Patentability Search
We have found that the best method of evaluating whether to proceed with a patent application is to conduct a patentability search in the United States Patent and Trademark office in Washington, D.C. You disclose your invention to us and then we will conduct the search.

In conducting the search, all properly classified and filed U.S. patents which are pertinent to the invention are reviewed and copies are ordered for your records. We then draft a patentability opinion letter indicating the scope of the patent protection which we feel is available for the invention. Foreign patents, periodicals and textbooks are not searched since they are not well classified. consequently, a patentability search is approximately 90% effective in locating any given piece of pertinent prior art.

The results of the search may help you to better define the invention or to identify alternative embodiments of the invention, and may help us to draft the text of the patent application and to draft claims in a way which would give the broadest possible protection to the invention.

Patent Application Preparation
Our office would require your express authorization to proceed with preparing of the patent application. Preparation of the application depends upon the technical complexity of the subject matter, the quality of the written description provided by the inventor, and the number of revisions of the application necessitated by the redefining of the invention by the inventor during the application drafting process. The application may be filed with "informal drawings."

Once the application is filed, it is "patent pending."

You may be interested to note that licensing can take place any time after the application is filed. Some manufacturers prefer to license an invention while it is still in the patent pending stage.

There are a number of strategies for filing a patent application, including the use of provisional applications, and we could tailor the application preparation process to your needs.

PATENT APPLICATION EXAMINATION
When a patent application is filed with the United States Patent and Trademark Office, a Patent Examiner, in determining patentability, must find that the invention is:

• Useful
• Novel
• Non-Obvious.

The invention is useful if it has a present day useful purpose.
Novelty is satisfied unless the Examiner finds a single prior art reference which contains all of the features of the invention which are claimed in the patent application.

In determining whether an invention is obvious, an Examiner may rely on the combined teachings of several patents, printed publications or other prior art references. If a hypothetical person of ordinary skill would view the claimed invention either as an obvious combination of the individual features disclosed in several references, or as an obvious extension of the existing technology, then the Examiner will reject the application as obvious and not patentable. In reality, the determination of obviousness involves subjective judgment regarding, for example, the actual content of the prior art, the level of skill of the ordinary skilled person in the technical field and the reasonableness of combining features from different source references.

Under U.S. law, the application must be filed within one year of the first public use or disclosure, sale or offer for sale of an item embodying the invention. Equally important, many foreign countries require that the patent application be filed before any publication, demonstration, or sale of the device. However, if an application is filed in the U.S. before the first date of any publication, demonstration, or sale, most countries will accord that U.S. "effective filing date" to applications filed in the foreign country within one year. During this one year interval, the benefit of the earlier United States filing date will attach to such foreign patent application. There are a number of strategies for obtaining foreign patents, and if you decide to foreign file, we could tailor a program to your needs.

To be awarded a patent, the inventor cannot have earlier abandoned, suppressed or concealed the invention. This requires that the inventor be diligent in both completing the invention and in filing for patent protection. Further, an inventor should always keep in mind that an earlier filing date is helpful where the patent office has to decide upon which of two pending applications for the same invention should be allowed to issue.

If the results of the patent examination are favorable, a patent will be granted. A patent is an exclusive right of its owner to exclude others from making, using, or selling your invention as defined in the claims of your patent for a period of time, which in the United States is 20 years from the date of filing your patent application.

Note: Robert Spitz is unable to respond to any questions or inquiries by phone, fax, letter, or email from individuals who are not existing clients. Mr. Spitz offers Free Consultation for approved contingency fee cases and Probates. Please contact the office to schedule an appointment.

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