Patents

Steps To Expect

Patent Process

Whether you’re a first-time inventor or have some experience with the patent application process, your first step after developing a new invention should be a consultation with a registered patent attorney. We offer a free, no obligation, 30-minute consultation to walk you through the steps required to obtain protection for your idea and to determine whether your invention meets the legal criteria required to move forward with a patent application.

You may choose to have your free initial consultation via telephone or in our downtown Fort Lauderdale or Miami office. Because we work with clients from all over the country, a telephone conference is often the most practical option.

A patent search usually follows an initial consultation. A search of existing patents and published patent applications provides insight into whether all or some of the invention is patentable. While inventors can perform their own patent searches, we usually advise clients to have a professional perform the search.

Professional patent searchers have tools, experience, and an understanding of the patent classification system that can uncover prior inventions (which are called “prior art”) easily overlooked by the inventor. A professional patent search will help determine whether a patent may be obtained based on the available prior art, but it’s never a guarantee of patentability. This is because patent applications filed at the U.S Patent and Trademark Office (USPTO) are maintained in secrecy for at least 18 months after filing unless an inventor chooses early publication, which is rare.

Therefore, there may be prior art that is not available for searching. Even so, a search is an important information-gathering tool used by most inventors. A professional patent search may also allow an inventor to decide whether the potential scope of the patent is broad enough to justify the expense of the patent process.

If you decide to move forward, the next step is drafting the patent application. Utility patents are the most common type of application which can be filed for a process, a machine, an article of manufacture, or a composition of matter. Further, utility patents may be filed as either a provisional patent or a non-provisional patent. Some instances may call for the use of a provisional patent, which acts as a one-year place holder for the patent but is not itself reviewed by the USPTO.

Notably, provisional patent applications are usually faster to prepare and file and are initially less expensive than a non-provisional application, but they may be more expensive overall because of the need to file a corresponding non-provisional application within a year of the initial filing. We will work with you to determine which application makes sense for your situation. If it’s important for you to have a filing date as soon as possible, a provisional application may be appropriate.

Inventors commonly ask when a patent is pending. Once your patent application if filed, your patent is pending and related products may be labeled and referred to as “patent pending.”

 

 

In addition to filing in the U.S., we will counsel you on your global filing strategy in the event that your business model includes foreign sales and/or manufacturing. Foreign filing typically must be filed within one year of an initial application.

For foreign filing purposes, it is important that the invention has not been sold or publicly disclosed prior to filing an application as certain conduct can prevent receiving foreign patent rights.

At the time of filing, we will discuss your options to jump ahead in the patent line and expedite the patent examination process.

There are several options available to expedite the process, each with their own advantages and disadvantages. We will help you make an educated decision on whether your business strategy warrants an expedited examination.

When your patent application is received at the USPTO, it will be directed, based on the subject matter of your claimed invention, to an examiner with technical training and/or experience in that particular area of technology. The examiner will perform a search to ensure your claimed invention is new and not merely an obvious improvement to known technology.

When we first receive a substantive response from the patent office, the patent examiner will issue either a Notice of Allowance or an “Office Action.”

If the application is not initially allowed, the examiner will indicate his reasons for rejecting some or all of the claims in your application. This is not an uncommon occurrence. In turn, we will respond to the examiner.

The response may include arguments as to why the examiner’s reasons for rejection are incorrect. Alternatively, we can amend the claims of the patent application to overcome the examiner’s rejection(s).

After we file arguments and/or amendments in response to one or more Office Actions, the examiner may issue a Notice of Allowance indicating that your invention will issue as a patent upon payment of an Issue Fee.

Prior to issuance of your patent, you have the option of filing one or more continuing patent applications. This is a separate patent application that maintains the filing date of the original subject matter.

Continuing patent applications allow you to seek patent claims that vary in scope from your previous applications. This is sometimes useful to prevent would-be infringers from “designing around” your previously allowed patent claims to obtain a patent on a similar invention.

Issued patents require payment of maintenance fees that are due 3-1/2, 7-1/2, and 11-1/2 years after the patent is granted. These fees gradually increase in cost and prevent patent holders from sitting idly on patents which are not in use.

What we do

PATENT EXPERTS

Choosing a patent attorney is an important decision and The Concept Law Group has extensive experience in all aspects of securing patent protection in the areas ranging from simple mechanical devices to highly engineered and complex software and electrical-related patents, and everything in between.

We advise individuals, universities, and small and large companies alike with respect to patentability, freedom to operate, drafting provisional and non-provisional utility or design patent applications, foreign filing a patent application, initiating and conducting reexamination/post-grant review proceedings, and enforcing the rights of any patent holders through thoughtful, cost-effective, and intelligent litigation strategies.

We work closely with our clients to identify patent filing strategies which support both licensing and the development of patent portfolios in order to enable them to secure a competitive position in businesses that depend on strong and enforceable intellectual property.

We also provide litigation support to those law firms desiring the assistance of knowledgeable, experienced, hard-working, and personable patent attorneys who are registered with the United States Patent and Trademark Office.

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