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Obtaining a Patent is a Delicate Balancing Act

One of the main comments I hear from potential and current clients new to the patent system is the urgency to just get a patent, any patent, and as soon as possible.  However, it’s important for inventors to understand that obtaining a patent can be a balancing act and requires patience to ultimately to get a strong patent issued that is broad enough in scope but narrow enough to overcome the prior art and potential validity challenges, thereby substantially improving the actual value of the issued patent. On one hand, you need enough specificity in the claims of your patent application to help overcome other patents and prior art references, and on the other hand you can’t be too specific so that potential or future competitors can easily work-around the claims of the patent. Hence, the balancing act is comprised of finding a middle ground to what the Examiner at the USPTO will find to be patentable and what the inventor is willing to give up as to the scope of their patent.

According to some patent professionals reviewing USPTO patent issuance statistics, the odds of obtaining a patent is generally 70%*. Given those odds, an inventor’s goals should not be to obtain just any patent, but one that is broad, strong, and enforceable, thereby ultimatly improving its valuation.

As a former patent examiner and practicing Dallas patent attorney, I will be more than happy discuss your ideas and innovations and determine the best course of action for your intellectual property and patent needs.

 

*http://patentlyo.com/patent/2014/09/patents-issued-fiscal.html

Licensing Your Intellectual Property

I get questions about licensing from inventors all the time. Licensing your intellectual property (IP) or patent(s) can be a very viable and profitable option to those who do not want to go through the high cost and trial and error of manufacturing their product and selling it on their own or through distribution channels. In contrast to assigning or out right selling your patent(s) where you relinquish all rights to it, licensing allows an inventor to keep rights to his or her IP while allowing manufacturers and/or retailers to just license the technology. With this scenario, the inventor can license the IP to multiple licensees through non-exclusive licenses wherein the license agreement can be structured on the inventors terms, such as royalties based on sales, guaranteed royalties, upfront payments, etc. If you are looking for a patent attorney here in the Dallas area to help you with licensing your IP then please contact us to see how we can you maximize the true potential of your IP.

Want to Get a Patent Within a Year?

The unfortunate truth is that the average pendency time for a patent application to issue into a patent over past few years is about 3 years. Also, this can depend on the type of invention such as a simple mechanical or a complex business method, with the latter typically taking the longest. However, the good news is that this pendency period can be dramatically reduced by incorporating the USPTO’s accelerated examination or “Track 1” procedures. As a patent attorney dallas I usually tell me clients about this option during our consultation. If the accelerated examination or Track 1 option is chosen, we generally receive a first office action within about 6 months from filing the patent application. The downside with the expedited examination is that we don’t get as my rounds with the Examiner on making amendments to the claims of the patent application. Generally, we will need to appease the Examiner after the first office action rejection in order to get an allowance on the patent application if we want it issued within a year. But the upside is that you can obtain a patent in a very short amount of time, particularly in technologies that rapidly change every year and it is important to obtain a patent as soon as possible. Here, every situation can be different and a balancing act. As a patent lawyer dallas I try to advise the best course of action for my clients that will provide the best protection for their inventions in the shortest amount of time. Contact me today for a free consultation for all your patent and trademark needs.

Looking for a Patent Attorney? Know what to look for.

When shopping around for a patent attorneys or patent lawyers, it’s important to know what to look for or what to ask for. For example, I always tell prospective clients who call or come see me to go with a reputable patent lawyer or patent attorney in your area, such as a local Dallas patent attorney. The main reason being that you will be having a business relationship with your patent attorney and will be working with him or her over a period of time.  Therefore, it will be ill-advised to shop around for patent attorneys simply by what they quote you over the phone. Would you shop for your doctor the same way? You really need to meet with him or her to really know if you can develop a business relationship. In addition, you should read prior independent review for the patent attorney, such as on Avvo.com or Martindale-Hubbard. For example, Avvo® is the nationally recognized and leading website for reviewing lawyers in any specialty or practice area. As a patent attorney in Dallas, I am very honest and straightforward with my clients on my credentials, experience, and also the prospects of moving forward with their potential invention. Call me today as I would love to hear your idea and help you along the way.

Provisional vs. Non-Provisional Patent Application

One of the first things I discuss with inventors who want to get started on a patent application is the main differences between filing a provisional or non-provisional patent application.  These titles can be confusing, so for simplicity I like to refer to the provisional application as a “temporary” patent application and the non-provisional as a “regular” application.  As a practicing patent lawyer in Dallas, here are a few benefits and drawbacks that I discuss with some of my clients:

 Provisional (“Temporary”) Application:

Pros:

  • Lower initial cost
  • Can have informal drawings
  • Does not need claims
  • Buys you time to find investors/financials backing
  • You get “Patent Pending” status
  • Good option if you’re still working out all the details of your invention

Cons:

  • Still needs to meet all legal requirements of a patent application (i.e. written description, enablement, best mode, etc.)
  • It is not examined by a Patent Examiner
  • Delays prosecution/examination of your patent application
  • Only good for one-year, then you need to file a non-provisional application

 

Non-Provisional (“Regular”) Application:

Pros:

  • The actual application that will be prosecuted/examined that may eventually issue into a Patent
  • You get “Patent Pending” status
  • Can file additional applications (i.e. Continuation’s) for variations of your invention based on the original application
  • Can expedite examination (with extra USPTO fee) to a possible issued Patent within one-year
  • Can look better for investors, means you are serious about your idea

Cons:

  • Higher upfront cost
  • Needs the most details of your invention

 

So there you have it. Every inventor’s situation is different and I try my best to provide them with a strategy in protecting their intellectual property in the most efficient and cost-effective way. You have many choices for patent lawyers in Dallas, give us a call here at the Law Office of Sam Sokhansanj and hopefully we can give provide with a sound strategy for protecting your intellectual property.

 

Do I First Need to Have a Patent Search?

Short Answer: It can help.

Long Answer: Having a patent search conducted by a registered patent attorney can save you a lot of time and perhaps financial resources.  There are over 8,000,000 patents within the U.S. Patent Office (USPTO) records and there is a slight chance that there may be some variation (or the exact) of your invention within those patents and published patent applications. If you don’t see your invention on the shelves, on Google,  or Amazon.com, it does not mean that none else could have filed a patent for it.  Yes, thousands of filed or issued patents are never commercialized or have made it to market. Therefore, a proper and complete patent search by a patent lawyer will give you a good idea and broad prospective of “what’s out there”.  In addition, it can help you modify your invention and it’s various embodiments to perhaps overcome prior art patents, and consequently speed up your patent examination at the USPTO.  As a former USPTO patent examiner and patent searcher, I’ve conducted over 3,500 patent searches and have written rejections on over 3,000 filed patent applications by inventors like you. In addition, in my private practice, my patent searches have helped my clients to get an idea for the current state of their invention and a much stronger and enforceable issued patent.  I offer a flat-fee patent search and if your invention appears to have good merit for patent protection, then we apply credit for your patent search fees towards your new patent application.  Contact us today for a free consultation.

How Much Does it Cost to File for a Patent?

patent4Short Answer: It depends.

Long Answer: Filing for a patent application is NOT a simple one-step process, which is why you need an experienced patent attorney to help you along the way. For example, your idea or invention can be very simple (i.e. paper clip) or very complex (i.e. telecommunication/network system) which affects the costs. In addition, your invention can be either a candidate for a Design Patent Application or Utility Patent Application(or both), both having much different costs associated with them. In addition, if you are filing for a Utility Patent Application, you will need to decide if you want to file for a Provisional or Non-Provisional Patent Application, which again each has its own costs associated with them. We are a patent law firm in Dallas, contact us today for a Free Consultation to discuss the costs associated with your particular invention and we will do our best to work within your budget.

Do all Patent Attorneys Perform the Same Work?

Short Answer: No. You get what you pay for.

Long Answer: Quotes from Patent Attorneys are generally based on how much TIME (among other factors) they have to spend drafting, preparing, and filing your application. For example, some Patent Attorney’s or Patent Agent’s may quote you a low up-front fee to prepare and file your application. However, they will limit your application write-up or drawings to a certain number of pages or claims. For example, they may only draft up to 10 pages of specification or 3 claims. This could potentially be fatal to your patent application down the road if not all variations of your invention were disclosed at the time of filing, there’s not enough support in your specification for proper claim amendments, and the list goes on. So you may save a few hundred or thousand dollars in the beginning, but you may regret that decision down the road when it comes to prosecuting your application at the U.S. Patent Office or enforcing an issued patent. As a patent attorney here in Dallas, we do not put a limit on how much we write for our clients to ensure that we have encompassed and captured your invention in properly drafted patent application. Again, you get what you pay for.

Top 8 Start-Up Business Mistakes

  BUSINESS MISTAKE #1:

Not having detailed Non-Disclosure Agreements in place for employees and investors.

 BUSINESS MISTAKE #2:

Publicly disclosing business idea or product to others before considering Patent or Trademark protection.

  BUSINESS MISTAKE #3:

Not conducting a thorough Patent/Trademark/Copyright search before filing for protection.

  BUSINESS MISTAKE #4:

Waiting to file for a Patent  in time and forever losing patent rights.

  BUSINESS MISTAKE #5:

Ignoring competitor’s Intellectual Property and exposing yourself to “willful” infringement.

  BUSINESS MISTAKE #6:

Failing to have custom IP Assignment provisions in employment agreements.

  BUSINESS MISTAKE #7:

Lack of oversight, education, and maintenance of Company “Trade Secrets”.

 BUSINESS  MISTAKE #8:

Using boilerplate Licensing/Employment Agreements that leave out crucial business matters.