Patent Applications
We can help our clients establish business procedures to identify and document new ideas and innovations, and then we can help them protect their inventions by guiding them through the process of obtaining domestic and foreign patent coverage. We can also advise our clients regarding whether the cost to pursue a particular patent application is justified or not, in view of the prior art and market, and considering the likely enforceable scope and other legal factors and risks. We advise our clients if we think that there may be a better way to protect or leverage their idea in their particular situation.
The following is a list of our patent application services through which we help our clients and their companies.
Invention Disclosures
Businesses can often benefit by establishing procedures for their employees to timely report their inventions to management in such a way that facilitates informed decisions regarding whether and how to seek intellectual property protection.
We have helped our client’s organizations to establish helpful procedures to reliably capture and safely document and protect the inventive activity of their employees, then screen which inventions to patent, publish, or keep secret.
When time is short, for example before required disclosure at an upcoming meeting or trade show, we can help clients reduce their risk of losing intellectual property rights. For example, we may prepare non-disclosure agreements while quickly filing a provisional patent application (e.g. based on an invention disclosure), or time and budget permitting, perhaps the preparation of a non-provisional patent application can be expedited.
Prior Art Searches, IDS
Prior art refers to everything that has been published or offered for sale in the public domain, in the fields of endeavor that are related to your invention, prior to the filing of your patent application. Prior art can include issued patents, published patent applications, press releases, public videos, published research papers, public presentations, blog postings, and past and current products that have been offered for sale.
Well-written patent claims maximize coverage of the invention while avoiding the prior art. Therefore, a thorough prior art search can be important to ensure that patent claims are drafted with appropriate scope. Proactively conducting a thorough prior art search before drafting a patent application can improve both the patent prosecution outcome, and the resulting claim enforceability. Otherwise, a patent applicant may be required to react to close prior art found by the examiner during prosecution, which can result in more prosecution iterations, applicant admissions on the record, and expense, and disadvantageously cause amended claims to lose their ability to be enforced against equivalents.
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Patent Preparation & Filing
We pride ourselves in our excellence and experience in preparing and prosecuting high-enforceability patent applications in the United States Patent and Trademark Office, and to manage filing in foreign jurisdictions. Consistent with each client’s particular business objectives, we can help our clients obtain patent coverage for the functional and/or the aesthetic aspects of their inventions.
Time is of the essence in patent application preparation and filing, because an applicant may lose patent rights as a result of a prior public disclosure or an earlier patent application filing. Also, an applicant has only 12 months from the filing date of a domestic patent application to file a foreign patent application (if any), and only 12 months from the filing date of a provisional patent application to prepare and file a corresponding non-provisional patent application. Patent prosecution events can also trigger deadlines for response to the United States Patent & Trademark Office or a foreign patent office that, if not met, may result in late fees or abandonment of a pending patent application.
Since all of our partners have experience in patent litigation, with our legal practice continuing to include ongoing patent litigation services for several clients, we know how accused infringers typically attack the scope and validity of patent claims when enforced. Therefore, we understand how to initially draft patents with an eye towards avoiding common mistakes and pitfalls that can weaken patent claims later when they are enforced.
Normally, hiring experienced patent litigators on an hourly basis would be prohibitively expensive for the purpose of initial patent drafting and prosecution to allowance. However, we offer flat rates for patent drafting and prosecution tasks, which you can confirm are competitive by comparison to survey averages published by the American Intellectual Property Law Association (AIPLA).
Utility Patents
When most people think of a patent, they’re really thinking of what we call a “utility” patent – a patent on an invention’s utility.
A utility patent protects any new and useful process, machine, system, product, etc.. It is one of the most valuable forms of intellectual property because it gives exclusive commercial rights to the ideas and features that differentiate a process or product in the marketplace by enhancing its utility to consumers, or that improve manufacturing results or cost. The term of exclusive rights afforded by a utility patent is 20 years from the date of its filing.
Design Patents
Aside from the utility patent, there’s another popular kind in the United States and some other important foreign jurisdictions: a design patent.
Design patents are cheaper and don’t last as long, and they don’t cover utility but rather the aesthetic appearance of an invention. The drawings in a design patent are critical because there are no textual claims. We manage professional drawings draftspersons to ensure that the drawings have the appropriate scope and detail to cover the novel ornamental aspects of your invention. In some cases, a client may be best served by seeking both utility and design patent protection for a new product innovation, and in many cases the situation calls for just one or the other. We can guide our clients to make the best decision.
Patent Prosecution - Domestic & Foreign
Patent prosecution refers to the interactions and arguments made before the United States Patent & Trademark Office (USPTO) or a foreign patent office to respond to claim rejections and advance a pending patent application to allowance. Patent prosecution is different from patent litigation in that the latter typically involves bringing or defending a legal action in federal court against an accused infringer of an already-issued patent.
We are experts in helping clients, ranging from large public corporations to cutting-edge start-ups, to make the foreign and domestic filing decisions that best support their particular goals and business situation. We competently draft and prosecute enforceable patents in the electronic, mechanical, and biomedical arts, in collaboration with foreign co-counsel when necessary.
There are many practical considerations to deciding whether to file and prosecute a patent application only in the USA and/or in one or more foreign jurisdictions. There is no such thing as a global patent, but rather each nation issues patents that may be enforced in that nation’s courts, and the expectation of practical enforceability and sufficient return for an enforcement effort vary from one nation to the next. Sometimes the market for a product, or the sources of its manufacture, are concentrated in a particular foreign nation where the patent application process may be cheap or expensive, and where patents may or may not have a practical expectation of enforceability. Sometimes a US patent alone is sufficient leverage to achieve a business or licensing objective. We help guide our clients to consider the many factors pertinent to making an informed foreign patent filing decision.
Patent Assignments
A patent assignment is, as the name implies, assigning the ownership of a patent to another person or business entity. By contrast, a patent license is an agreement by the assignee of a patent to allow another certain rights to make, use, or sell an otherwise infringing product. We have substantial experience in licensing agreements, assignments, patent pool evaluations, technology transfer, consulting contracts, determinations of claim essentiality to standards, confidentiality, and most other agreements related to commercializing inventions.
Get Guidance from Intellectual Property Experts
If you are in need of advice or services related to intellectual property, please feel free to contact us.
Do not provide any information that you consider confidential until we have confirmed that there are no conflicts of interest and have formally agreed to establish an attorney-client relationship.
Why Choose Us
We have extensive experience in a wide range of legal and business issues related to intellectual property. Each of our partners holds both advanced engineering and legal degrees from prestigious universities, and has supplemented his academic credentials with years of technical experience. We combine top-tier big law firm and Fortune 500 in-house expertise and experience with the attitude and responsiveness that is only available from a high-caliber boutique law firm.