Francelina M. Perdomo Klukosky, Esq.
Manhattan, NY: (212) 980-7206
Patent Prosecution
Patent Prosecution NYC Francelina M. Perdomo Klukosky - Perdomo Law
Contact NYC Patent Law Firm, Perdomo Law for Getting a Patent in Manhattan New York, NY 10007
Patent prosecution in many ways is the backbone of any business making or developing new products and technology. Without patents, an inventor has very little. A product or idea can be easily copied, and patents prevent that. With a patent, an inventor or patent owner can exclude others from practicing the invention for the term of the patent, usually twenty years, and the inventor or patent owner can license or sell the patent. So patents are an important business asset. We are experts at getting our clients patents that protect their inventions and are enforceable in court.
Strategy Development
Getting a patent should start with developing a well-thought-out strategy. There are a myriad of options in a patent protection. For example, the speed of getting a patent, what countries to file in, and how many cases to file are some of the many questions that a patent strategy addresses. To develop a strategy, we will arrange a consultation on the nature of the technology and the business objectives of the client.
NYC Patent Searches from Our Office
The next step normally is a patent search. This is really a critical step that many clients and practitioners omit, but the patent search allows us to identify similar work. This is important because work that is similar to yours can be used by patent examiners in making arguments that your invention is not novel or that its obvious over the prior art. Understanding the nature of similar work in the field helps to head off those rejections. Related references pertaining to patent law
can be discussed in a patent application and distinguished over your invention, and claims can be crafted that avoid pitfalls of prior art (i.e., pre-existing work).
A special feature of our firm is that we have expertise in patent searching, and we do our own searches. We typically match prices that external search firms would charge. Doing our own searching allows us to develop the best search strategy possible. We can review the results and refine the search interactively, which results in a better search, and gives us the best possible understanding of the technical field.
Patent Drafting and Prosecution
The patent drafting process normally begins with drafting claims. After the search is complete, and with the understanding of the technology from the inventors, we can determine the exact nature and scope that the patent should cover. Putting this into words is the process of claims drafting.
Claims drafting requires substantial legal and technical skill, and is really the heart of patent prosecution. A patent attorney or agent must understand the nature of the invention, the novelty, the related art, and must understand current law (which is constantly shifting) on what is patentable subject matter, and how much detail (called the “written description requirement”) needs to be discussed.
For example, decisions have to be made on how broad the claims should be. Recent trends in patent examination procedure and case law suggest that narrower claims are more likely to be granted and enforced. But this must be balanced with the nature of the invention and the prior art. If the claims are too broad, and they embrace prior art, the inventor risks obviousness rejections. If they are too narrow, important subject matter may be left on the table unprotected.
The claims should be a guide to the body of the patent, called the “specification.” A specification should discuss background art, and provided significant detail on how to make and use the invention. This is very important. Without providing an appropriate level of detail, the examiner may reject a patent application, or a court may find the patent invalid if the patent is challenged. An experienced patent attorney or agent can give guidance on how much detail should be included.
After a patent application is filed, it goes through a procedure called “patent prosecution,” where a patent examiner, who is an employee of a patent office, such as the United States Patent and Trademark Office, or any of about 20 major patent offices around the globe, will review the patent for the substantive requirements of patentability, including novelty, obviousness (called “inventive step” in some countries), written description (whether the specification fully explains the invention), and whether the invention is patentable subject matter.
Patent prosecution can be a very complex and expensive process. Patent examiners can reject a patent one or more times, and this is an area where skill and expertise, that we offer, can help get an issued patent out the door. We also manage patent appeals where necessary.
Our Competitive Advantage
One thing we really work hard at is understanding the business needs of our clients. We always ask why the client wants a patent and what they plan to do with it. Many of our competitors do not do that. But without this information, constantly in mind, an effective patent strategy cannot be developed. Some critical questions that a patent strategy addresses:
- What countries should patent protection be pursued? Patents have territorial application only. A US patent is not enforceable in China. A Canadian patent is not enforceable in Mexico. Let us advise you on the factors in deciding where you should seek patent protection.
- How fast do you need an issued patent? In many cases, there is a good business reason to get a patent issued as soon as possible. The default time to get an issued patent in the United States is 3-4 years. For some inventions, this isn’t a problem, for example if you need regulatory approval for a new drug that will take time. In other cases, accelerating this time line can be advantageous. For example, an patent owner seeking to license a patent may want an issued patent to get more favorable terms. Or, the invention may be for a technology (for example, pertaining to mobile telephone electronics) that will likely be obsolete fairly quickly.There are procedures for accelerated examination that are available in these situations that may be worth the extra expense.
- Should a provisional patent application be filed? Filing provisional patent applications gives an inventor a chance to refine the patent application at minimal cost, and in most cases, are desirable. But in some situations, a provisional patent application may not be cost effective. Let us help you develop the most effective strategy for your invention.
We also will get you patents that hold up in court. Not many patents go to patent litigation. Many that do are there because they are fundamentally weak patents, and infringers may have good arguments that the patent is legally invalid not infringed – arguments that a well drafted and prosecuted patent application will head off. So a really good patent is less likely to end up in court and more likely to be licensed or protect a valuable product. Getting a patent application done right, by a firm like ours that knows how to do this, will get you an enforceable patent that is less likely to wind up in court, and that will stand up in court if necessary.
Contact NYC Patent Prosecution Attorney Francelina M. Perdomo Klukosky for a Case Assessment
A critical factor, especially for entrepreneurs and startups, is whether to hire a patent attorney at all. Of course, you should!
The entire process is much too complicated and nuanced to do yourself. While there may be books and discount services, and websites that purport to help you file a patent application yourself, you are asking for trouble with these services. It is highly unlikely you will get an issued patent for a DIY patent application. And in the unlikely event you do get an issued patent, it is very likely there will be serious problems, such as unclaimed subject matter or some kind of flaw that prevents enforceability and could lead to patent litigation.
A likely outcome, that we have seen many times, is the disclosure of a valuable invention in a published patent application that surrenders valuable rights because the application was seriously flawed. Let us help you. Call us to discuss your needs.
Please contact us for a case assessment.
Additional References
Perdomo Law
1270 Avenue of the Americas
Suite 2005
New York NY 10020
Phone: (212) 980-7206
Suite 2005
New York NY 10020
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