Patent Lawyer Frequently Asked Questions

Like with most things – results.

When trying to find a patent attorney, a good question to ask is how many patents that patent attorney has actually prepared and gotten granted. Just because a patent attorney has prepared a patent application doesn’t mean that the patent attorney has actually gotten that patent application issued into a granted patent.

A patent application is very complex, and obtaining an issued patent for a single invention can sometimes take many years. That is why being able to view what patents were actually obtained by a patent attorney is crucial in finding a Patent Attorney in San Francisco, Silicon Valley, and Los Angeles.

At Patent Ingenuity, the patents we have successfully gotten issued may be viewed by clicking below:

Patent Prosecution is the process of getting a patent for your invention.

By way of contrast, Patent Litigation is the process of enforcing your patent, after it has been granted by the United States Patent & Trademark Office (USPTO), against potential infringers of the issued patent (copiers of your idea).

The skill sets for Patent Prosecution and Patent Litigation are quite different. At Patent Ingenuity, our focus is solely on Patent Prosecution, not Patent Litigation. That being said, an experienced patent practitioner at our firm will always draft a patent application with potential litigation in mind to make the patent as strong as possible in case the patent needs to be litigated.

Patent costs can be broken down into 3 phases:

Phase 1: Preparation and Filing of a Patent Application. This phase involves a Patent Attorney preparing a document called a Patent Application, which includes a technical description of your invention and corresponding drawings. In essence, a Patent Application is a hybrid legal/engineering document that is submitted to the USPTO to start the process of Patent Prosecution.

The overall cost for Phase 1 will vary based on a variety of factors, including the complexity level of your invention and the technological field of your invention. For example, some inventions in certain fields may necessitate a patent application that is only 10 pages long, whereas as others may necessitate one that is 30 pages long.

Please contact the San Francisco, Silicon Valley, or Los Angeles office of Patent Ingenuity to get a free initial estimate for Phase 1.

Phase 2: Patent Prosecution of the filed Patent Application. After filing the patent application, your invention will be deemed “patent pending.” The USPTO may take several months, or even years, before it examines your patent application. Eventually, a Patent Examiner at the USPTO will review your patent application based on guidelines in what is called the Manual of Patent Examining Procedure (MPEP).

The Patent Examiner will search for prior art (other patent applications, patents, articles, websites, etc.) that may have pre-dated the filing of your patent application. If the Patent Examiner finds such prior art, the Patent Examiner will typically issue what is called an Office Action detailing one or more prior art rejections.

Given that the Patent Examiner is supposed to interpret the patent application as broadly as reasonably possible, according to the MPEP, most patent applications are initially rejected via an Office Action. A Patent Attorney may then prepare a Response to that Office Action in an attempt to persuade the Patent Examiner as to why a patent application should be granted into an issued patent; hence, a back-and-forth process of Office Actions and Responses may follow the filing of a patent application until possible patent issuance.

Again, the cost may vary quite a bit -- there is a level of subjectivity in different Patent Examiners’ approaches to examining patent applications. For example, only 1 Office Action may be issued by a particular Examiner, but multiple Office Actions would have been issued by a different Examiner for the same patent application.

Please contact the San Francisco, Silicon Valley, or Los Angeles office of Patent Ingenuity to get more detail on the costs for Phase 2.

Phase 3: Post-Issuance. The USPTO has certain maintenance fees that have to be paid at certain time intervals after the issuance of a U.S. patent to keep the patent in force. Additionally, you may have certain monetization strategies, such as patent licensing, that you may want to explore with an experienced Patent Attorney at the firm.

Please contact the San Francisco, Silicon Valley, or Los Angeles office of Patent Ingenuity to get more detail on the costs for Phase 3.

No. The USPTO Examiner assigned to your patent application will perform a search for prior art on your patent application.

That being said, a patent applicant is permitted to perform his or her own prior art searching before, or even after, filing a patent application. What is required is that such search results are submitted to the USPTO if a prior art search is performed.

In theory, the substance should not be that much different at all.

A provisional patent application allows an applicant to obtain a filing date for an invention without the provisional patent application being examined. A Non-provisional patent application would then need to be filed within 1 year from the filing date of the Provisional patent application to avoid losing the filing date of the Provisional.

The problem is that Provisionals typically provide Applicants with a false sense of security. What is quite common is for Applicants to think they can file a 1 or 2 page Provisional to keep down costs, and then follow up 1 year later with a more comprehensive Non-provisional that fills in the gaps.

Yet, the MPEP requirement for a Provisional is clear: it must “adequately support” the Non-Provisional. How can things added later to a Non-Provisional be adequately supported by a Provisional that simply did not describe those additional ideas? Most often that is hard to argue, and it is why Patent Ingenuity typically files Non-Provisional patent applications at the outset, without a Provisional.

A utility patent is directed toward protecting the functionality of an invention, whereas a design patent is directed toward protecting the aesthetic features of the invention. As an example, a utility patent for a watch may be more directed to the inner mechanics of the watch, whereas a design patent may be more directed to the shape of the watch’s bezel, band, etc.

A Registered Patent Attorney is the phrase that is typically used to designate an attorney that is admitted to practice law in a State via a State Bar and that is registered to practice before the USPTO. In contrast, a Registered Patent Agent is only admitted to practice before the USPTO. In other words, a Registered Patent Attorney is permitted to not only provide advice regarding USPTO procedures on how to obtain a patent, but also legal advice regarding licensing and enforcement of an issued patent.

Please contact the San Francisco, Silicon Valley, or Los Angeles office of Patent Ingenuity to speak with an experienced Registered Patent Attorney that is admitted to the State Bar of California and registered before the USPTO.