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Patent Prosecution

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We work to understand both your technology and your business objectives, and help you craft and follow a plan to protect your intellectual property.

If you have a great idea, we can help you protect it. The patent system provides strong protection to inventors, but only if you create a detailed patent application describing your invention and submit it for evaluation to the U.S. Patent and Trademark Office. An examiner will review your application, conduct a search of the prior art, and then determine whether you should receive a patent on your invention. You will need to convince the patent examiner that your invention is new (no one has ever used or publicly disclosed your invention), that it is non-obvious (your invention is not an obvious variation of pre-existing ideas), and that it is useful (it serves a useful and legal, purpose). Our Bitlaw web site has a good description on the requirements for patent protection.

In addition to these normal requirements for patentability, it is also necessary that your invention be the right subject matter to be eligible for patent protection. This requirement has changed significantly over the last several years, and has recently become a significant issue that must be considered when obtaining patent protection on computer software, data analysis, medical diagnostics, and even on medical devices. Our lawyers have a great deal of experience in helping inventors explain to the patent office that their inventions are eligible for patent protection. You can learn much more about subject matter eligibility on Bitlaw.

Patent applications are complicated from both a scientific and a legal point of view. Only patent agents and patent attorneys that have a technical education and have passed the patent bar exam are allowed to assist others in drafting patent applications on their inventions. The patent application must include a detailed description of the invention, should include drawings showing the invention, and must conclude with patent claims. In most cases, the attorney’s fees for a patent application will run between $8,000 and $14,000 (see our guidance on costs for more information). Complicated inventions can cost more than this.

In some cases it is appropriate to file a provisional patent application. When used correctly, a provisional patent application can delay the expiration of an issued patent, and can be used to control the upfront cost of a patent application. However, when used incorrectly or filed without sufficient details, provisional applications can negatively impact the patent process. We can help you determine whether it makes sense to file a provisional patent application on your invention.

We have significant experience in drafting patent applications for medical device technologies, computer hardware, software, mobile devices, and a wide variety of mechanical and manufacturing technologies. Whatever the nature of your invention, we can either help you get patent protection, or can steer you in the right direction.

We represent individual inventors, small start-up companies, growing tech companies, and Fortune 100 companies. Our attorneys have assisted companies at every stage of the technology development and protection process. From fleshing out initial concepts worth protecting, through the development of a strategic patent portfolio in order to protect growing sales, to eventually handling IP negotiations during a buyout transaction by a large international entity, we can help develop and protect your great ideas too.