How to apply for a patent in San Diego, CA?

The federal government of the United States has the authority to grant exclusive rights to an inventor, in the form of a patent, when that individual formally files a patent application through the U.S. Patent and Trademark Office (PTO).  A patent’s protection takes affect only after an application has been filed and approved, and not before.  For an invention to receive patent exclusivity rights, it must undergo a process that includes submitting an application, its approval, and issuance by the Patent Office.

There’s a lot of outdated and/or misinformation in print regarding patent rights, so to clarify, recording your own invention notes, or mailing detailed documentation of an invention to yourself, does not mean you have exclusivity protection as was often the case in the past.  However, it’s always prudent to maintain accurate invention notes so that the specific date on which your invention was conceived can be validated.

In March of 2013, the federal government transitioned to a first inventor filing method that dramatically changed the way the U.S. patent process works.  When all is said and done, inventors need to realize the fact that if they’re the first person to file for a specific patent, that earmarks them as the first considered!

With that in mind, the U.S. Patent Office has implemented a very narrow grace time frame window which is much more limited than in the past.  This has placed inventors in a precarious position, and in my expert opinion, they should never depend upon protection granted by a grace period at all due to its extremely short duration.

However, it is possible in some instances that the need may arise to prove that another individual attempted to copy your invention after you made it known.  In order to offer definitive proof that took place there would need to be supportive documentation available.

As a result, your records need to become more detailed as time goes on.  In addition to notes describing how and when you first made known the invention, documentation that shows how and when your invention first came about also needs to be available.  In any case, the most prudent action is to file some sort of patent application when the opportunity first presents.

You can call Gerald Maliszewski directly at 858-451-9950 for a quick confidential discussion about your patent or related intellectual property matter.

What types of patent applications can I file in San Diego, Ca

  • Design Patent
  • Provisional Patent
  • Plant Patent
  • Non-Provisional Patent
  • International Patent

All of the aforementioned United States patent application kinds, except for a provisional patent, if approved give the patent holder the following exclusivity: “the right to exclude others from making, using, offering for sale, or selling” the described invention in the U.S. and also from importing said invention into this country.

That said, a patent does not protect ideas, but it does provide protection for processes and designs that display subject matter that can be patented.  Under U.S. Patent Office scrutiny, that means that nearly everything can and does fall within the definition of subject matter eligible for patent protection.

Patents can be issued for the process of making or doing something, computer software, compounds, new and unique machines, living matter (like bio-engineered organisms), devices, and enhancements to existing inventions that in any way impact those categories described above.

You cannot, however, patent laws of nature, abstract ideas, trade names, mathematical equations, literary works, or physical phenomena.  Trademark laws do afford protection to trade names and slogans, while copyright laws can be applied to protecting literary works.

In contrast to the other patent application types mentioned previously, an application for a provisional patent won’t result in a patent issuance per se, but instead affords a cost-effective means to initiate the actual patenting course-of-action.  The Patent Office requires a smaller fee for provisional patent applications, and there exist fewer requirements for filing a provisional application.

A provisional patent filing essentially functions as a “seat at the table” regarding priority, while giving you the legal right to attach the phrases “patent applied for” or “patent pending” to your invention.  There are many circumstances in which inventors should begin the patent process using a provisional application.

With that in mind, one must know that an ill-conceived application for a provisional patent will afford virtually no benefit.  When they are filed properly, provisional patent applications typically lead to positive outcomes.   Conversely, when one is completed hurriedly and partially, they may result in no beneficial outcome.

When your overall goal is to be awarded a patent, regardless of whether you start with a provisional application, a nonprovisional patent application must be filed.  However, when an invention is inadequately described and documented, it’s quite difficult or utterly impossible for a Patent Attorney to provide a solid estimate for the monetary outlay necessary to file a nonprovisional patent application.

An international (Patent Cooperation Treaty (PCT)) patent application falls within a unique category and as such it is rarely filed by individual inventors or smaller companies.  In reality, no “international (PCT) patents” exist.  Instead, a PCT application can be considered as a type of international provisional application.  However, a given country has the authority to render its own patent decision after reviewing the PCT application and its accompanying documentation.  As you might expect, pursuing an international patent can be an expensive undertaking.  However, the upside is quite strong, and if your start-up or smaller business has the financial resources it is a process well worth considering.

