Steps to Obtaining Patent Protection of your Inventions: CrownoverLaw > Solutions > Patent Solutions > Process Overview

Importance of Communication 

Obtaining patent protection for even a single idea can take countless paths and informed decisions must be made at many points along the way. For example, during the first stage (the Application stage) an applicant should choose between provisional and non-provisional applications, PCT applications, and foreign national applications. 

These considerations, along with enforcement, monetization, product road-maps, and industry forces, among others, should control how the application is drafted and how the claims are structured. Because each step in securing patent protection requires a myriad of complex decisions, communication with a skilled patent attorney is critically important.

The good news is that as the Attorney-Client relationship matures, much less work is required. While initial patents may take many hours of additional work for the Attorney and Client, later patents can be accomplished with a simple disclosure.

At CROWNOVERLAW we never charge for our time spent understanding our clients industry and technology or to help our clients make informed decisions along the way. Our fees are earned by drafting outstanding applications and persuasive responses, amendments, and appeals to Official Actions of the USPTO.

This is an important investment CROWNOVERLAW makes in the Attorney-Client relationship, which has served us well with a growing, loyal, and appreciative clientele.

Getting Your Application on File:

Steps required to file a Patent Application.
(1) DISCLOSURE: filling out an invention disclosure form (IDF) is the first step in protecting your idea. An IDF conveys your idea to a patent attorney and allows the patent attorney to assess your situation, options, costs, and timelines. 
  -  Disclosures made to a California licensed Attorney are strictly confidential.
  -  Disclosures provide information about the invention.
  -  Disclosures also provide information about inventors, owners, prior art, etc.
  -  This is the Client's Responsibility.

(2) REVIEW: Once you disclose your idea in an IDF a Patent Attorney will review the IDF and provide options including type of IP protection, number/kind of patents, non-provisional or provisional options, and foreign filing options. Estimates of work, time, and money required to draft and file the application can also be provided at this time. When more information is needed to understand Client needs or explore Client options, an interview will be conducted.
  -  This is the Attorney's responsibility.

(3) AGREEMENT: Once the client and attorney agree on the time frame, cost, and work to be done a Service Level Agreement (SLA) will be made.
  -  Both the client and attorney should execute the agreement.
  -  Typically the client will provide a deposit for the USPTO costs and legal fees. 

(4) DRAFT: A 35 U.S.C. § 112 compliant Specification and Figures will be drafted. Claims may be drafted depending on the options elected by the client.
  -  The draft should comply with all strategically important foreign and domestic regulations. 
  -  The draft should also reflect the clients business needs and strategy.
  -  This is the Attorney's responsibility.

(5) APPROVAL: Once the Application has been drafted, the client must approve the application, sign an oath or declaration and a power of attorney.
  -  Other documents, provided by the attorney, may need to be executed at this time.
  -  This is the Client's responsibility.

(6) FILE: The Application will be filed along with all necessary supporting documents such as the ADS, IDS, assignment, oath, declaration, and other documents in some circumstances. USPTO or foreign filing costs will be paid at this time. These costs can include search fees, examination fees, filing fees, recordation fees, excess material fees, and other fees in some circumstances.
  -  This is the Attorney's responsibility.
  -  Patent Office Fees are passed on to the Client at Cost.
  -  Proper filing ensures that filing dates will be retained and no surcharges will be imposed later.

Prosecuting Your Application:

What is "Prosecution"

After filing, your application will enter the "prosecution" phase. Prosecution is the process of refining the invention before the USPTO. 

This begins with a non-substantive review by the USPTO to ensure the application and supporting documents are complete. 

The Application is then assigned to an Examiner who will examine the Application and the claims to ensure they meet the statutory requirements. Examiners are tasked with construing claims broadly, almost to absurdity. In so doing the claim language is tested and evaluated in light of any prior art found.

Getting a Rejection

Every well drafted Application will almost certainly be rejected. Although some patent applications do get allowed without a rejection, this is an immediate a red flag for experienced patent attorneys. Among the many problems with a first time allowance, the most problematic include:
  -  Overly narrow claims.
  -  Strong arguments against the patent's validity.

The average number of rejections before a patent issues varies by art unit, but many USPTO watchers estimate that 2.3 rejections are made on a patent application before a notice of allowance is issued.

Once an Office Action is mailed the clock begins to run on the Applicant's ability to respond. Some deadlines can be extended by paying a fee. Other deadlines will produce an abandonment of the application. 

How to Respond

Responding to an Office Action requires a thorough knowledge of the case law governing the Examination process. The Office Action should be analyzed in light of the applicable law and the intrinsic record (the patent application and file wrapper) to determine the best course of action.

The options before an Applicant can include traversing the rejection, amending around cited references, filing an RCE with or without an amendment, appealing the rejection, requesting an interview, petitioning the Director, filing restriction requirements, filing affidavits, electing claim sets, etc. Each option itself will further include a myriad of options. Appeals, for example, will present options such as pre-appeal conferences, reply briefs, etc.

In light of the many paths each individual patent can take, it is next to impossible to quote or provide an estimated amount of work for any one patent. As a thorough understanding of case law is essential to making the decision legal advice is critically important for preserving the rights of the Applicant.

Reducing Expense

Expenses in patent law arise in many places including: 1) drafting; 2) prosecution; 3) enforcement; and 4) monetization. These expenses include money but more particularly they include time, expertise, and forfeiture of rights.

Drafting expenses result from the requisite expertise necessary for drafting a quality patent application. Drafting an application that anticipates the technicalities and legal arguments, arising during the prosecution phase, drastically reduces the expense of prosecution. The largest recapture of expense during prosecution appears in the traversing of rejections, amending the claims, and appealing. 

As the benefits of a well drafted application translate directly into reduced expenses during prosecution, a carefully drafted and prosecuted patent application translate into reduced expenses during enforcement or monetization. The largest recapture of expense during enforcement appears in defending the patents validity and scope of the claim terms. The largest recapture of expense during monetization appears in the due diligence of a license or acquisition.

To illustrate this principal, applications drafted by inexperienced attorneys are easy to spot and provide useful examples of what not to do. The rookie mistake at the top of the list is the inconsistent use of terms. Patents are legal contracts granting legal monopolies from the federal government to an inventor. Inconsistent use of terms jeopardizes this at every step.

Inconsistent use of terms in a specification can make amending, traversing, and appealing during prosecution painful. It can easily triple the time it takes an attorney, leading to immense legal fees. Inconsistent use of terms also leads to validity challenges that greatly increase the cost and complexity of litigation and in extreme cases result in judgements of invalidity. These problems are usually discovered during due diligence reviews when an owner wishes to license or sell the patent, which leads to reduction in perceived and actual value.