Utility US Patent Application
A Utility Patent Decision Help Guide
Application Process, an interactive flowchart
General patent process
Why do a patentability search
Bay Area IP’s patent practice
Simplest ways to save money
Other money saving options available
How to get started?
Patent Application Process Overview
The nonprovisional, Utility Patent Application process generally consists of
for prior-art, getting
a patentability opinion, applying
for a patent, and prosecuting the
application until the patent is awarded. See our illustrated interactive flowchart
of the patent process for more details. If you are interested in a
Provisional Patent Application please read our Provisional
Application web page. To answer many questions you may have,
it may be helpful to review our A
Utility Patent Decision Help Guide, FAQ
on Patents, basic
Patent information, and our overview of the Utility
Patent Application practice.
Why do a patentability search
In light of a seminal court decision referred to as
it is now practically mandatory to do an extensive prior-art patentability search
to ensure that your patent will have maximal scope through an important legal mechanism
known as the Doctrine
of Equivalence. Before you have your patent application prepared,
we strongly urge you to have a patent prior-art search and patentability
opinion done by a professional. For more details, please review
Bay Area IP’s patent practice
Bay Area Intellectual Property Group (Bay Area IP) is a highly competitive firm
whose patent practice has a great depth and breadth of experience. This experience
drives our holistic approach that not only achieves high patent
but also efficiently delivers a high quality of service. We strive for a 4
week turnaround time for average patent application drafts, and usually can rush
a job to meet a bar
date depending on our workload.
At Bay Area IP, we are particularly adept in employing the wide array of patent
prosecution procedures sometimes necessary to attain an awarded patent. Typical
procedures used, for example, include protests,
and petitions. Bay Area IP has experience in drafting and/or prosecuting patent
applications in a wide variety of technical areas. We are continually
broadening our technical expertise to better serve you, and reduce your cost.
Given our strong technical knowledge base in most hi-technology areas, we seldom require much, if any, learning of the prior-art technology to understand your
invention. When it comes to high technology, we "speak your language", which saves our clients a great deal time and effort.
Even in particularly difficult technical areas at the fringes of our focus,
attorneys spend most of their learning time on the first patent application,
and learning time diminishes quickly thereafter because inventions tend to be incremental
improvements in the same technology area.
It is generally accepted that the specification and claims of a patent constitute
one of the most difficult legal instruments to accurately write. The critical
areas where problems often occur are in understanding /appreciation of the invention,
drafting/prosecuting the application, and in claim interpretation by the courts.
One of Bay Area IP’s strong advantages, beyond our extensive legal experitise, is that we employ only highly seasoned scientists and engineers to draft and prosecute your patent application to ensure that your invention
is accurately defined and claimed. Beyond solid specification and claims drafting
skills, a strong technological grasp of the invention and prior-art is also imperative
to achieving maximal claim scope and minimal
contamination, which contamination weakens the patent in litigation.
Unfortunately, even what was a well-written patent yesterday may loose much of its
value after an unfavorable precedence set by a new
decision. That is why Bay Area IP continually analyzes and assesses
recent legal decisions to design an optimal patent practice. We also keep
a close eye on major court cases in-progress and may preemptively adjust our patent
practice to hedge against potential changes in law. Bay Area IP actively engages
its assets and time in all of these critical areas to maximize the value of your
We also believe in educating you in plain English about legal or practical issues
that require an opportunity-cost decision in our patent practice. The standard
practice at many, if not most, other firms is for the
attorney to make all the decisions for you, and this is our default
practice as well; however, for those clients that desire a more personalized service
and tighter control of their patent’s risk-reward profile, Bay Area IP will explain
to you the issues, recommend a course of action, and faithfully execute your final decision(s).