Plant patents come into play whenever someone discovers or invents, and then asexually reproduces, any new and distinct type of plant encompassing hybrids, newly found seedlings, cultivated sprouts, and mutants with the exception of a tuber propagated plant or a plant discovered in an uncultivated condition.  Said individual has the right to file for and receive a patent thereafter once the title requirements and conditions have been met.

The purpose of this article is only to provide some background information, and not serve as an all-inclusive action plan.  As an inventor, if you can’t seem to get past the idea phase I strongly suggest that you contact our office now to hear more about the complete Patent Process.

Unless you are working at the cutting edge of a rapidly changing technology, a recommended first step before diving into the patent application route, one which you really should take under advisement, is to conduct a patent (prior art) search.  You can’t define your invention in a fashion that maximizes its patentability, while showcasing that it’s truly new and unique, without first determining if there is something else out there like it already.

You can call Gerald Maliszewski directly at 858-451-9950 for a quick confidential discussion about your patent or related intellectual property matter.

Why is a patent search valuable in determining uniqueness in San Diego, CA?

The initial move for nearly all inventors during the patent application pathway should be to conduct a patent search.  The purpose is quite obvious.  For one, conducting a search will alert an inventor to the feasibility of allocating their time and money in pursuit a patent application.

In general, seeking a patent can be financially demanding, so avoiding an application filing process that’s costly and time inefficient is prudent in pursuing the most cost-effective approach.   Conducting the best patent search possible provides strong oversight regarding the all-encompassing aspects of your patent claim as things move forward.

When search results present a picture that your invention will only be applicable within a very narrow window of exclusivity, you may want to reconsider proceeding further.  It may be best to pursue another invention instead, and for most inventors that’s typically a strong possibility.

A patent search in of itself serves as a powerful education experience, as it provide a snapshot regarding which characteristics of your invention are most patentable, and give you a feel for which traits will most likely lead to a successful patent issuance.  Searching for similar patents also allows an inventor to get a handle on which features of an invention are weighted more by the Patent Office.

That’s why in many instances inventors and companies decide to begin the patent submission route by funding a patent search.  During this process, an inventor must invest time in reviewing the patent search outcomes along with professional comments duly noted by a patent agent or lawyer, while thoughtfully considering those existing patents identified.

In my practice, it is an intended goal to put forth all the necessary steps required in getting inventors to consider the information revealed by patents identified during a search.  It seems as though a majority of inventors look over the patent search results, but most don’t take the time to study the actual patents that are found.

My responsibility as a patent attorney is to convince inventors to concentrate on patents that have more relevance to their inventions, involving them in a conversation about those patents, and further in an effort to find the areas their invention overlaps with others, identifying where distinction needs to emphasized.

The typical inventor with which I partner is very smart and highly driven and, therefore, when the patent course is explained to them they usually grasp the concept.  For the most part many inventors are looking for some direction, and that means a line-by-line process works very well for them.

Because an inventor best understands their own creation, when they are exposed to a similar invention it’s easy to draw out from them pertinent information, and identify the prior art patent references that may pose the biggest challenges.  That said, there may exist a characteristic of an invention needs to be described and documented with much greater attention to details.

In my collaboration with inventors we work together in an effort to reveal those patents most like their own, to identify specific similarities and also dissimilarities.  This is a crucial step due to the fact that an inventor is ideally positioned to catch those differences, while a patent lawyer best serves to decide if those variances provide an opportunity for patent approval.

Identifying the similarities and differences between the existing material and new is critical when formulating and providing an opinion, while facilitating a process of information collecting from an inventor about their invention.  All of these steps are very useful when an inventor makes the decision to proceed with their patent application.

Detailed information helps create a patent application writing process that’s more seamless, and most assuredly facilitates a more in-depth invention overview.  When it appears that no major hurdles are identified, the patent search might and should typically result in a more viable application.  This is because an initial patent query promotes a better-supported, more robust application in the end.

In an effort to not compromise the critical filing date, or priority date, your invention application should provide a full disclosure upfront without the need to add any new information later.  That’s where a search comes in, as it helps stimulate a full initial disclosure that’s meticulously written to highlight and describe what will probably be your most patentable characteristics and workings.

If the compilation disclosure for your invention is thorough, it has the potential of laying down the groundwork for a more comprehensive patent application.  At the very least it opens the door for claims addendums as the prosecution is underway with a patent examiner.  It is true that after an application has been filed claims may be added or amended, but it is prohibited to add new matter during the process.

