Patent Application

A patent application is a group of documents submitted to a patent office, generally the USPTO or WIPO, in order to obtain patent protection for an invention or discover. Before submitted the patent application, you should conduct a patentability search to save time, money, and ensure your application contains the broadest available claims.

I save client time, money, and reduce the risk of losing patent rights by drafting and filing proper patent applications. This reduces the time and cost of responding to office actions and reduces the risk of losing patent rights by not prosecuting the application properly under patent law. I also help clients draft claims to obtain the most patent protection possible.

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Types of Patent Applications

  • Provisional 
  • Utility
  • Foreign
  • Design
  • Plant

Provisional Patent Applications

Provisional patents are essentially patent placeholders (“patent pending“). Provisional patent applications do not issue into patents. They publish your claims to ensure your priority to the subject matter for 1 year from filing, and can be used to extend your overall patent term from 20 years to 21 years.

How to File a Provisional Patent Application

To file a provisional patent application, you must submit the following to the patent office along with the filing fee:

  1. Application Data Sheet
  2. Inventor’s Oath or Declaration
  3. Information Disclosure Statement
  4. Written Description of the invention
  5. At least 1 claim
  6. A statement for the application to be treated as a provisional application
  7. Any necessary drawings
patent application drawing

Utility Patent Application

Utility patents are the nonprovisional applications, other than Design or Plaint applications, that issue into patents. Utility patents last for 20 years from the date of filing. Unlike provisional applications, utility applications are examined for their merits by the assigned examiner. Utility applications can claim priority to previously filed utility, provisional, or foreign applications. 

How to File a Utility Patent Application

  1. Application Data Sheet
  2. Inventor’s Oath or Declaration
  3. Information Disclosure Statement
  4. Written Description of the invention
  5. At least 1 claim
  6. Any necessary drawings

Foreign Patent Application

A foreign patent application is an international application filed at the WIPO under an international patent treaty. These applications provide a placeholder to file patent applications in all nations participating in the treaty. 

How to File a Foreign Application

  1. Application Data Sheet
  2. Inventor’s Oath or Declaration
  3. Information Disclosure Statement
  4. Written Description of the invention
  5. At least 1 claim
  6. Any necessary drawings
  7. Statement requesting treatment as a foreign application and naming a designated office
  8. a translation of the application if made in a language other than english

How to Prosecute a Patent Application

  • An “office action” is the patent office requesting more information or rejecting your claims
  • Respond to all office actions within the required time
  • Respond fully to the action with legal arguments

The examining patent office will respond to an application with requests for missing parts, rejections of claims, objections to form, and general application correspondence. Each official filing by the office is an office action, and responding to office actions is prosecuting the application. Every office action must be responded to within a certain amount of time. All grounds of rejection and objection must be addressed sufficiently and include reasons why the rejection or objection has been overcome. Failure to respond according to these rules causes an application to become abandoned. Abandonment results in a loss of patent rights, either permanently or for the lapse in time if you can show sufficient reasoning to reinstate the application.

Successfully Prosecuting a Patent Application

If you successfully prosecute a patent and 1 or more of your claims are allowed, your patent will issue. As long as you pay the issue fee and maintenance fees, your allowed claims will have patent protection for 20 years from the date of filing the application. Maintenance fees are due 3.5, 7.5, and 11.5 years after the date of issue.

Why You Should Work With Me

  1. During my 3+ years of practicing law I have achieved better results than attorneys with 25+ years of experience.
  2. I save clients thousands of dollars and offer flexible payment plans.
  3. I’m young, I work hard, and I respond to your calls.

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