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TCP Law, PLLC.

Patent Attorney based in New York & Serving all of the USA.

We Can Protect Your Invention and Design

Patents are essential to many businesses, and they are one of the most complex categories of intellectual property.

If you have developed a product, process, or improvement therein, it is crucial to protect your work. At TCP Law, PLLC, we have extensive experience identifying, developing, prosecuting, and enforcing patent rights. If you’re looking for a patent lawyer, we can help. We know how to protect your right and to help you profit from your ingenuity.

Contents

  1. What Is A Patent?
  2. What Can Be Patented?
  3. How Do I File a Patent
    1. Step 1: Determine What Kind of Patent You Need
    2. Step 2: Make Sure Your Invention Qualifies for Patent Protection
    3. Step 3: Assess the Commercial Potential of Your Invention
    4. Step 4: Conduct a Thorough Patent Search
    5. Step 5: Prepare and File the Application
  4. Should You Patent Your Invention?
    1. Inventions That Should Be Patented
    2. Alternative To A Patent
  5. What Does A Patent Attorney Do?
    1. Patent Application
    2. Licensing Or Selling Your Patent
    3. Enforcement
  6. What Is The Difference Between A Patent Attorney And A Patent Agent?
  7. What Can TCP Law, PLLC Do For You?

What Is A Patent?

A patent is a right the government gives an inventor to prevent others from making, selling, using, or importing their claimed invention for a certain number of years. You have to file a patent application that discloses and claims your invention with the United States Patent and Trademark Office (USPTO) to procure a patent.

There are three types of patents: utility patents, design patents, and plant patents. Utility patents protect how an invention functions. Design patents protect the ornamental elements of a product. Depending on your invention, you may need both a utility patent and a design patent. Plant patents protect distinct and new varieties of plants.

What Can Be Patented?

Not everything can be patented. An invention must meet several criteria to be patentable:

  • It must be novel;
  • It must be useful; and
  • It must be nonobvious.

You cannot use a patent to protect an idea. Instead, a patent protects an embodiment of your idea. As an example, patentable inventions may include:

  • Manufactured items;
  • Machines;
  • Methods and processes;
  • Recipes; and
  • Plants that are asexually reproduced.

You cannot patent naturally occurring substances, mathematical formulas, or processes performed entirely with the human body.

Some industries that commonly pursue patents include:

  • Electronics and electronic components
  • Automobiles
  • Pharmaceuticals
  • Aerospace
  • Weapons
  • Cosmetics
  • Telecommunications
  • Appliances
  • Online platforms
  • Data collection or management
  • Software developers
  • Security

An attorney can help you determine whether your business’s inventions, processes, or formulas can or should be patented.

More Information:

How Do I File A Patent?

Patents are filed with the United States Patent and Trademark Office (USPTO) to secure exclusive rights in an invention for a limited time. Because many new inventions build upon existing discoveries, the patent filing process is more complex than other kinds of intellectual property. Several vital steps span from the prototyping stage to the final preparation of the patent for filing with the USPTO.

Step 1: Determine What Kind Of Patent You Need

There are three types of patents in the U.S.: utility, design, and plant.

Utility patents seek to protect new and useful processes, machines, articles of manufacture, or compositions of matter. Utility patents address the functional and structural elements of a novel invention.

Design patents seek to protect new and original designs for manufactured goods. Design patents address the ornamental and non-functional elements of a manufactured article.

Finally, plant patents are available for anyone who invents, discovers, and reproduces distinct varieties of a plant. Hiring a patent attorney to review your invention is the most effective way to decide which type of patent or combination of patents is best for you.

Step 2: Assess Whether Or Not An Invention Qualifies For Patent Protection

Not all inventions are eligible for patent protection. In the United States, processes, machines, manufacturing methods, compositions of matter, or improvements to any of those may be patented.

Patentability further depends on the usefulness, novelty, and “non-obviousness” of the invention. Usefulness refers to the invention’s ability to perform the function it is designed to perform. For example, a machine designed to create widgets is not “useful” if it does not manufacture widgets.

