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For many clients, especially entrepreneurs seeking a first patent in a particular field, a prudent first step is a search for relevant prior art. This patentability search looks for issued patents and published patent applications. The patentability search may be expanded to also look for other forms of prior art such as technical papers or products. Patentability searches have blind spots, but conducting a patentability search can greatly reduce the risk of getting an unpleasant surprise of relevant prior art during the patent application process.

The most cost effective way to proceed is to work with a client to draft a detailed description of what sort of prior art is being sought and then to hire a search firm. The search firm uses ex-patent examiners and other technical specialists to find the relevant prior art. Each searcher has a specific technology focus. The searchers have access to specialized data bases and have hourly rates well below that of a patent attorney.

Frequently, the search is guided by a draft patent claim that addresses a specific feature in the improved product or service rather than searching for all patents on a given product or service. The results of the patentability search may be reviewed by FLYNN IP LAW. Some clients like to do the initial review of the search results and then seek input from FLYNN IP LAW on only a subset of the search results to reduce costs.

While it may be discouraging to find that an invention actually converges on a good idea previously had by others, it is better to find this out early in the process so that resources can be redirected rather than wasted pursuing a dead end.

Drafting patent applications and working to obtain United States patents is the core of the services provided by FLYNN IP LAW.

Many people new to the patent process are surprised at the amount of work that transpires after the patent application is filed. The length of time to obtain a patent varies widely depending on which technology group within the Patent Office is assigned the patent application. The process of patent examination frequently takes close to three years, but sometimes takes much longer. The process may be accelerated by a number of programs. For more details on the two most commonly used programs see the page on Accelerating Patent Applications.

After a substantive review of the pending claims, the patent examiner will usually object in a document called an office action that the claims are too broad relative to the prior art. The response to this office action may be to explain that the examiner is misinterpreting the prior art or the scope of the pending claims. Sometimes, the examiner is correct, or it is simply expedient to clarify the scope of the claims by adding some text to the claims to clearly avoid the cited prior art.

In the end, the asset that one receives from the patent process is the ability to prohibit others from practicing what is in the patent claims. Thus, much care and attention is given to seeking claims that advance the commercial interests of the client. In other words, seeking claims that prevent a competitor from using the claimed ideas and thus put the competitor at a commercial disadvantage.

United States patent practice includes an option to file a less formal placeholder application called a provisional patent application. A subsequent non-provisional application filed within a year of the provisional application may claim the benefit of the filing date of the earlier filed provisional application.

There is a lot of confusion about the level of detail required for an effective provisional application. The truth is that a provisional application needs to contain far more than an abstract written on the back of an envelope. A provisional application should have a disclosure with ALL of the substantive detail of a non-provisional application. The only real cost savings should be in the level of formality and the omission of redundant sections such as the brief description of the drawings. The formal set of claims may be omitted as they should be redundant with the substance of the disclosure.

Ideally a rough set of claims is prepared even if not included in the provisional application. Preparing claims helps provide a check list for the sufficiency of the disclosure as the contents of the provisional application needs to support the desired claims.

A provisional application that lacks all the detail to make and use an invention may give a false sense of security to a company that filed the deficient provisional application. Provisional applications that only describe one embodiment (and not other viable if suboptimal options) may not adequately protect the innovation. An incomplete provisional application may later hurt the company when reliance on the deficient provisional will not support meaningful patent claims in the non-provisional application.

There can be some cost savings when existing documents are harvested for content and photographs are used instead of formal drawings. Cost “savings” is often a misnomer as it is really a cost deferment if you eventually file a non-provisional application. A non-provisional patent application will need all the pieces, polish, and formality that are sometimes left out of a provisional patent application.

Provisional applications can be a true cost savings, but only when the invention in the provisional application is not carried through to a non-provisional application. Thus, a company seeking more time to decide whether to spend the money to prepare the more formal non-provisional application may file a provisional application before activities that would impact the ability to obtain patent claims such as a public sale, public use, or a public disclosure.

Well-funded clients may choose to create a non-provisional quality patent application, complete with a full set of claims, and file this application initially as a provisional application in order to shift out the expiration date of patent rights.

FLYNN IP LAW helps clients obtain patents around the world using the services of patent law firms located in the relevant countries. This is an expensive undertaking. Filing a Patent Cooperation Treaty (PCT) application allows this expense to be deferred for at least 30 months from the filing date of the first application (provisional application or non-provisional application). A 30-month delay allows a company to receive feedback on the commercial viability of the product or process and obtain information on how the application will fare in the patent process before committing substantial resources to enter patent systems outside of the United States. Part of the expense of filing patent applications outside of the United States is the need to translate the patent application into the local languages.

