Your Role in the Patent Process

If your company needs help with protecting its “crown jewel” technology, you probably already know that patents are important. What you might not fully understand is the patent process, your role in it, and how patent attorneys can assist. 

The patent process generally involves these steps:

1. Identifying Innovations. You are best positioned work with your engineers and other innovators to help them identify when they have developed an innovation they believe is new and different from existing methods and device.

2. Writing Down What’s New and Tracking It. While the ideas are fresh, your inventors should transcribe and illustrate innovations in a standardized invention disclosure form. Your lawyers can help you develop one if you do not have one.

3. Searching The Prior Art: You can perform informal searching to see if the invention is already in the public. You can also hire a law firm or searching company to perform a more detailed search of patent and scientific literature. Search results will help you understand how different your invention is from prior art. The results will help your patent attorney evaluate patentability and the scope of any potential patent protection.

4. Evaluating Invention Disclosures for Patent Filings. You can assemble a review team to do this, as it generally involves business, legal, and technical analyses. The team can create criteria to determine if the filing is strategic to a core technology or is merely secondary, whether infringement can be discovered, how different the invention is from known prior art, and other industry-specific criteria. Some invention disclosures will be selected for filing patent applications, some are more likely to be guarded as trade secrets.

After the Deciding To File A Patent Application, Take More Steps Forward

5. Determining What Type of Patent Application To File: Depending on the business case, the maturity of the innovation, and the evaluation of the potential patent scope, decide whether a provisional patent application, a non-provisional patent application, or an international patent application is the most appropriate choice. Your review team can make this decision with guidance from counsel.

6. Determining Where to File Related Applications: Depending on your market and where your competitors might make and sell your invention, you may need a robust international filing strategy. Sometimes it makes sense to file an international application initially, and sometimes it makes more sense to start in the US and file related cases in target countries like Germany or China. Your review team can make this decision with guidance from counsel.

7. Drafting, Reviewing & Filing within 30 Days: In a world that favors first-filed applications, there is little reward for delay. Set deadlines to ensure forward movement. Your patent attorney should draft the patent claims and specification, and your inventors should review it carefully to make sure the claims reflect their invention. An additional and objective technical management reviewer may wish to review for feasibility and other issues.

8. Waiting. Be patient with the Patent Office. Depending on the nature of your technology, the Patent Office may take about 1.5 to 2.5 years before they begin to examine your patent application. It may take an additional year or two before a patent is ultimately granted. And remember, not every application turns into a granted patent. That’s what the examination process is there to determine.

Panagos Kennedy PLLC Can Help

Troy-based Panagos Kennedy PLLC can help develop criteria for evaluating invention disclosures. Our attorneys can help assemble review teams for invention disclosures and patent applications. And we can advise on what type of patent application to file, and where to file patent applications. We also draft and file patent applications, negotiate with the Patent Office over the scope of your claims, and oversee the examination of foreign patent applications to ensure consistency with your business strategy.

For entrepreneurs in Troy, Michigan, choosing Panagos Kennedy PLLC means selecting a partner committed to your innovative success. Visit our website to contact us.