Patent Applications and Prosecution | Hyra IP
Patent Applications and Prosecution
Patent Applications
Initial Consultation
Hyra IP makes the patent application process fast and easy. As a first step, I offer an initial consultation of up to one hour at no charge to you. To schedule this consultation, please call me any time at 1-866-913-3499 or contact me through the website or by email. Business hours are 8:30 AM to 7:00 PM Eastern Time, Monday through Friday. Availability at other times varies.
During this initial consultation we will go over what work you may need done and whether Hyra IP is a good fit for your situation. If we come to an understanding, I will send you an engagement letter and will officially be your attorney when you sign and return it. Fee information for patent applications can be found here.
Preliminary Steps
Once you have retained me as your attorney, I will send you my recommendations, some general information on the patent application process and a form to fill out with pertinent questions regarding your invention.
Once you fill out and return the form along with any other information you have about your invention (attorney-client communications are always 100% confidential), HyraIP gets to work putting together your patent application for submission to the Patent Office. If you are unsure of the patentability of your invention, a patentability search can be conducted before work on the application is begun.
Drafting Your Patent Application
When work on the application begins, the information you provided is placed in the proper format and carefully reviewed and an initial set of claims is drafted (for nonprovisional applications). Questions raised by the information provided are identified, as are areas where greater depth might be desirable. At this stage, an interview is conducted with the inventor to flesh out the information and to review the scope and focus of the application.
Information from the interview is incorporated into the application and any drawings are formatted with reference numerals and lines and described in the application as required by the rules of the Patent Office. A complete draft of your application is then forwarded for your review and comment. If changes are necessary, they are made and reviewed and an amended draft is sent for your review. This process continues until you are fully satisfied with your application.
Filing Your Application
At this point, all of the official documents are prepared by Hyra IP and forwarded for your signature. When you return the documents, the application is ready for filing and will be filed immediately. Due to the focus on good service and fast turnaround time at Hyra IP, this entire process can be completed in several days.
Patentability Searches
If the patentability of your invention is in question, Hyra IP recommends a patentability search prior to beginning work on your application. In a patentability search, issued patents, published applications, and publicly available internet sources are searched for prior art that may be relevant to your invention. These are the documents that are most likely to be cited against the patentability of your application by an Examiner.
A patentability search can save you money in two ways. First, it may avoid the expense of preparing and filing an application for an invention for which you are unlikely to be able to obtain significant patent protection. Second, it can help to focus your patent application on those aspects of your invention that are most likely to be found patentable. Patentability searches can also give you some information on what others are doing in your field.
Although patentability searches are reasonably comprehensive, it is not possible to search every document in existence. Some patent applications that have not published or issued at the time the search is conducted may nevertheless qualify as prior art and be cited against your application by an Examiner. A favorable patentability opinion does not guarantee that your application will eventually result in an issued patent.
My fee for performing a patentability search and rendering an opinion on patentability is $575.
Responding to Office Actions
Once your application is filed, there will be a period of pendency during which no action is taken on your application. This lag is due to the large and growing backlog at the Patent Office, and varies based on the technological art in which your application is classified. When it becomes available, Hyra IP will provide you with an estimate of the time remaining until the Patent Office will act on your application.
When it is your application’s turn for action, it will be assigned to an Examiner. This Examiner will search the prior art and decide whether your application is in condition for allowance. If the Examiner decides that it is, a Notice of Allowance will be sent. Otherwise, an Office Action will be sent describing the deficiencies of the application. At least one Office Action is received in almost all cases.
The applicant is required to respond to each Office Action to prevent the application from becoming abandoned. This response should point out the errors made by the Examiner or amend the application in order to overcome the Examiner’s objections. Preparing such a response properly requires intimate knowledge of patent law and experience with the policies, procedures, and customs of the Patent Office. The Examiner may react to an applicant’s response by sending a new Office Action or a Notice of Allowance.
Petitions, affidavits, or other forms or documents may need to be submitted with a response in order to eventually achieve allowance. Appealing the Examiner’s decision may also become necessary at some point during this back-and-forth process known as patent prosecution. Interviews with the Examiner can sometimes speed up the process.
Hyra IP will prepare your responses, with your input, and guide you through the patent prosecution process from beginning to end. I have extensive experience in preparing responses for a wide variety of applications and have had great success both with examiners and at the appellate level.
Appeals
When a fundamental disagreement with the Examiner arises during prosecution, it sometimes is necessary to appeal your case to the Board of Patent Appeals and Interferences (BPAI). A panel of three administrative patent judges will review the Examiner’s decision.
The applicant’s arguments are submitted to the Board in the form of an appeal brief. After the Examiner submits an Examiner’s Answer to the Board, the Applicant has a chance to respond in the form of a Reply Brief. A decision is then handed down by the BPAI panel, usually about a year later depending on the Board’s backlog.
At this point, the Applicant has one more opportunity to convince the Board by pointing out errors the panel made in its decision in a Request for Reconsideration. If the Board’s decision is unfavorable, it can then be appealed either to District Court or to the Court of Appeals for the Federal Circuit.
Hyra IP can handle any appeal that becomes necessary in the prosecution of your applications. I am adept at handling patent appeals and have many times pursued appeals to successful conclusions. I also have experience at the Federal Circuit level, am a member of the Federal Circuit Bar, and am able to pursue an appeal at that level where necessary.
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