While a PCT application does not lead to an “international patent”, the claims in the PCT application are examined by a patent examiner and a written report is produced. If the PCT written report is favorable, an application filed in the United States based upon the PCT application can be handled on an expedited basis under a program called the Patent Prosecution Highway. Within the Patent Prosecution Highway program, an application is likely to obtain a first substantive examination with seven months which can be a considerable improvement over waiting in queue for normal examination.

For a client that is only interested in a short list of foreign countries such as Canada and Australia, it can be cost effective to skip the PCT process and simply file directly within a few foreign systems within one year of filing the first application in the United States. This process is called a Paris Treaty filing.

A patent is effective in the country that granted it. Thus, a United States patent is effective against others that make, use, sell, or offer to sell a product or service in the United States. A United States patent can be used to prevent the import of infringing items into the United States. To prevent others from making, using, selling, or offering a product in another country, one needs a patent in that country.

While FLYNN IP LAW is not licensed to seek patent protection outside of the United States, FLYNN IP LAW routinely works with law firms located outside of the United States in order to obtain patent protection for clients. Likewise, FLYNN IP LAW helps law firms located in other countries to secure United States patent rights for companies located in other parts of the world. The rules of patent systems around the world are different so it is important to use the knowledge of the local professionals while retaining some level of consistency among patent claim sets issued around the world.

See also – Patent Cooperation Treaty Applications for information on how FLYNN IP LAW can help with PCT applications to delay the deadline to enter into patent systems beyond the US.

The most common form of patent protection is a utility patent that covers the changes that make a product or service more useful or better using science or engineering. (Note--a utility patent is often just called a patent as this is the most common form of patent).

A separate type of patent protection is a design patent. A utility patent describes and claims the “what” and the “how”. In contrast, a design patent has a focus on the ornamental appearance of an object. One way to think of “ornamental” is “not required”. Some aspects of a design are required (a tire needs a hole in the middle for the wheel) but many aspects can be done in a variety of ways. The combination of these not-required features is the way that a consumer can recognize that a product comes from a specific source even without reading the label. Thus, a design patent is somewhat like a trademark in that it helps consumers buy a product from a specific source without getting confused by knockoff products. The test for infringement a design patent can be stated as whether the claimed design is substantially the same as the accused product in light of the prior art.

Design patents are often particularly useful in consumer products that are purchased without a great deal of investigation (impulse buys). Design patents can be useful to help protect disposable products that are used with a patented device but lack strong utility patent protection for the disposable products. Sometimes a client will protect portions of a device likely to need replacement with design patents. An example would be obtaining a design patent on the front grille of an automobile so that the manufacturer can prohibit companies from making look-alike replacement grilles for the repair industry.

Design patents may be used to protect distinctive icons used in graphic user interfaces (GUIs) on computer screens or smartphones. The design patents may include dynamic sequences or static images. Design patent disputes played a central role in the recent patent battles between Samsung and Apple with respect to smartphones.

When a utility patent application is filed in the United States, it is categorized and put into a specific queue for examination. This is logical so that the person reviewing dishwasher patent applications is not reviewing patent applications for spinal surgery techniques. Once a patent application has been categorized and put into the proper queue, the application needs to wait until it gets to the front of the queue. Once at the front of the queue, the claims in the application are substantively examined and get compared with the prior art by the patent examiner with the appropriate expertise. The outcome of this review is either a notice of allowance or a first office action stating reasons why at least one claim was not allowed.

As the queue lengths vary, the patent application for an improvement to a dishwasher may reach the front of the queue in ten months but the spinal surgery technique may have to wait five years. There are a number of ways that a long queue wait can be avoided. One way to obtain accelerated examination is to use a positive search report from the Patent Cooperation Treaty process to enter into the Patent Prosecution Highway program. Another way to get expedited handling is to pay an additional fee for the Track One program. Applications with a Track One request may receive an initial examination within three or four months of filing the application.

The option to accelerate an application needs to be discussed while developing the non-provisional patent application in order to minimize costs and optimize the acceleration.

One reason to work with FLYNN IP LAW is to seek patent protection for the improvements that make a proposed new product or service better than the current state of the art.

A second reason to work with FLYNN IP LAW is to reduce the risk that the proposed product or service is going to infringe issued patent claims belonging to a third-party. The work in this second area can be called clearance work or freedom-to-operate (FTO) work.

