Patents

First, the invention must be disclosed in full detail to the attorney. A brief written disclosure of the idea, including a drawing or sketch, and the problems that the invention solves is strongly preferred. The attorney may recommend that a preliminary patentability search be conducted to reveal prior patents or publications relating to similar devices. The search results provide a firm basis for deciding whether it would be worthwhile to incur the expense of filing a patent application.

If the invention falls within one of the general classes of general patentable subject matter, it is generally recommended that a limited novelty or patentability search be undertaken. Thereafter, a patentability opinion can be prepared based upon the references uncovered in the limited search. The patentability opinion may advise that patentability is not available or the opinion might advise to proceed with a patent application.

The preparation and filing of a patent application requires, in the normal routine course of events, one to two months after the search report and opinion, although this time may be reduced when the circumstances demand it. The application comprises claims, which are the metes and bounds of the invention, background information describing the state of the art up to the time of the invention, and a detailed description of the invention including drawings.

After the patent application has been filed, the Patent Examiner performs a search. He writes a letter to the attorney called an "Office Action"' citing the prior art references found in the Examiner's search. The first Office Action is not usually received in less than six months to a year after the application is filed.

Based upon the Examiner's references, the attorney will make a recommendation that the application be further prosecuted if the client has a continuing commercial interest in the invention, or he may recommend that the application be abandoned if there appears to be no real hope of obtaining claims of meaningful scope.

If it is decided to prosecute the application further, the attorney prepares a letter to the Examiner, which is usually referred to as a "Response". This letter may amend the claims to better distinguish them over the references cited by the Examiner. It may also amend the application to comply with the Examiner's editorial taste. It always includes a discussion of the differences between the references cited and the invention, and a legal argument as to why the particular application should be allowed to issue as a patent.

The attorney and the Examiner may also conduct oral conferences, until the application is either allowed or "finally rejected", which commonly occurs on the second Office Action. The total prosecution of the application requires, on the average, about eighteen months to three years. Most of that duration of time is spent waiting on Office Actions from the Patent and Trademark Office.

Once the application is allowed, the Patent and Trademark Office requires payment of an "Issue Fee" of about $1500, in the case of an individual or small company, to cover government costs in printing the patent grant.