A large number of patent applications initially are rejected due to their broad claims. Having an attorney provide a response with narrow claims can hopefully help to convince an examiner that your claims are valid and that the application should proceed to the next step in the examination process. The most common reasons for patent applications being rejected include:
  • The invention is not novel
  • The invention is obvious
  • The patent application was not properly written
  • Not filing having filed the non-provisional application before the 12-month expiration of the provisional
  • Not paying the issue fee
  • The invention was published or sold publicly more than 1 year prior to filing the patent application.

What is Patentable?

In order to qualify for patent protection, your idea or invention must belong to one of the following categories: useful process, machine, manufacture, composition of matter, or any new and useful improvement. This could include anything from a new medical or cosmetic procedure, software, or a new kitchen utensil. The invention or idea must be useful and not obvious. In addition, the invention must be able to disclose information in great detail so that any person knowledgeable about the technology can make use of your invention. If your idea or invention meets the above-referenced requirements then you are eligible to pursue patent protection. Once you have determined that your idea or invention is patentable, meaning it satisfies the requirements set forth in  35 U.S. Code § 101, then you must conduct a novelty search. A novelty search will confirm whether or not your invention or idea exists. If it already exists then you would not be able to get a patent. If the invention does pass the novelty test than you have the right to seek patent protection.

What Type Of Protection Do I Need?

Patenting an invention can be challenging but an attorney familiar with the process can greatly improve the chances of your application gaining approval. Before starting the application you will need to determine what type of intellectual property protection is needed. After you have met with an attorney and explained your Intellectual property (i.e. an invention, a new variety of plant, a design or a different way in doing something), your attorney will explain whether you should seek protection through patent, trademark, copyright or trade secret. The three types of patents available in the U.S. are:
  • Utility Patents – Utility patents are meant to protect features. If an invention helps make something better, easier, or faster than a utility patent would be appropriate.
  • Design Patent –  Design patents protect ornamental or aesthetic features. If the invention is valuable because of its unique one-of-a-kind look that is attractive, then a design patent is appropriate.
  • Plant Patents – Plant patents protect a new variety of plant. Plant patents are not common therefore, you should seek the advice of an attorney that is familiar with these types of patents.

Patent Application Process

Once you have determined that your invention is patentable, you have conducted a novelty search, and decided on the type of patent protection that you will pursue, you will need to obtain a basic understanding of the application process. Anyone seeking patent protection should understand the application process, so it can increase their odds of obtaining patent approval. You must decide whether to file a provisional or non-provisional application. A provisional application does not result in patent protection as the application will never never be reviewed by an examiner. Inventors sometimes choose to initially file a provisional application because at the time of filing they are immediately granted patent pending status. Provisional applications allow inventors to test the profitability of their invention for one year before committing to paying additional fees and pursuing patent protection. In the event that you initially file a provisional application and later choose to seek patent protection, you must do so before the 12-month expiration of the provisional application. Should you seek patent protection after the 12-month provisional expiration date your request will be denied. The costs to upgrade to a comprehensive non-provisional patent application can be costly so it is very important that you decide early on whether you will file a provisional or non-provisional application. A non-provisional patent application must contain a well written, comprehensive description of the invention and its usefulness. A complete non-provisional utility application must contain the following:
  • Utility Patent application transmittal form or transmittal letter
  • Fee transmittal form and required fees
  • Application Data Sheet
  • A specification that includes at least one claim
  • Drawings, if applicable
  • A declaration or an Oath by the inventor
  • Amino acid sequence listing, if applicable
The provisional application has technical requirements that must be fulfilled to avoid rejection. An example of such requirements would be the specifications for how each element has to be presented in the application. An experienced patent attorney will ensure that all application requirements are met on behalf of the applicant.

Why Do I Need Help?

Whether you choose to file a provisional or a non-provisional patent application, patent applications are complex legal documents and your failure to correctly complete the application could result in the denial of your patent. If you are unsure on whether to file a non-provisional versus a provisional application contact The Patent Professor. The Patent Professor will provide you with legal counsel and answer all of your questions with unique insider knowledge on how the application process works in a manner that is easy for you to understand. The majority of patent applications trigger the office of actions from patent examiners. The office of action is part of the examination process. The response to the office of action should clearly specify why the examiner erred and should reverse their decision to reject the patent application. The Patent Professor has responded to numerous office of actions with comprehensive compelling arguments that have resulted in patent approval. Call the Patent Professor today!

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