THE FIRST STEPS FOR PATENT APPLICATIONS

So you have an idea for an invention that may completely change the market and you want to make sure no one steals it.  First however you need to distinguish if you merely have a conceptual idea, or a thorough thought out invention that you are capable of fully describing in detail.  If you are the latter, then you may very likely be able to move forward with the patenting process.  The reason is that general vague conceptual ideas are not patentable.

So if you have actually developed the invention such as a prototype, that is even better.  Your next step would be to seek out an experienced Los Angeles patent lawyer licensed with the state and registered with the United States Patent and Trademark Office (“USPTO”) who can guide you through the patenting process. You will ultimately need to discuss the invention to the patent attorney so he can make a determination of what type of patent is appropriate.  Your application could be either be a Utility, Design, Plant, or Provisional Application, depending on various factors.

A.      The First Step:  Conducting a Patent Search

In order to determine whether your invention has already been patented, a patentability/novelty search through a patent attorney is highly recommended, to determine whether or not it is advisable to move forward with a patent application. If it is determined that an application has already been filed for the same or very similar invention, you will save thousands of dollars and time by not pursuing the application. However, in other cases, your invention may be different enough from the prior art such that moving forward with a patent application would be a wise move.  In addition to a determination of patentability, the search results can provide additional relevant information that could be of interest.

B.     The Second Step: Filing your Application and the Patent Process

If the invention is patentable, drafting an application is the next step. The turn-around time and legal fees will vary depending on the technology and complexity of the subject matter.

After your application is filed, approximately 8 months to 16 months or later, the patent examiner at the USPTO will issue an Office Action either accepting or rejecting the application. Typically the examiner will require various changes in the application. In other circumstances, substantive arguments must be prepared to overcome the examiner’s rejections. Only upon a successful response by your Los Angeles patent attorney to the examiner’s office action will the application issue. Immediately upon the filing of the application, it is appropriate to place the terms “patent pending” on the invention as warning to others. This marking may serve as notice to potential infringers who copy the invention that they may be liable for damages once the patent is issued.

Note: to protect the look of the invention rather than the functionality (the way it works), then a “design patent”, rather than a “utility patent” may be more appropriate.  Design patents tend to be less involved compared to utility patents.

Cohen IP Law Group, P.C. is a full service intellectual property law firm located in Los Angeles, California specializing in patent, trademark, copyright, business and Internet transactions and litigation.

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