Utility US Patent Application

Patent Application Process Overview

The nonprovisional, Utility Patent Application process generally consists of invention, searching 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 Festo, 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 andpatentability opinion done by a professional.  For more details, please review our patentability search page.

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 quality, 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, appeals, 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, patent 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 patent 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 court 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 awarded patent.  

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 patent 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 following:

1.              Prepare a very detailed technical description (in plain-English) of the invention, drawing, etc.

2.              Do your own prior-art search.

A prior-art search helps us write the claims and background sections of the application more efficiently and effectively.

1. Patent application preparation, drawings (usually 2-4), and filing
2. USPTO Patent Prosecution (usually 1-2 office actions, the first typically occurs between 9 and 18 months after filing)
3. Patent Issuance
4. Periodic Maintenance fees 

Nearly 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 free initial consultation offer go to our get started page web page.

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