A.     The First Step: Conduct a Patent Search

Although not required, most of our clients request, and we recommend, that a patentability/novelty search is conducted in order to determine whether or not your invention is patentable. This search is conducted at the USPTO or one of its regional patent repositories. In addition to a determination of patentability, the results typically provide us with additional relevant information that is often of interest to our client and us. The fee charged will be based upon the scope of the effort required. The timing of the search results will vary depending on the complexity.  We do however, offer an expedited search service.  All of our searches include a written opinion on patentability by a registered patent attorney.

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

If we determine your invention is patentable, we will then proceed to draft your application. The turn around time and fees will vary depending on the technology and complexity of the subject matter. You will receive a boutique quality application that is designed to discourage competitors, promote licensability, and protect your invention in court.

After your application is filed, approximately six months to year 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, we must prepare substantive arguments to overcome the examiners rejections. Only upon a successful round of office actions will the application issue. Immediately upon the filing of your application, you are entitled to place the terms "patent pending" on your invention as warning to others. This marking may serve as notice to potential infringers that copy your invention and that they may be liable for damages once the patent is issued.

II. WHAT ARE OPINION LETTERS?

There are different types of opinion letters such as freedom-to-operate, infringement, and patentability opinions. Typically, a client receives a cease and desist letter and needs to know the next step in response to the allegation of patent infringement. The answer is to obtain an opinion from competent patent counsel. We recognize that a well written legal opinion can have a positive impact and avoid exposure for increased damages and attorney fees. Clients who combine opinions with an effective litigation strategy and execution by their patent counsel have historically benefited by the results. Our opinion letters are written as thoroughly as legal briefs, with a view toward potential future attack by the client's adversary and possible scrutiny by a federal judge.

Avoiding Expensive Consequences... U.S. patent laws and decisions of the U.S. Court of Appeals for the Federal Circuit impose a duty of due care on companies accused of patent infringement. In the absence of due care, Sections 284 and 285 of Title 35, U.S. Code authorize the courts to assess up to three times actual damages, plus attorney fees, against infringers found guilty of willful infringement. A thoroughly crafted opinion allows a company to evade this costly result.

Independent Legal Opinions... We apply our knowledge and judgment obtained from our experience in rendering high-quality infringement and validity opinions for corporate clients. Clients are well served by patent counsel with experience in preparation, prosecution, opinions, litigation and appeals when faced with actual or threatened litigation.

For more details regarding patents, go to www.patentlawip.com

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