Patent Preparation and Prosecution

shutterstock_207301639You’ve already done the important part:  you’ve invented something — something you hope will change the world, or at least will improve your business.  We can help you protect what you’ve created.

As you go through the invention process, we can work with your team to capture the various iterations of your technology to protect them. Often we file temporary “provisional” patent applications in the early stages of inventions.

We then translate your discoveries into an official patent application that can be filed in the U.S. and abroad. The key here is understanding your technology and describing it accurately and completely.shutterstock_229035058

It’s essential that we work closely with you so that we can incorporate all the features of your invention into the final patent document.  Often the patent drafting can be done remotely, though we meet with the inventors in person when this is helpful.

A patent application is more than just a technical document. There are a lot of formalities to be observed, and a lot of rules to follow. Preparing your patent application isn’t just paperwork though. It’s applied science.  Our attorneys have the scientific background and the legal expertise to turn your technical work into a compelling patent application. This stage is called patent drafting or patent preparation.

Once the patent application has been prepared, we can file it with the U.S. Patent and Trademark Office (affectionately termed the “PTO”), and we can file it internationally.  We work with a network of patent attorneys around the world who interact with their local patent offices and conform your application to the local requirements. We handle the interactions with the PTO.

shutterstock_139696486After the application has been filed, it’s sent to an Examiner, who assesses it for patentability. We respond to the Examiner’s comments and amend the application as necessary to shepherd it towards patentability. You can expect a series of back-and-forth correspondences with the Examiner before an application is allowed as a U.S. patent.  This process, usually lasting several years (or more), is called prosecution.

The goal of prosecution is an issued patent. We work closely with you during prosecution so that the coverage of the issued patent aligns with your business objectives. If you make a patent narrow enough, you may be able to get it allowed by the PTO — but would a patent like that actually help your company? You want a patent with enough breadth that it will offer you a meaningful barrier to entry for your technology.

shutterstock_228930481Often, people think of a patent as a monolithic, impregnable wall that competitors can’t get past. In our experience, that’s rarely the case.  Instead, we take a more flexible approach.  We work with you to devise a patent strategy that protects your technology from a number of different perspectives.  For example, we’ll file patent applications that claim a formulation or a device itself, along with claims to some of its novel components, in addition to claims to the method of using the formulation or device.  shutterstock_265694690This way, even if a competitor can avoid or design around some of the patents, there are others that are blocking the way.  We refer to this strategy as building a “picket fence” of intellectual property protection.

Our aim is to work with your company and your inventors to protect your technologies in a way that makes sense for you commercially.  By working closely with your team, we’ll understand your science, and we’ll understand your business.