing a parallel and lest costly administrative path for challenging patent validity.
1. Post-Grant Review became effective on September 16, 2012. Post-Grant Review must be requested within nine months of the issue date of the patent. With the exception of business method patents and pending interferences, Post-Grant Review applies only to patents that contain a claim that has an effective filing date that is on or after March 16, 2013. Post-Grant Review may be requested based on any ground related to patent invalidity, including under 35 U.S.C. 101, 102, 103, 112 (except for failure to comply with the best mode requirement).
2. Inter Partes Review became effective on September 16, 2012. All patents issued under the previous 'first to invent' rules, and all patents examined under the new 'first to file' rules that are outside a nine-month Post-Grant Review window are eligible for an inter partes review. Any party who is not the patentee may challenge at least one claim of a patent under an inter partes review. Such review generally is limited to challenges only under 35 USC 102, 103. Also, the inter partes review must be filed before: (i) any third party files a declaratory judgment action challenging the validity of the patent; and (ii) within one year of a third party being served with an infringement complaint by the patentee.
3. Derivation Proceedings are a new form of inter partes proceeding that apply only to patent applications/patents that are subject to the first-to-file rules. A petitioner must have a pending application directed to the same invention, and must seek to establish derivation in a patent application that has an earlier effective filing date. Interference proceedings are still available, but may be declared only when all the rival patent applications or patents have effective filing dates prior to March 16, 2013.
4. Business Method Review is a specific type of post-grant review created for patents that claim an apparatus or method of operation used in the practice, administration or management of a financial product or service.
5. Supplemental Examination under 35 U.S.C. § 257 can be requested by a patent owner at any time to determine whether any “substantial new question of patentability” exists. The USPTO must respond to such a filing within three months of receiving the request.
