The founding fathers understood the importance of providing incentives to people to invent useful inventions. In the Constitution, in Article I, Section 8, Clause 8, they authorized Congress to enact patent laws: “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
If you have developed a new, useful, and non-obvious process, machine, manufacture, or composition of matter, you may be able to protect your right to profit from your invention by securing a utility patent. The United States operates under a first to file patent system, which means it is more important than ever to file patent applications as early and often as possible. If you wait, and someone else happens to beat you to the Patent Office, then they may ultimately have superior rights to the invention.
Once you obtain a patent, you will be able to exclude others from practicing that which is claimed in the patent. Accordingly, if someone wants to practice that which is claimed in your patent they would need to come to you and work out some sort of license arrangement, or else they may infringe your patent. Patents give the owner the right to exclude others from making, using, offering for sale, selling, or importing the patented product or process.
The patent process, however, can be complicated. While it may be possible to obtain a patent on your own, it is highly advisable to retain experienced patent counsel to undertake the process on your behalf. Additionally, if you prepare and file a patent application on your own, it is possible that you might not obtain the broadest scope of protection to which you may be entitled.
“Patent Prosecution” might sound like “litigation” but that is actually the transactional process of drafting the patent application, which includes a detailed written description of the invention and claims specifically encapsulating that which you consider to be the invention, filing it with various patent offices around the world, answering requests for additional information from the Patent Office, and engaging in a didactic process with the Patent Examiner(s), all in an effort to obtain a patent from a Patent Office, which includes here in the United States, the US Patent and Trademark Office.
This process can also include reviewing other patents, non-patent publications, and reports of public disclosure(s) and/or use(s). This is critical to determining what material (so-called “prior art”) anyone else has disclosed to the public. The reason this is important is because understanding what prior art is out there can be used to guide how to draft the patent application in order to increase the chances of obtaining a patent and making sure that the patent is as broad and strong as possible. Prosecution also may require preparing and, if necessary, arguing any appeals from a final denial of a patent.
The Registered Patent Attorneys at Hankin Patent Law, APC handle all aspects of patent prosecution, from initial review of public disclosures and similar products to final appeals, when necessary. If you are considering filing a patent application, contact us to schedule a consultation. We can take a look at your invention, explain to you your options for moving forward, and make recommendations as to what might be the most efficient, most expedient, or most thorough way, depending on the goals you have.
In the United States, the law requires that you file an application with the patent office within one year of making the invention known or available to the public, barring certain specific rare exceptions, or else you risk giving up any patent-related rights you might otherwise have had.
We offer complimentary initial consultations so that we can get to know you and your invention and you can get to know us. At that initial consultation, we can explain to you the ins and outs of the process of filing a patent application. Usually, we will start by recommending that you have us conduct a prior art search and patentability analysis. This prior art search and patentability analysis have us place ourselves in the shoes of a patent examiner, and look for prior art that we think might be relevant to the patentability of your invention. Then, once we have all this information, we prepare a detailed, but relatively short, analysis letter for your review that explains how a patent examiner might use the prior art that we found to examine your invention. The benefit of having us conduct this prior art search and patentability analysis is that it gives us a lot of good information that we can then use to advise you on whether it makes sense to move forward with the patent application at all, or how we might be able to tailor the patent application to avoid the prior art while emphasizing that which we think might be patentable. In the long run, this can make the patent prosecution process more quick and efficient.
Once a patent application is filed with the Patent Office, it generally takes between eighteen months and three years for the Patent Office to examine the application. There are some ways to expedite this process, and there are some times when the process takes much longer. The Patent Office, in their examination, will identify the prior art that they believe is most relevant and apply it to your invention. Ultimately, the Patent Office will identify whether or not they believe the invention is patentable and provide their rationale for that conclusion. If they determine that the invention is patentable then it is a relatively quick and easy process to get your patent issued. If, however, the Patent Office determines that the invention is not patentable, then you have some options. You can either accept the Patent Office’s conclusion and allow the patent application to go abandoned, or you can hire us to prepare and file a response to the office action to explain to the Patent Examiner what they may have missed and/or how they may be mistaken.
At virtually every step along the way, there are a number of options that you could potentially take. Which option you choose is highly dependent upon the specific situation and your patent lawyer will explain to you your various choices along with the pros and cons associated therewith.
It is important to speak with a patent attorney as early as possible during the process of developing a new invention. There are many things that a new inventor might accidentally do that could negatively impact their substantive rights in their invention and a simple phone call might be able to shine light on certain pitfalls so that the inventor can steer clear of them.
Sometimes you just need to have a conversation with someone experienced in dealing with patents, so you can rest assured that everything is going according to plan.
We have close and long-standing relationships with patent attorneys in most other countries throughout the world. If you need or want to obtain a patent in any country outside the United States, Hankin Patent Law, APC can interface on your behalf with attorneys in those countries to provide you with the broadest and best possible protection.
Marc E. Hankin is a Registered Patent Attorney. He takes a proactive approach to protecting his clients’ inventions, and when necessary, constructing solid patent defenses. Through the use of an Intellectual Property audit, Hankin Patent Law, APC is able to flag unprotected technological advantages and to warn of potential discrepancies before they become problems.
Mr. Hankin’s strong and broad scientific background allows him to understand and discuss patent issues with engineers and scientists in many different disciplines. Mr. Hankin’s undergraduate training in Biology, Chemistry, and Physics (he also taught High School Chemistry and Physics for three years) and his Masters in Biology have equipped him to work with clients in such diverse areas: as chemical vapor deposition of transition metals; inkjet printers; dental bleaching and dental/surgical lasers; preventing drinks from spilling on airplane tray tables; desalinating water using the laws of nature (and no additional energy input); and food chemistry including making meat more palatable by slaughtering happier animals (no, really) and perfecting the method of keeping the chocolate layer of pudding from bleeding into the vanilla layer of pudding before the eater is ready for the spoon to disrupt the barrier, to name just a few.
Contact Hankin Patent Law, APC for information on how we can help you protect your valuable patents. If you are in need of an Orange County patent lawyer, then you need the lawyers at Hankin Patent Law, APC.