How Do Inventors Go To Market? (Part 4) From Patentability Opinion To Patent Application
Second, you know what your patent claims will be and therefore have advanced your knowledge of the materials and manufacturing processes that must be involved in creating your product. That knowledge enables you to save time and money on development research.
And your attorney's discussion of how broad or narrow your claims are can (and arguably should) determine your marketing strategy. The narrower your claims are the more you will need to make a deep, wide splash with your product before the knockoffs get on the market, because it may be easier for those blame idea thieves to get around your patent, but at least you will have the timing on your side.
In fact a good patentability search and opinion will essentially write your non-provisional patent application. Your attorney will just have to rewrite his findings in the technical language and form required by the patent office and she will work with a patent artist to create your official patent drawings. While the non-provisional patent application will cost anywhere from $5000 to $25,000, depending on the field and complexity of the invention, a patent award should create much greater value to your product. Get familiar with what the non-provisional patent application entails: see A Guide to Filing a Non-Provisional (Utility) Patent Application.
Caveat: I am strongly in favor of having a patentability search and opinion done by an expert patent attorney; however, no patentability search is perfect. No matter how thorough your searcher may be, he might miss something that another searcher (hopefully not the Patent Office's) will catch. Just be aware of this when you make your decision to apply for a full patent.
Once you give your patent attorney the green light, as well as the other green stuff, for the non-provisional patent application, she will draft an application for you, you'll review and discuss it with her, she'll make changes, and with the drawings, numerable filing papers, and fees (you will have to pay those too - see Patent Fees) she'll submit the formal application to the USPTO. Except for your filing receipt, you are not likely to hear from the Patent Office for several months after you file unless you apply for the new Petition To Make Special or Petition for Accelerated Examination.
If either of these petitions are allowed, the Patent Office will give you a final determination on your patent within one year of your electronic submission. You will have to submit all discovered prior art with your application, a requirement not specified in a regular non-provisional patent application. (See the Guidelines for Applicants.)
Not knowing anyone who has experience with the accelerated patent examination process, I wonder if the Patent Office will be less adversarial than is standard. If you take the traditional route, for example, the first "office action" is often a denial. (I'm just giving you a heads up....)
In the usual rejection scenario, your patent attorney will have three months to prepare a written response to the office action. Sometimes, he will consult with the patent examiner to ascertain if certain specific changes would overcome the examiners objections. (This is a pretty helpful move.)
Then, with your participation and review, he will make whatever substantive or technical changes are necessary to fix the issues raised by the office action, or will offer a strong defense for your original case. From now until your final action by the Patent Office, your attorney will "prosecute" or argue your patent. Each round will cost you, the amount depending on what's entailed and your attorney charges. Get those approximate charges up front. (see Find The Right Patent Attorney For You! )
Usually within one or two office actions, your patent attorney will have a good idea of where the Patent Office stands. When the patent examiner is satisfied with your amendments, you will receive a Notice of Publication, letting you know when the text of your patent will be made available in the USPTO Official Gazette "for opposition." If a member of the public has information concerning why the patent should not be granted, he brings that information to the attention of the Patent Office for investigation.
If you receive a Notice of Allowance, celebrate!!! It means that you have passed public scrutiny and will receive a patent on one or more of your claims (if you pay your fees). In non-accelerated time, it takes about 18 to 24 months from your application to receive your award. Your patent will eventually be published in the USPTO Official Register and you will receive an officially stamped copy of your "baby" from the Patent Office. It's a pretty impressive document.
Ah, but you know the road is not always greener with patent protection. Come back next week when we'll talk about ways to exploit your ideas without patent protection.
P.S. Let us know your experience (so far) if you are participating in the USPTO new Accelerated Examination program!
Myra Per-Lee Featured BloggerInventorSpot.com To read other columns on the Invention Process, please visit My Blog Page . The series starts with the bottom article!