Patent Search vs. Patentability Opinion

Before deciding to pursue patent protection, it is a best practice to gauge the patent landscape behind your inventive concept to determine whether that concept can fit within that landscape without being overly narrow.

Patent Search

The purpose of a patent search is to locate granted patents and patent applications (aka prior art) that may affect whether your inventive concept is patentable. A patentability opinion is a professional recommendation of how your patent application would fare during examination.

At Intellent Law, a patent search yields a search report that includes a formal record of the search terms used throughout the search, a summary of the USPTO and CPC classifications the inventive concept may fall under, and two lists of prior art references. The first list is a novelty list and consists of prior art that disclose all the elements of your inventive concept. The second list is an obviousness list and consists of prior art that share one or more elements with your inventive concept.

Patentability Analysis

A patentability analysis is best done after a prior art search. However, a search may be unnecessary if you, the inventor, have already performed one, or knows the patent landscape sufficiently to provide the practitioner with enough information to provide a patentability opinion. Patentability is determined based on the risk of receiving a novelty or obviousness rejection in light of the prior art. The analysis also includes a professional recommendation of what type of patent application should be filed at the invention’s current stage of development.

Some practitioners argue that a patent search can form biases that can affect the quality of the patent draft. This can happen if specific wording was used to describe components that are also found in your inventive concept. However, diving into a patent application without carefully weighing the risks is not only not advisable but also highly unprofessional.

EFS-Web No Longer Works on Chrome

Even with many months to prepare for the loss of NPAPI support on Chrome, some of us are scrambling when trying to access EFS-Web to file documents and access our docket. Before the launch of Chrome version 45, NPAPI support was still provided, but was disabled by default – only by going to chrome:plugins could you enable it. However, NPAPI is totally unsupported by Chrome now .

What does this mean for patent practitioners? NPAPI is a cross-platform plugin that support a variety of web apps, many of which that we take for granted as a part of our Internet experience. EFS-Web is a web-app (like Netflix) that relies on Java, most significantly to authenticate users. Since Java depends on NPAPI to function, EFS-Web no longer works on Chrome.

What’s the solution? Don’t use Chrome. Oracle, which distributes Java, also recommends this. There are plenty of alternatives to Chrome, such as Mozilla Firefox, Opera, Safari, or Internet Explorer. Since Firefox and Internet Explorer have consistency issues on my machine, Opera has been my browser of choice for EFS-Web.

Locating Reel and Frame Numbers in Private PAIR

This is the first in a series of tips, tricks, and reminders for patent practitioners.

After filing a power of attorney for a specific application, I received a notice stating that I also needed to file a statement under 3.73(c). For an assigned application, the statement must include the reel and frame number where the assignment was recorded. I found out from phoning the USPTO that I would have to pay $150 to obtain the reel and frame number of a particular application. This didn’t seem right.

Actually, in Private Pair there is an “Assignments” tab, which includes the reel and frame information of an assignment.

assignment_tab

This may be a small tip, but it could save you $150.

Choosing your Patent Practitioner: Agent or Attorney?

What are the first steps for patenting your latest invention?  To find out, you probably want to meet with a patent attorney.  But what’s your intellectual property protection budget?

Patent attorneys have the technical background and Patent Bar credentials of a patent agent, but have three years of law school and State Bar passage on top of it.  They’re authorized to do everything: draft your patent, correspond with the USPTO, sue that competitor of yours who totally reverse-engineered your patented invention, and give you legal advice if someone tries to purchase your idea.  But they typically charge by the hour – for everything.  Even the smallest law firms charge over $8000 to draft and file a full nonprovisional patent application, and this usually doesn’t include fees for illustrations, phone calls, and emails.  Patent attorneys are expensive; they rightly capitalize on their degrees and qualifications to charge attorney rates.

You wouldn’t take a Ferrari to pick your grandma up from the airport, would you?  She won’t even notice the ride, and you’ll be paying an arm and a leg for premium gas and rental insurance. At the early stages of your startup business, you don’t need litigation or acquisition legal services. You need to cement your intangible assets by patenting whatever’s patentable.

Patent agents are not legal powerhouses – we’re more like Hondas.  We practice only patent prosecution – meaning we can only help you obtain that patent, and can’t represent you in court if you sue an infringer.  We are focused practitioners who work to keep your patent protection costs low.

The future business value of the granted patent depends on the way your application is drafted, and, at the end of the day, patent applications are best drafted by lean, focused technical writers who understand your business and keep everyone involved in the learning process.  

If you are a startup seeking patent protection or if you are just on a strict budget, a patent agent may be your answer.  Request a free consultation to talk to a patent agent today.

Patents for Startups: 4 Things You Need to Know

Are you planning a startup where your most valuable asset is your intellectual property?  If so, you are probably looking to get that IP patented.  If not, then you might be behind!

1. What should I file?  Early-stage startups usually file a provisional application before diving deep into high cost nonprovisional applications.  Provisionals are lean applications with enough disclosure to cover as many embodiments of your invention as possible in order to secure an early filing date.  Provisionals are cheap and relatively easy to file.  Nobody sees them unless you later file a nonprovisional application on the same subject matter.  Within a year, provisional applications must be converted to nonprovisionals, or they expire.

2. When should I file?  After you publicize an idea, a 1-year timer starts ticking.  At the end of that year, the idea enters the public domain and you can no longer file a patent on that idea.  The U.S. grace period is actually fairly generous – the rest of the world is not so forgiving.  Product startups hoping to launch a Kickstarter or Indiegogo campaign should file at least a provisional application first.

3. Do I need a patent?  Patents provide a limited monopoly in exchange for public disclosure of your invention.  This limited monopoly grants you the right to exclude others from manufacturing, using, exporting, selling or offering for sale your invention for a period of time (20 years after filing a utility patent; 14 for design patents).  

If you are selling or plan to sell a product that can be readily copied (by reverse engineering), it’s probably best to get a patent on it.  Keep in mind that the product doesn’t need to be tangible:  SaaS patents are widely prevalent in the industry today.

4. Should I write it myself or hire a professional?  There are many resources available that will guide you through the patent process.  One example is Pressman’s “Patent It Yourself”.  But once the first Office action comes around, you may be hard-pressed to fight it if you realize you left out a key element in your description.

If you think you have a patentable product or if you are just plain confused, feel free to shoot us an email at patents@intellentlaw.com or schedule a free consultation.