Novelty refers to the newness of the invention. A patent cannot be obtained if the claimed invention was previously patented or publicly disclosed. As part of your patent application, you will need to draft “claims” that define the scope of the protection sought in the application.

Finally, non-obviousness refers if it would not have been obvious to a person of ordinary skill in a relevant art to make the invention based on the cited prior art.

Questions about your invention’s usefulness, novelty, and non-obviousness are all questions a patent attorney can help analyze and answer. Since the patent application is relatively expensive, taking the time to analyze embodiments of your invention in view of the relevant prior art is essential to help prevent unnecessary expenses.

Step 3: Assess The Commercial Potential Of Your Invention

Many patents involve inventions or new processes that improve efficiency or reduce the cost of existing systems and methods. As a result, your invention may have significant commercial potential. Determining your invention’s commercial potential is a way to assess whether filing a patent is worth the time and money and whether additional safeguards should be taken to protect your invention.

Step 4: Conduct A Thorough Patent Search

One of the most critical steps in the patent application process may be conducting a patentability search. A patentability search looks for relevant prior art in the form of existing patents or published patent applications that may be cited against your patent application. A patentability search may help determine both whether or not your invention is patentable as well as the ultimate scope of the resulting patent.

The exact process will differ depending on who performs the search, but there are some common steps. A patent search generally involves developing a list of terms that describe your invention. The attorney then uses those terms to find existing patents and published applications at the USPTO. The attorney will thoroughly review the documents to determine whether they qualify as prior art to your invention. After the first round, the patent attorney may broaden the search to include non-U.S. patent filings and publications.

Conducting a patent search is a complex and challenging process. Because this step is so important, hiring an experienced patent search attorney is the best way to uncover any prior art that could affect the patentability of your invention.

Step 5: Prepare And File The Application

After conducting a patent search and completing the application, you are ready to submit. At this point, you will need to pay any applicable filing fees. After the application is filed with the USPTO, a patent examiner will review the invention disclosed in the application and perform a search based on what is claimed in the application. The patent examiner will either issue a notice of allowance of the application or will issue an office action rejecting the claims based on cited prior art. If the claims are rejected, a response that either argues against the rejection or amends the claims must be drafted and filed in the application. This process continues until the patent examiner issues a notice of allowance or the application is abandoned.

Should You Patent Your Invention?

Even when patentable, not every invention should be patented. Although a patent will protect your invention, that protection does not last forever. Utility and plant patents have a term of 20 years from their filing date, and design patents have a term of 15 years from their grant dates. To procure a patent, it is necessary to disclose how your invention works, which will allow others to copy that invention after the term of your patent ends.

Inventions That Should Be Patented

You should apply for a patent if the nature of your invention makes it difficult or impossible for you to make, sell, or use that invention without allowing others to copy that invention. For example, you might need a patent if:

  • Your invention is easily reverse-engineered,
  • Your invention will be seen by the public, or
  • Your invention is likely to be independently discovered or developed by someone else.

You might also consider how long your invention is likely to be useful. Will you need to protect it for longer than the term of the patent? If not, the required disclosure is a small price to pay for the protection your patent will provide during its term.

Alternative To A Patent

The primary alternative to a patent is to treat your invention as a trade secret. Trade secrets can receive indefinite protection if you continue to take reasonable steps to keep the invention secret. One of the most famous examples is Coca-Cola, which has managed to keep its formula for Coke a trade secret for nearly 130 years.

To protect a trade secret, you typically need a combination of tight security and nondisclosure agreements. A New York intellectual property lawyer can help define and implement the reasonable steps needed to keep your invention a trade secret.

What Does A Patent Attorney Do?

A patent lawyer based in New York, NY, can help you with anything related to a patent, including drafting and prosecuting a patent application and enforcing the claims in an issued patent in the U.S. and territories outside the U.S.

Patent Application

The process of filing a patent application is complex. It is not something you want to handle on your own if you don’t have experience with patent applications.