If subject matter was initially included with the patent application as filed, it’s not considered new.  Therefore, it’s imperative to write the most detailed invention description you can.  Think of the information as a funnel, with the invention’s description encompassing all aspects, and moving from generalities to detailed specifics, described in as many ways as is plausible.  When this is carried out and supported by the outcomes of a reliable patent search, and then evaluated together by the patent attorney and inventor, the end results are a finely-polished, professionally-detailed patent application that should result in a formidable patent.

Patent searches don’t just serve as a means to identify what is unique and therefore most potentially patentable, but they also provide an opportunity to uncover prior art and thus save the expenditure of a costly patent application by the inventor.  Inventors are truly creative individuals, much like artists and song writers, and I continuously relate that fact to them.

During my professional tenure, I’ve found that creative individuals come about their creativity naturally, and it is a lifelong gift.  However, if you as an inventor exhaust your monetary resources on an impractical initial invention, you could be placing yourself in a situation where you won’t be able to pursue the next one, as the follow-up invention may represent a more tangible option.

It’s an educated guess on anyone’s part, and risk-taking of some degree is required for success.  However, conducting a patent search facilitates a more promising opportunity, or can help you move on to the next version if the probability of being awarded a patent is small.  Or, a prior art search may identify when an approved patent would offer protection rights that are narrow and thus not worthy of the resources allocated necessary for its allowance.

Oftentimes inventors convey to me that they’ve attempted a patent search on their own and have turned up nothing concrete, and/or indicate that nothing like their invention exists in a given industry.  Those comments are appreciated, and that process should be carried out by any inventor.  But if you aren’t experienced with professional patent search methodologies and/or are unwilling to spend the time, you are almost assured of not turning up what you seek on your own.  In reality, prior art exists for any and all inventions.

In nearly every case, when I’m conducting a search for an inventor who says that they’ve discovered no invention like theirs, I locate patents that were found through the Patent Office database missed by the individual I’m working with.  On occasion, the patents are slightly related, in other instances they overlap closely, and occasionally they are exactly what my client has created.

During my experience I’ve encountered numerous instances where I’ve personally conducted a search when the inventor has indicated they already had done so, and my query has identified an existing patent for the same invention.  And, that’s why a comprehensive search is done.  In the end, it’s a wise move to spend a few dollars on a patent search upfront as opposed to learning about an existing patent later.

On the flipside, the terrible result of not carrying out a patent search may be the outlay of thousands of dollars on a patent application, only to find out down-the-road your patent has been rejected on the basis of existing prior art.  So, it’s always prudent to at least conduct your own patent inquiry while collecting all the information possible from the existing art.

You can call Gerald Maliszewski directly at 858-451-9950 for a quick confidential discussion about your patent or related intellectual property matter.

Am I qualified to conduct patent searches in San Diego, CA

Using the Internet’s Patent Office database, any person can carry out a patent search.  Bear in mind their database only has patents awarded since 1976.  More important, it takes approximately 18 months from the date of filing until patents (e.g., potential prior art) are published, and therefore your search won’t be all-inclusive.  Another resource is Google, as they provide a search engine for patents, but the search outcomes are presented through Google’s algorithm, which might or might not arrange the most related patents in existence at the top of your search results page.

In many instances an inventor that approaches us to submit a patent application conveys that they did a patent search on their own and it revealed no tangible results, and/or those individuals will indicate they’ve never come across a similar invention within a given industry.  When an inventor takes the initiative to browse the Patent Office’s online database it is useful, and as such it’s wise for all inventors to perform such an exercise.

However, the most thorough and dependable patent search is one carried out by a professional who understands the Patent Office’s Classification System, along with how to conduct advanced patent searches.   For individuals without experience using both, the likelihood exists of overlooking material pertinent to their search.

At various times, these patents are somewhat related, others nearly coincide, and then still other times the match is very much an exact match to the client’s invention.  It’s true that on occasion we will identify an existing patent that coincides completely with an invention that was thought to be original and unique.

And that is exactly the kind of search result you desire.  Isn’t it wise to spend a few hundred dollars upfront to uncover existing patents than to allocate thousands of dollars and later discover that a patent application has been denied issuance?

You can call Gerald Maliszewski directly at 858-451-9950 for a quick confidential discussion about your patent or related intellectual property matter.