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In most countries that provide for patent rights, including the United States, patent prosecution is the process of preparing a patent application, complying with formalities while covering the claimed invention, filing the patent application, and further communicating with the government to seek official approval.

(Note: Some general description is provided here, but note that the specific peculiarities of your case may warrant a different result, given the myraid of statutes, case law, rules, and minutia that may quickly change the outlook of your case. One basis for rejection, for example, is the 35 U.S.C. section 102(b) "On-sale bar." 102(b) precludes patentability if the claimed invention was sold (or offered for sale) more than one year prior to filing the patent application. There are many others (too many to list and explain), which is what the benefit of an experienced patent practitioner can help to provide, which better protects your invention.)

In the United States, for example, the U.S. Patent & Trademark Office (USPTO) has the power and authority to issue a patent under federal law. A patent disclosure (patent application) is given by the applicant to the government in exchange for seeking patent rights, and if successfully argued by your patent practitioner and allowed by the USPTO, the patent holder can enforce. Patent prosecution can be a complex task that requires specialized expertise, both legal and technical.

AEXIUS, LLC offers full service patent application preparation services, including: international and domestic prior art searches, patent application drafting, and prosecution through issuance and maintenance.

Provisional or Nonprovisional? One question is whether to file a patent application as "provisional" or "nonprovisional."

First, a non-provisional patent application (NPA) will give an applicant "patent pending" status. The NPA is a complete patent application, including claim language. This language must be supported by the specification, which means that the claims cannot introduce subject matter that is not disclosed in the specification (i.e. how to make and use the invention), unless the claims are self-supporting. NPA's are a direct path toward potentially enforceable patent rights, assuming the claimed invention meets all other requirements.

By comparison, a provisional patent application (PPA) also gives your claimed product or process "patent pending" status for up to one year. With either NPA's or PPA's patent rights are not enforceable unless and until the patent issues. PPA's are a cost-saver initially, but you must file a non-provisional application within one year, plus applicable fees, if you want to take advantage of the PPA. The later-filed NPA, to claim the benefit of the earlier filing date of the PPA, must be supported by the written description (specification language and drawings) of the PPA as filed. Thus, the language and quality of the earlier filed PPA must have been sufficient in substance to support a strong NPA. If the applicant plans to file NPA eventually, it may be more beneficial to file full NPA from the start using a skilled patent practitioner. Furthermore, given the rule that applicants may not add new matter to the specification or claims that is not already disclosed in the first filing, significant thought and preparation must be made in advance of filing to better secure rights under the patent. Note: if no NPA is filed, the PPA will become abandoned after the one-year grace period elapses.

Generally, the U.S. patent system rewards "first to invent," but in practical terms it is better to be "first to file" and "first to invent." Most countries disregard whether an inventor was actually first to invent, which can be an expensive conflict to adjudicate, instead looking at who was first to file, which is practical and more economical. The U.S. Senate and House of Representatives, in identical bills (S.1145 and H.R.1908, each entitled, "Patent Reform Act of 2008"), are currently considering switching to a "first to file" system.

A patent gives its holder the right to exclude others from making, using, selling, offering for sale, or importing into the United States, the patented invention. This right is granted for a limited term to give inventors an incentive to disclose their invention to the government, via USPTO, and then after the limited term it becomes prior art and dedicated to the public. A patent license can give others permission in exchange for a fee or royalties the right not to be sued during the term of the patent.

Utility patents are main focus of this discussion. A utility patent lasts 20 years from the filing date of the patent application. (Design patents only protect ornamental design, and are generally considered weak and easy to build around. Thus, utility patents are the better choice when trying to cover functionality. Plant patents cover asexually reproduced tubules, and are usually not an issue for most inventors.)

Generally, an invention must be shown to be new, useful, and not obvious (to one of "ordinary skill in the art to which it pertains.") The "useful" requirement includes both a benefit such as a problem solved, and operativeness. A patent cannot be obtained unless it describes how to make and use the invention to one of ordinary skill in the art. The application must contain a full, clear and concise description of the invention.

Patent protection in the United States can be obtained by filing an application in the USPTO. An international Patent Cooperation Treaty (PCT) application can also be filed designating PCT member countries (PCT Contracting States) where you also intend to file; you (as patent applicant) may seek a foreign filing license from the USPTO to file for patent protection in other countries. Under federal patent laws in the U.S., the license for foreign filing must be obtained first, before filing in a country other than the United States, in order to maintain rights in the U.S. Overall, the process of drafting and then prosecuting a patent application can be overwhelming to an independent inventor who does not have legal education, and the USPTO strongly recommends retaining a registered practitioner to help with the patent application. The respective roles of inventor and registered practitioner are complementary.