A utility patent application includes:

  • Title of Invention;
  • Cross-reference to Related Applications;
  • Background of the invention;
  • Brief Summary of the invention;
  • Detailed Description of the Invention;
  • Claims
  • Abstract of the Disclosure
  • Drawings; and
  • Oath or Declaration

A design patent application includes:

  • Preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied;
  • Cross-reference to Related Applications;
  • Description of the Figure(s) of the Drawing;
  • Feature Description;
  • A Single Claim;
  • Drawings or Photographs;
  • Oath or Declaration.

The oath or declaration confirms that you are the person who created the invention, that you have disclosed all relevant information, and that you have verified the accuracy of the application.

Although this may seem like a simple step-by-step process at first glance, many simple errors can lead the USPTO to reject your patent application. Additionally, some mistakes, particularly concerning the claims in your patent application, may limit your ability to enforce your patent down the road.

Common mistakes include:

  • Drafting claims that are specific enough or are too specific;
  • Not adequately describing your invention;
  • Not including adequate formal drawings; and
  • Not paying the right fees.

Not all errors involve the patent application itself. You can also damage your ability to obtain or protect your patent by:

  • Failing to conduct a thorough patent search to identify prior art;
  • Applying for the wrong type of patent;
  • Disclosing your invention without a prior non-disclosure agreement; or
  • Waiting too long after publically disclosing your invention to file a patent application.

You must enlist a patent attorney to help you prepare your patent application. At the very least, you should have an attorney review the application before you file it with the USPTO.

Licensing Or Selling Your Patent

Although you may intend to market and sell your invention yourself, many inventors make money by selling or licensing their patents.

Both licensing and selling a patent typically involve complex commercial contracts. Although you may find online forms for purchasing and licensing contracts, these forms are typically inadequate to protect your interests fully. When drafting a contract potentially worth thousands or even millions of dollars, it’s essential to invest in legal help.

A patent attorney can help you determine the value of your patent, negotiate with the other party, and review or draft your purchase or licensing agreement. Your attorney can look for potential pitfalls in the agreement and make sure that the language accounts for events that may affect your rights in the future.

Enforcement

It is also essential to have legal help if you need to enforce your patent against an infringer. It violates your patent rights anytime someone makes, sells, imports, or uses your invention as claimed in the patent without permission.

With an infringement lawsuit, a patent attorney can help you seek damages for any profits you lost as a result of the infringement, as well as the amount the infringer would have reasonably paid as royalty if they had licensed your patent. Additionally, under federal law, the court has the option to order an infringer to pay up to three times the amount of your actual damages.

Your patent attorney can also help you argue against any defenses the infringer might raise to avoid liability. For example, the infringer might argue that the patent is invalid or that their use predated your patent. An experienced patent attorney knows how to combat these types of defenses and fight for the compensation you deserve.

What Is The Difference Between A Patent Attorney And A Patent Agent?

A person becomes a patent agent by passing the Patent Bar Exam. To sit for the exam, a person must have sufficient technical and scientific training to assist with patent applications—typically a bachelor’s degree in a scientific or technical field. Only patent agents can assist others with their USPTO patent applications.

All patent attorneys are also patent agents—they must pass the Patent Bar Exam and their state’s general bar exam to practice patent law. However, not all patent agents are attorneys. If you hire a patent agent who is not an attorney, they can help you with your patent application, but they cannot represent you in court or give you legal advice. This means that if you want to license or sell your patent or pursue a patent infringement lawsuit, you will need to find a licensed attorney to help you.

What Can TCP Law, PLLC Do For You?

John Laurence is an experienced patent attorney based in New York, NY. He has a bachelor of science in electrical engineering and worked as an electrical and computer engineer for many years. He is a member of the New York State Bar and the Patent Bar and has prepared patent applications for numerous different types of inventions. John knows how to navigate the patent process, leverage your patent to earn money for you and enforce your patent against infringement. Contact TCP Law, PLLC today online or by phone at 347-943-1449 to schedule a consultation.

 John C. Laurence, Esq.

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