FTO work starts with a set of patent searches. FLYNN IP LAW and the client work to identify the components or combinations that merit the effort of a freedom-to-operate search. When making a product with a number of subcomponents, such as a laptop computer, one does not normally spend money to search for relevant patents on off-the-shelf components such as a standard power supply or a machine screw. While it is possible that these off-the-shelf items infringe a patent claim, generally the manufacturer will have checked for freedom to operate or will make corrections as needed when informed that there is a problem. Worse comes to worse, it is frequently possible to substitute another off-the-shelf item including one from the patent owner of the relevant patent.

On the other hand, if your company is producing a bone screw used in surgical procedures, doing a detailed FTO search on bone screw patents is appropriate. Likewise, if your company is seeking to produce power supplies, it would be appropriate to confirm that there are not patent claims that would impinge on your freedom to make such power supplies.

FTO activities can be expensive, but they pale in comparison with the expense of dealing with a patent infringement lawsuit or the need to redesign a product after the product has been released and a cease and desist demand is received.

FTO activities can include review of pending third-party applications to reduce the risk that patent applications already in the pipeline will emerge with patent claims that are a problem.

There are a number of blind spots in the process so a freedom-to-operate search does not reduce the risk of problems all the way to zero, but FTO work is a commercially reasonable step to reduce the risk of patent infringement problems.

As part of a program to reduce risk of infringing third-party patent claims, a company can conduct freedom-to-operate (FTO) searches. Sometimes an FTO search can reveal that a patent application is pending that seeks extremely broad claims that would impinge on the freedom to operate by the company with respect to a particular product or service.

A company can set up automated searches to look each week for newly published applications so that applications with broad claims are identified early.

Once a problematic patent application is identified, the client or FLYNN IP LAW can monitor the progress of the patent application through a system known as PAIR to see whether the overly broad claims are rejected or at least amended to have an appropriate and much narrower scope. As the claims are rejected or narrowed, the client can make adjustments to plans as appropriate. In some instances where the patent claims were initially ridiculously broad, the narrowed claims may not be a problem as they are now limited to products or services that have a very specific nuance or quirky feature.

An option exists to assist the United States Patent Office examiner to reject overly broad claims. Third parties can submit relevant prior art if done so within six months of publication of the patent application with the broad claims or before the process of examining the patent application reaches certain milestones.

Many litigators would prefer holding killer prior art up their sleeves until used at trial, as there is a risk that a patent examiner may not fully appreciate the relevance of submitted prior art. If the patent examiner erroneously signs off that a patent claim is allowable over a piece of prior art, that patent claim has a presumption of validity over that piece of prior art.

Holding prior art references for use at trial is fine for a company with a huge budget for patent litigation, but that is an unusual company. Most companies prefer to narrow potentially problematic patent claims through this relatively inexpensive submission process during the examination of the application.

The decision of whether to seek a patent should be weighed against the option of maintaining a trade secret. Some innovations like the process for making nooks and crannies in Thomas’ English Muffins are valuable for many years while they are maintained as a trade secret. Obtaining a patent would provide strong protection for a period of time, but then the idea is made available for others to use free of charge.

A trade secret is a great form of intellectual property protection as it can last forever. However, a trade secret, unlike a patent, does not prohibit a second company from inventing the same innovation and using the innovation. The second company can even seek patent protection for the innovation. While there is some protection for the first company to continue to use the trade secret, the protection under 35 USC §273 is full of limitations and gaps.

Some innovations are not candidates for trade secret protection as the innovation is discernable by reverse engineering the product after the product is made available to the public.

In some instances a company may have an idea that could be protected by either a trade secret or a patent. The company may prefer a trade secret but worries about the leakage of the trade secret as there are many employees, vendors, and clients that know aspects of the trade secret. While those with access have signed appropriate agreements, it may be difficult to prove which person was the source of the leak. There is also a risk that some competitor may eventually independently develop the same solution and be unreachable using trade secret laws.

One option is to file a United States patent application with a non-publication request. This patent application goes through the examination process without a publication of the pending application. At the tail end of the process, the company can decide to turn down the offered set of patent claims. The reasons to turn down the patent claims may be that the offered claims are too narrow to justify publication of the trade secret by the issued patent. The reason to turn down the offer of the patent claims may be a desire to stay with trade secret protection as there is not a current fear that a competitor is close to developing the protected innovation or received leaked information.

Filing a United States patent application with a non-publication request means that the company is not planning to obtain patent protection beyond the United States. So this option is not perfect, but may be a good choice for a company with the vast majority of revenue coming from the United States.

A quirk in the newest patent laws from the America Invents Act is the implicit ability to take a long-standing trade secret and now apply for patent protection in the United States. Some call this “evergreening “a trade secret.