PATE PIERCE & BAIRD, PC - Outline Of Patent Process


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Outline Of Patent Process

Creating attorney-client relationship
1. Make initial contact with potential client.
2. Check to ensure that representation of potential client does not generate any conflict of interest.
3. Formalize attorney-client relationship with engagement letter defining scope of representation.
Searching Prior Art
1. Receive initial written invention disclosure from client.
2. Search the prior art in an effort to locate the references most relevant to the invention.
Filing Patent Application
1. Meet with inventors to discuss details of invention.
2. Create drawings illustrating the potentially novel features of the invention.
3. Create claims defining the desired scope of protection for the invention.
4. Write detailed description of the drawings and other sections of the patent application.
5. Assemble the patent application and prepare execution documents.
6. Forward the patent application for review by the inventors and execution.
7. File the patent application and execution documents with the U.S. Patent and Trademark Office (PTO).
8. Inform client of serial number assigned the application by the PTO.
9. Forward a copy of filing receipt to client.
Satisfying Duty to Disclose
1. Review files to locate any known, relevant prior art references.
2. Inform client of the known prior art references and request any additional references known.
3. Prepare Information Disclosure Statement.
4. File Information Disclosure Statement with the PTO.
5. Prepare and file Supplemental Information Disclosure Statements if new relevant prior art appears.
Publication of Patent Application.
1. Receive notification of publication date of patent application and notify client.
Negotiating Scope of Patent Protection
1. Receive Office Action from the PTO and notify client.
2. Prepare a response to Office Action (e.g. amending claims, arguing allowability of claims, etc.).
3. File response with the PTO.
4. Receive additional Office Action, notify client, and prepare and file responses as necessary.
5. Interview the case with the examiner at the PTO as necessary.
6. Prepare and file a Request for Continued Examination if necessary.
7. Prepare and file an appeal with the Board of Patent Appeals and Interferences if necessary.
Issuance of Patent Application
1. Receive Notice of Allowance and notify client.
2. Prepare Supplemental Declaration and other documents and send to client for execution.
3. File Supplement Declaration, Issue Fee payment, etc. with the PTO.
4. Receive Notice of Issue Date.
5. Receive Red Ribbon copy of patent and forward same to client.
6. Proofread patent and submit corrections of PTO errors as necessary.
Pursuing Other Inventions Disclosed in Patent Application
This stage is optional, but highly recommended. A continuing application pursuing other inventions disclosed in the original patent application must be filed before the original patent application issues.
1. Draft new claims articulating a different, desired scope of protection.
2. Assemble patent application and prepare execution documents.
3. Forward patent application for review by the inventors and execution.
4. File patent application and execution documents with the PTO.
5. Inform client of serial number assigned the application by the PTO.
6. Forward a copy of filing receipt to client.
7. Prosecute continuing application (i.e., Stages IV, V, VI, VII, and VIII, as outlined).
Maintenance Of Patent
1. Pay three and one half year maintenance fee.
2. Pay seven and one half year maintenance fee.
3. Pay eleven and one half year maintenance fee.
4. Patent expires twenty years from priority date, usually the filing date of the application unless the application claims priority to another application.