Rejected applications will become prior art, and the inventor generally does not get a second chance to file. Typically, the USPTO will reject applications. Part of the value in hiring a registered practitioner is in their legal and technical knowledge, that can help overcome rejections by applying the patent laws to the specific facts of your case, i.e. to your invention. To be effective, it must be done prior to filing the patent application. It can be difficult for a practitioner to "save" an application later, after it was prepared by someone else, that does not account for important considerations to be made during prosecution of the patent application. There is a myraid of case law and a large body of rules and regulations that affect how a patent application should be prepared and how correspondence and the various USPTO fees are handled.

An actual prototype (actual reduction to practice) is not required to meet inventorship. Instead, filing the application can show "constructive" reduction to practice if it has all of the elements of the claimed invention. In short, it's best to file first, but it must be a well-prepared filing.

In the U.S., a patent application can be sold or licensed, which gives its assignee the right to continue prosecution, but is unlikely to be valuable to a third party unless a patent issues from the USPTO. No right to enforce the patent accrues until the patent reaches issuance. The owner of the patent has the exclusive right to stop others from making, using, selling, offering for sale, or importing into the United States the patented invention. Title 35 United States Code, Section 271. The term of this exclusive right is for a limited time of 20 years from the filing date of the patent application which later issues as a patent.

It is strongly recommended that you research credentials as many "search" companies are not registered to practice before the USPTO, and thus not regulated by federal laws such as the requirement to keep client information confidential.

Initially, a patent search (or "prior art search") is helpful to find what the USPTO or competitors mgiht find when trying to invalidate your patent application. A patent search can help a practitioner anticipate arguments of the USPTO in rejecting your application based on prior art and in light of the patent laws. A professional search can be valuable if performed by a person with relevant knowledge and background (i.e. technical expertise and patent law). The cost may range from a few hundred to the thousands, depending on the extent and expertise used for the search. You should be advised that any prior art found must be disclosed to the USPTO with the application, or it may be grounds for invalidating your patent application. Some older practitioners who have not updated their practice still recommend not doing a search, but this will more likely cost you in thelong run when a competitor challenges your patent and it is invalidated, or when the USPTO finds certain prior art and then invalidates the patent application based on art that you might have otherwise discovered using a professional search, or by your own search. In addition to drafting and prosecution before the USPTO, Aexius, LLC offers professional search services.

After the search is done, a legal patentability opinion can be written, analyzing the results of the search and comparing your invention. Prices range depending on the complexity and extent of prior art, or legal issues implicated. It takes time to analyze the facts of your invention, and then each prior art patent or publication, apply these facts to the law, and reach a tentative conclusion. However, the combination of search and preliminary opinion can help by giving you more information to make a decision whether to proceed with a patent application, before a large cash outlay. However, note that a "favorable" opinion is no guarantee: the USPTO is the authority for deciding whether the patent should be granted. It is also unethical for registered practitioners to promise a specific outcome. I hear many candidate cases and often do not accept a case due to weak merits.

AEXIUSSM services are more truly complete than any invention marketing service, which often only provide search capability, and must incur increased expenses by referring the work to an outside patent agent or attorney. AEXIUSSM patent prosecution services include:

  • Initial Patentability Assessments and Patentability Opinions
  • Provisional patent applications
  • Non-provisional patent applications
  • International patent applications
  • Business methods
  • Improvement patents
  • Continuations and continuation-in-part applications
  • Election of species
  • Divisional applications
  • Interference practice, including inventorship disputes
  • Patent specification drafting and quality review
  • Response to Non-Final Office Action
  • Rejection and overcoming prior art rejections; novelty bar; on-sale bar
  • Overcoming rejections as to lack of enablement or support in the specification, section 112
  • Overcoming 35 USC 102/103 Obviousness rejections
  • Obviousness double-type patenting rejections
  • Objections as to form of claims (implications on potential litigations and enforceability of patent), section 112
  • Response to Final Office Action
  • Appeals before the USPTO Board of Patent Appeals and Interferences (BPAI)
  • Requests for continued examination
  • Recording assignments and relevant documents with USPTO
  • Process and product-by-process patents
  • 35 USC 112 para. 6 "Means plus function" language and limitations
  • Patents or patent applications arising from work performed under a Federal Grant
  • Correction of Inventorship
  • Interviews with Patent Examiner; Examiner Amendments
  • Receipts, docketing, and filing
  • Fees administration, claiming "small entity" status, and seeking accelerated prosecution
  • AEXIUS, LLC offers competitive rates and the legal qualifications to advise you regarding patent prosecution matters before the USPTO. You may contact us for a free 30-minute consultation by filling out the form below. Your information is held in strict confidence.

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