Five Important Things to Consider When You File a Patent Application

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LOCATION: Alexandria, VA DATE: March 11, 2018 -- The United States Patent and Trademark Office (USPTO) unveiled a new design for the U.S. patent cover on March 11 at South by Southwest in Austin, Texas. The new design will be issued later this year beginning with patent number 10,000,000. Created by a team of in-house USPTO designers, this is only the second revision to the document in the past hundred years. CREDIT: USPTO

So, you’re about to file a patent application. As you work with your patent attorney to get everything ready for filing, it’s important to step back and make sure you’re not missing the big picture. The five key points listed below will help you with that assessment.

1.  Know Why You’re Doing This.

As with every other aspect of your business, don’t just go with the flow and file a patent because it seems like the thing to do. Know what patents are for. Actively engage in the process. To help you better understand this part of the analysis, here are a few reasons why a patent might be good for your business:

  • A patent will grant you exclusive rights, meaning you can stop infringers.
  • Filing a patent application, whether you end up with an issued patent or not, will act as a public prior art document against anyone who tries to patent this sort of thing in the future.
  • Having a patent, or even a pending application, can act as significant deterrent to would-be competitors.
  • Patents are valuable assets for your company.
  • A patent or patent portfolio shows you are serious about your IP, and can boost your inventors’ prestige and your company’s image.
  • A patent can increase your negotiating power with competitors and licensees.
  • Filing a patent application can be considered necessary by potential investors or businesses looking to acquire your company.

2.  Use the Right Filing Method for Your Situation.

Depending on your situation, there are many options when it comes to filing a patent application. It’s usually a straightforward choice, but know that you should consider whether to file one or more of the following:

  • US nonprovisional patent application
  • US provisional patent application
  • Foreign patent application
  • PCT application
  • US design patent application

You should also consider the following choices as well:

  • Prioritization
  • Petitions to make special based on age or health
  • Patent Prosecution Highway

Check out this article for more details: Speedier Patents

3.  Work Closely with Your Patent Attorney.

Your patent attorney does this for a living, so he or she is an invaluable asset in this whole process. Don’t be afraid to ask questions and stay in close contact throughout the preparation of your application.

Based on the way most patent attorneys work, you should know the following:

  • Your patent attorney (not you) will prepare the final application, based on your disclosure. The more thorough your disclosure is, and the sooner you get everything to the attorney, the easier this whole process will be.
  • Your engineers and inventors will have to spend some time on this. Your patent attorney can’t read minds, and probably won’t be able to explain everything adequately without their help.
  • Patent applications require multiple levels of detail, arranged in a designated way, described very precisely. All that while also avoiding certain language that can cause trouble later if you’re not careful. Add in several hundred years of arcane law that must be kept in mind, and hopefully it’s clear that the patent attorney will have to do a lot of work.
  • Make sure you tell your attorney what you consider to be the “inventive” part of your invention. What’s the special sauce? What’s different from the way others have done it?

4.  Review the Draft Application Before It’s Filed.

Before filing, you will be provided with two draft documents: (1) a Word document containing the specification (also referred to as the written description) and the formal claims; and (2) a PDF of the numbered drawings or figures. Sometimes these might be in other formats, but these are most common. Regardless, the important thing is to review everything for accuracy and completeness. Here are a few items to consider:

  • Does the specification describe every aspect of your invention well enough that someone else in your position could go do it themselves?
  • Is anything important missing?
  • Do the claims seem to be directed at what you consider to be the invention?
  • Do you see an easy way to design around the claims? For example, if the claims say a device has two pieces that are bolted together, could it be done just as well using a clamp or an adhesive? If so, your competitor might see that as well, so tell your attorney!
  • Focus more on substance than on style. Many parts of a patent application require language that seems odd or stilted. If something seems weird, ask about it. Just don’t be surprised if it’s intentional and for a good reason.

5.  Know Your Deadlines and Timing.

Your patent attorney is the best person to explain these to you, but know that there are deadlines, and there are timing considerations. Here are a few to make sure you discuss:

  • You can’t file a US patent application more than 12 months after the invention has been publicly disclosed (e.g., sold, shown at a trade show, etc.). NOTE: This 12-month grace period does not apply in most other countries. So if you go public before you’ve filed in the US, that means you’ve immediately given up your right to file most foreign patent applications.
  • Because of that first item, it’s a best practice to file your patent application before you disclose the invention to anyone (other than under a nondisclosure agreement).
  • If you want to officially prioritize your patent application at the USPTO, you must do so on the day you file. It cannot be done later.
  • Foreign and PCT patent applications must be filed within 12 months of your initial US patent application (provisional or nonprovisional, whichever was first).
  • If you prioritize the application, you will likely hear back from the USPTO in 4 to 6 months. If not, it will likely be 16 to 20 months. YMMV.

Conclusion

Filing a patent application can be a fun and gratifying project. It can also be time-consuming and frustrating. Just remember to step back from the day to day details, and consider the five key areas outlined above. As always, feel free to contact me if you have any questions or concerns. Good luck!

 

Blog Post © 2018 Kolitch Romano LLP

 


Dave

If your company’s intellectual property protection isn’t where you want it to be, book a time to talk to me. I’d love to learn about your business, explain your strategic options, and work with you to secure your vital IP assets.

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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.