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.