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Patent Process

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PATENT PROCESS

Free Initial Consultation:

At OBD legal we offer a free 30-minute initial consultation. We will meet with you during your free consultation to discuss your needs and understand how we can help you. We will also discuss which of the following services best serves your present needs:

  • Patent Search
  • Patent Application
  • Foreign Filing Options
  • Expedited Examination
  • Prosecution
  • Maintenance of Patent

Patent Search:

Before investing capital into the preparation and filing of a patent application with the United States Patent and Trademark Office (USPTO), an applicant has the option of performing a patent search. A patent search is a search of existing patents and published applications and provides insight into whether the invention as a whole or in part is patentable. Although inventors can perform a patent search independently, we generally suggest that inventors consider having their patent search conducted by a professional searcher. 

Professional patent searchers have the know-how and the tools to perform effective searches. They have a deep understanding of the patent classification system and can uncover prior art easily overlooked by inventors that do word searches on search engines. 

Although our professional patent searchers do their best to uncover the most relevant prior art for our clients, no search can provide a guarantee of patentability. No patentability guarantee exists because patent applications filed at the USPTO are maintained secrecy for at least 18 months after their earliest filing date. Therefore, there may be relevant prior art that is not available during the search. 

Nevertheless, a search is important because it serves to gather relevant information for most inventors. A search performed by a professional searcher may also help an undecided inventor know whether proceeding with a patent application is warranted based on the potential scope of protection available to the inventor in light of the discovered prior art. 

Patent Application:

At OBD Legal, we focus on the preparation of utility and design patent applications. A utility patent application is the most common type of patent application that is filed with the USPTO because it generally covers either a process, a machine, an article of manufacture, or a composition of matter. Moreover, a utility patent application can be filed as a provisional patent application or a non-provisional patent application. A provisional patent application serves as a one-year placeholder for the patent but is not reviewed by the USPTO. Provisional patent applications are faster to prepare and are less expensive than non-provisional patent applications short term. Long term, however, a provisional patent application may be more expensive because they need to be followed with a corresponding non-provisional patent application within twelve months of the filing date of the provisional patent application. If securing a quick filing date is important to you, filing a provisional patent application may be appropriate. Once you file a provisional patent application or a non-provisional patent application, your patent is pending, and related products may be labeled and referred to as “patent pending.”

Foreign Filing:

In addition to filing a patent application in the United States, we work with foreign associates worldwide that can help with the filing of additional patent applications in other countries. If you are uncertain if you are interested in filing directly in other countries, we can help you file a patent cooperation treaty (PCT) application that will prolong the time to file a patent application in a foreign country for about 30 months from the initial filing date of the patent application. 

Expedited Examination:

It takes approximately 14-16 months for a USPTO examiner to review a patent application. However, the USPTO offers a Track One program for a fee for prioritizing utility patent applications. OBD Legal will explain to you the advantages and disadvantages of filing under track one so that you make the best decision for your business. 

Prosecution:

After a non-provisional patent application is filed and received at the USPTO, it will be directed to a patent examiner based on the subject field of the claimed invention. An examiner with expertise in the relevant field will review the non-provisional patent application and perform a search to ensure the claimed invention is new and not an obvious improvement of existing technology, known as prior art. 

Suppose the examiner does not believe the claimed invention is patentable as claimed. In that case, the examiner will issue an Office Action detailing the reasons for rejecting some or all of the claims in the patent application. It is not uncommon for this to occur. However, you may respond to the examiner’s reasons for rejection in a formal response. The response may include arguments as to why the examiner’s reasons for rejecting the claims are incorrect. In addition or in lieu of an argument, you may amend the claims to overcome the examiner’s rejection. 

Maintenance:

Issued patents are enforceable for 20 years from the date of filing. However, the USPTO requires payment of maintenance fees that are due 3.5, 7.5, and 11.5 years after the patent is granted. The maintenance fees gradually increase in cost and, if not paid on time, will result in the abandonment of the patent. The UPSTO does this to ensure patents that are not in use remain enforced.

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