FAQs

A written patentability opinion is typically requested when a client wants to learn the likelihood of obtaining a patent on their invention based on the prior art references identified in the prior art search.   It is usually prepared before a decision is made to proceed with a patent application. 

In order to maintain the right to a patent, the applicant must meet a variety of legal requirements.  The patent application must completely describe the invention and teach the public how to make and use it. The patent applicant must also meet the U.S. Patent Office’s formal requirements for prosecuting patent applications. 

We do this by searching for opportunities to describe broader aspects of the invention.  Describing the broader inventive contribution provides two significant advantages: (1) protecting against competing products with minor variations; and (2) having the option to change the commercial product while maintaining patent protection.

A provisional patent application consists of a written description of your invention and drawings that together explain how to make and use your invention. The drawings may be informal. The provisional application is not examined by the Patent Office and functions as a placeholder for a subsequently filed utility patent application (also referred to as a regular application or a non-provisional patent application).

An inventor has one year from the filing date of the provisional application in which to file a utility patent application for the same invention, claiming the benefit of the filing date of the provisional application.

Patent prosecution refers to the process of engaging in a back-and-forth written and oral dialogue with a patent examiner to determine the scope of patent protection and invention is entitled to, as described in a patent application.  After a patent application is filed, a patent examiner at the United States Patent and Trademark Office (USPTO) will review the contents of the application.

The patent examiner is tasked with determining whether the idea or invention in question meets the novel, nonobvious and useful requirements. Sometimes, the patent examiner may deny the application. These matters are referred to as Office Actions. Generally speaking, an office action informs the applicant of possible problems in the application.

An examiner interview is a conversation between the applicant’s patent practitioner and the USPTO examiner reviewing your application. While the interview might take place in person, the discussion typically occurs over the telephone or via a video conference.

Talking to a USPTO patent examiner enables bilateral communication in the following ways not possible with written responses:

• Listen to how the examiner reacts to certain observations and arguments;
• Create or adjust claim amendments in real-time by adapting to the views expressed by the examiner; and
• Clarify concepts using exhibits and visuals, particularly in response to any questions or areas of confusion raised by the examiner.

A Patent Appeal is a request for a hearing before a panel of typically three members of the Board (unless an expanded panel is deemed necessary by the Board) to determine if the rejection made by the patent examiner is proper.