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Not all patents are created equal. A good invention can be ruined by a bad patent application, or by mistakes made during patent prosecution. Writing a good patent application requires a sound, comprehensive understanding of an invention and how it will be used in the real world. Just as important, however writing a good application requires a comprehensive understanding of how the Patent Office examines applications, how courts interpret patent claims, and the strategies used to avoid or design around your patent.
A good patent attorney understands at least the basics of the above requirements, but a great patent attorney understands them all and incorporates that understanding into each patent application he or she prepares. Coats + Bennett has great patent attorneys that love the work they do. Many of our attorneys hold advanced scientific or engineering degrees, and many have extensive industry experience as working engineers. Perhaps most importantly, each of our attorneys is supported by the combined expertise and wisdom found only in high-quality law firms that have years of focused work in intellectual property law. We are that kind of firm, and we can use our expertise to protect your rights in the United States and worldwide.
For more information regarding patents, please see the links below.
There are three types of patents: utility, design, and plant.
Utility patents protect how things work. Design patents protect only the ornamental appearance of a thing, and cannot ever be used to protect how the thing functions. Plant patents, as the name suggests, protect plants (subject to certain qualifications).
For most inventors, the utility patent is most useful. Indeed, when most people say they want a patent for their invention, they really mean they want a utility patent.
While an inventor can prepare and file a patent application without using a registered patent attorney or agent, we do not recommend attempting the process without good legal help. (See “Doing Your Own Patent Work” on this page, for a more detailed discussion.)
Assuming you have decided to use a patent attorney, the process is fairly straightforward and usually includes these steps:
The above process usually takes 4 to 6 weeks from the invention interview. That amount includes attorney fees, government-imposed filing fees, and drafting charges for preparing formal patent drawings.
Importantly, the preparation and filing costs are only one component of the overall costs of obtaining a patent. Some time after filing, the Patent Office will examine your patent application to determine its patentability. If that determination is negative, your patent attorney will have to make arguments to overcome the negative determination and/or make amendments to your application’s claims to overcome the negative determination. The examination process may include several of these back-and-forth exchanges between the Patent Office and your patent attorney. The whole process of examination is called “patent prosecution”. Finally, if prosecution is successful and your patent application is allowed, you must pay an issue fee to the Patent Office.
You might not be surprised that a patent attorney tells you not to attempt preparing and filing your own patent application, but you may be surprised at the reasons behind that advice.
A patent application is far more than a description of your invention; rather, it is one of the most complex legal documents in existence. Not only must the application meet all the legal requirements for demonstrating that you are in possession of your invention and enabling others to practice your invention without undue experimentation, it must describe and claim your invention in a manner that preserves the broadest possible protection for your invention. No matter how good the patent specification is, bad patent claims (too much detail, wrong detail, poor word choices, etc.) can rob your patent application of its commercial value.
Worse, everything you say (and some things you don’t say) in the patent application and in all the correspondence you have with the Patent Office during the examination of your patent can and will be held against you. In other words, there are many, many “wrong” things that you can do to compromise the otherwise broad scope of your claims.
Beyond that, you must understand that when you’re writing a patent application and/or arguing with the Patent Office about the patentability of your invention, you are dealing with two different audiences. Your immediate audience is the patent examiner working at the Patent Office. However, your long-term audience is the patent courts that will judge what your claims do and don’t cover in any patent litigation lawsuit that involves your patent. If you don’t understand how courts decide what a given patent claim does and doesn’t cover, you simply cannot reliably write good, strong patent claims.
Provisional patent applications are popularly thought of as a “cheaper” type of patent application. However, provisional patent applications are never examined by the Patent Office and do not issue as patents. Instead, provisional patent applications serve as temporary placeholders. Put simply, a provisional application establishes a filing date for your invention and gives you up to a year to file a related utility application. That utility application takes its “priority date” as the provisional’s filing date.
The “trick,” if there is any trick to filing a provisional patent application, is to make sure that your provisional patent application includes all of the important details that will be in the later utility application. Otherwise, the provisional patent application’s date protection will not apply to the later utility patent application, leaving it vulnerable to inventions made after the provisional filing but before the utility filing date.
Coats + Bennett knows patents. We are consistently ranked by IP Today magazine as one of the top 200 patent law firms nationally, as measured by the number of annually issued patents.