Patent Preparation & Prosecution

Patents: The First Step in Protecting Your Intellectual Property

In today’s modern company, engineers, scientists, and technology experts help drive the organization’s growth. Turning their genius and ingenuity into saleable products creates new opportunities.

Properly and effectively protecting their genius requires patent attorneys who cannot only confidently speak the technical language of the innovators, but also communicate these ideas to senior executives who are making the business decisions. Further, an effective patent attorney understands how to pull everything together and present it to the patent office.

Our patent attorneys in Minneapolis, Minnesota, and Atlanta, Georgia have years of real-world experience helping clients protect their intellectual property. In fact, our patent attorneys were engineers, designers, product managers, and even corporate executives before becoming lawyers. As a result, our legal, technical, and business experience helps companies in every industry to build, grow and protect their patent portfolio.

Our lawyers have backgrounds in industries including:

• Animal Science
• Armaments and Munitions
• Chemical and Biotechnology
• Electronics
• Farm Implements
• Internet and E-Commerce
• Materials and Metallurgy
• Mechanical Engineering
• Medical Devices and Drug Delivery Systems
• Petroleum Engineering
• Pharmaceuticals
• Polymer Science
• Semiconductors
• Solar Cells
• Sporting Equipment
• Software and Computer Technology
• Telecommunications and Information Technology

Patent Types

The three most common types of patents granted by the U.S. Patent and Trademark Office (USPTO) to individuals and organizations are:

1. Utility Patent: A utility patent, which represents about 90% of all issued patents, generally covers the useful or functional aspects of an invention. This might include machines, processes, methods, articles of manufacture, or compositions.
2. Design Patent: Design patents are granted on an ornamental design such as the shape, appearance, or general aesthetic of an invention.
3. Plant Patent: Plant patents may be granted for inventing or discovering asexually reproducing varieties of plants.

Patent Preparation and Prosecution

Investigation

The first step in acquiring a patent is for one of our patent attorneys to conduct an investigation to determine whether an invention is potentially patentable. Patents are our passion, and we want to ensure that before your time and money are well spent. Typically, we will issue a patentability opinion at the end of our investigation detailing whether we believe an invention is likely patentable.

Application

Once it is determined that an invention is potentially patentable, we draft an application and submit it to the United States Patent and Trademark Office.

The application itself is highly detailed, and typically includes detailed drawings, an extensive narrative explaining the background and invention, and a thorough description of the invention itself.

Prosecution

Patent prosecution refers to the interaction that occurs between a patent attorney and a patent examiner, who makes the initial determination on whether to grant a patent. Obtaining a patent takes time. Currently, there is a backlog of nearly 550,000 unexamined patent applications with an estimated waiting time of 15.5 months. Although this sounds like a long time, it is a significant reduction from the historical wait time of 25 months! As patent attorneys, when the patent office sends back questions or wants additional information regarding the application, we respond quickly and thoroughly to any requests. This keeps the process moving forward as quickly as possible.

Even still, we maintain regular contact with the patent examiner assigned to process your application to make sure the paperwork does not fall through the cracks or get overlooked in the crush of an examiner’s workload. For example, the examiner will likely issue an “Office Action” which discusses the scope of patentability, and this usually requires a response to address questions raised. It generally takes one or two responses to resolve outstanding questions and concerns before a patent examiner grants a patent.

Patent Portfolio Management

An issued patent may lapse if certain procedures are not properly followed during the life of the patent. Our experienced patent lawyers will help you organize the inventory of your patents and stay on top of the many fees you will incur to maintain your patent over time.

It is also critical to have patent attorneys who understand a company’s entire portfolio and how it aligns with the company’s business objectives. An experienced patent lawyer can offer crucial insight into additional patents to further protect a company’s commercial interests. Further, a patent lawyer can save a company money by knowing when it is time to prune a patent portfolio. For example, it may not make sense to continue paying maintenance fees to the USPTO for patents covering a discontinued or obsolete product line.

Continued communication with our business savvy patent attorneys ensures that your patent portfolio yields optimal results for your organization over its entire lifetime.