Simplest ways to save money when patenting
At Bay Area IP we make every attempt to minimize your costs. Unlike many IP
firms in the industry, we understand that when we lower your cost to acquire a patent,
you are more likely to come back to us to patent your new inventions. Generally
speaking, you save money to the extent you do work that reduces our time spent on
your case. The simplest way our clients save money or to boost patent quality is to do the
a very detailed technical description (in plain-English) of the invention, drawing, etc.
A prior-art search helps us write the
claims and background sections
of the application more efficiently and effectively.
Unlike some firms, we do not play marketing games in our pricing strategy.
Some firms charge extremely low fees to draft/file the patent application, but pad
their prosecution bills to recover there discounting and make above market profits.
Instead, Bay Area IP
its overhead low so we can pass these savings on to you in the form
of very competitive total cost, while providing you top quality service and work product.
Many patent firms, unfortunately, play a sort of ‘bait-and-switch’ tactic where they advertise their “simplest
case”, or “minimum fee”, estimate, and charge you substantially higher fees as you
discover your case was not simple enough to qualify. In contrast, Bay Area
IP shows you a detailed breakout of typical or flat-fee costs for many levels of complexity,
thereby giving you significantly more predictability of what your true cost will
The cost to procure and maintain an awarded patent comprises the following general
You should always get a written cost estimate from the patent firm you are considering.
If they will not give you one, then you likely cannot afford there services.
We strongly believe in a "no surprises" billing approach. To that end, prior to engagement for casework, we provide inventors with a firm, written quotation that is several
pages long and lists the costs of (a) preparing and filing a (non-)provisional
application, (b) preparing legal responses for Office Actions (rejections) on
the Merits, and (c) issue fee costs. Our quotation give you an overall constraint on the total costs involved, and how they are spread over time.
About 14 months after filing your patent application, the USPTO examiner will usually
issue a preliminary patentability conclusion (usually a rejection) referred to as
an office action. Thereafter, during what is call prosecution, your patent practitioner
will prepare a response, often referred to as an amendment, to the office action.
The time required to prepare the amendment largely depends on the
the subject matter and the strength of the examiners rejection. We forward official actions to the client upon receipt,
and include any comments for the client’s consideration and provide a no-obligation cost quote to prepare the response. The client then pays Bay Area IP a retainer
in the estimated amount, within sufficient time (preferably no less than 30 days) before the
legal response is due.
application matures to issuance, we mail the client a notice and the
issue fee that is due. Then the issue fee is paid within three months
from the notice of allowance; and the patent is awarded. After issuance, maintenance fees become due at 3.5 years, 7.5 years, and 11.5 years
after the issuance date.
The cost of preparing an office action legal response in any patent case principally depends on two aspects of the patent examination
Examiner rejection veracity. NOTE: Most patent applications are rejected
at first; thus, applicants tend to incur additional legal cost for amendments responding
to examiner office actions.
all cases are suitable for remote clients who can communicate via the Internet,
mail, and telephone. An exception might be, for example, the very rare case
where to understand the invention it is critical to view a cumbersome prototype
that cannot be shipped; that is, where pictures and schematics of the invention
are inadequate. For all other cases, when working with a remote client it
is generally sufficient to have in advance common detailed, numbered diagrams, a
detailed description, and/or photos of the invention prior to the telephone and/or
Internet disclosure meeting.
For information on how to get started and to learn about our
initial consultation offer go to our get
started page web page.
Need help learning about and determining your company's IP options? You may want to schedule a consultation with a Bay Area IP Professional to most efficiently and effectively assist you in making your next step, the right one.
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Legal Notice: None of the information provided in this website should be construed
as or used as legal advice. The information provided here is for educational purposes
only, in order to help inventors learn background information before consulting
a practitioner. Since the best course of action in any specific matter will depend
on the specific facts of the matter, NOTHING on this site can provide a substitute
for the advice of competent legal counsel. Consult with a professional for specific
advice regarding your particular situation.
Bay Area Intellectual Property Group, LLC. © 2000-
2014, All Rights Reserved
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