If this is your first time writing a patent application, you may want a professional who writes patent application to proof-read it. Minor typographical and grammatical errors, can normally be corrected later. However, if the typographical or grammatical errors prevents the reader from clearly understanding the invention described in the application has not been clearly identified, it may not be corrected. This means that the invention described in the application couuld fall into the public domain and lost forever.
There are three general types of documents that must be carefully drafted and submitted to the USPTO – Patent Applications and Amendments and Post Grant Activities for Issued Patents. Documents.
A. Patent Applications:
The USPTO requires that the written utility patent application (also called a non-provisional patent application or ‘NPA’), a provision patent application (‘PPA’) and a design patent application (‘DPA’) contain various sections. For example, all applications must include a Title and a clear description of invention. The U.S.P.T.O. also strongly recommends that utility patent applications, provisional patent applications and design patent applications include various sections, such as a Background section, Summary, Brief Description of the Drawings, Description of the Preferred Embodiments, Claims and an Abstract. USPTO
The text of application of course, must be clearly written with correct punctuation, grammar, and spelling. In utility patent applications and provisional patent applications, drawing reference numbers must be assigned to the components or structures shown in the Figs. In the Description of the Preferred Embodiment section, these reference numbers must immediately follow the component or structure when mentioned.
If you elect to prepare your own patent application, we recommend you have us review, proof-read and critique the application before submitted. There are several ‘internal’ errors that can be made in an application that can cause rejection of the application, limit the scope or broadness of the claims recited in the patent and its commerical valve, or invalid the patent after issuance. There are also several ‘external’ errors (errors that are external to the application) that can also impact the validity of the patent application. Ideally, the application before it is filed so that both types of errors may be corrected before the application before it is filed. These errors may be corrected during prosecution.
If you need help or review service, please contact us at 425-637-3035 or email@example.com
After the patent application is filed, the application is assigned to an Examiner. The Examiner reviews the Application and generates a reply document, called an Office Action. In some instances, the Examiner states in the Office Action that specific changes that must be made to the Application before it will be granted. In some instances, the Examiner states that the written text or drawings contain errors that must be corrected. In some instances, the Examiner rejects all or some of the claims. In most instances, the Office Action has multiple issues that must be addressed.
A reply, called an Amendment, must be submitted within the 1 to 3 months of the delivery date of the Office Action. In most instances, 3 to 5 month extensions can be purchased. The Amendment must address all of the issues raised by the Examiner or the entire Amendment is considered unresponsive.
The U.S. Patent system require that the Amendment be written and address all the outstanding issues raised by the Examiner. Changes to the Specification, Drawings, Claims and Abstract can be made only in a specific manner. No new matter can be added however. If the Claims are amended, the Amendment must state how the Claims the changes overcome the Examiner’s rejection.
Understanding an Office Action, identifying all of the outstanding issues raised in the Office Action, and preparing an Amendment that addresses all of the outstanding issues that leads to a favorable outcome from the Examiner, can be difficult. Usually the claims in the application are narrowed to overcome the Examiner’s rejection. How the claims are amended can impact the broadness of the claims and the commerical value of the patent. Sometimes innocent statements made in the Amendment may be used later to limit the meaning of the claims or to support an assertion that fraud has been committed during prosecution and that the issued patent should be invalidated. Therefore, we recommend you first consult with a patent professional top discuss the Office Action and outline a response.
If you need help understanding an Office Action or preparing an Amendment, please contact us at 425-637-3035 or firstname.lastname@example.org.
C. Post Grant Activities for Issued Patents:
Three important Senarios:
Senario 1: After a patent has been issued, the patent owner may not remember or understand what the patent does or does not protect. For example, if a company is selling a device protect be an original paten and wants to begin selling a new version of the device that has improvements, is the new version of the device protected by the original patent? If the new version of the device is not protected by the original patent, then patent rights may be irrevocably lost if the new device is sold, publically disclosed or offered for sale if a second patent application has not been filed.
Senario 2:After a patent has been issued, a Chinese company begins to import a key component and advertised in the U.S. (often via their website) that the component may be used to make a device that is covered by your patent. Does the patent preclude this activity? It depends on the claims recited in the patent.
Scenario 3: Your company is considering licensing or buying a patent but don’t know what the patent does or does not protect. Also, are there potentential problems with the patent or the prosecution history that could reduce the value of the patent or invalidate the patent? These are important issues that need to be investigated prior to licensing or buying the patent.
We offer post grant review of issued patents. If you need assistance, contact us at (425) 6737-3035 or email@example.com