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OUR PATENT PRACTICE
Innovar, L.L.C. handles U.S., PCT
International and foreign patent preparation and prosecution. We work with a network of foreign associates to handle a worldwide
practice. We also conduct patentability, infringement and state-of-the-art searches in the chemical arts and offer patentability
opinion services.
We provide patent portfolio strategization and management services to improve the networth of your
company by coordinating the company's intellectual property assets with its key business objectives. We can review your patent
portfolio to identify gaps in patent coverage. We can identify potential weaknesses in your patent(s) and will work to overcome
any potential problems we identify. All this while reducing cost and improving efficiency!
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HOW THE PATENTING PROCESS WORKS
Patent preparation and
prosecution is a three-stage process involving: 1) preparation and filing; 2) prosecution; and 3) issuance. The entire process
takes about 12-36, with an average of about 19-20 months. After issuance, the maintenance stage comes. Here's a typical
case history of the process for a conventional application when a new client approaches us regarding an invention they have
made.
Preparation and filing: We conduct a free initial consultation with the client to determine if there are
any conflicts and confirm that we are able to handle the application. We discuss the in's and out's of the patent process
and discuss why one would or would not want to obtain patent protection. The client is made aware of the potential costs
involved.
We then review the technical disclosure with the client in detail to explore the extent of their conception
and help them identify all of the applications and features of their invention. We determine whether or not the invention
is patentable by conducting a patentability search and optionally preparing a written patentability opinion.
The
client decides whether or not to pursue patent protection. If so, a first draft of the application is prepared. The client
is encouraged to prepare drawings if possible to help reduce their costs. The first draft is then sent to the client for
review and approval. After receiving their feedback and incorporating their changes in the application, a second draft is
prepared and sent to the client for review and approval. Generally after review and approval of the second draft, the application
is in form for filing. So, the application is then filed.
Prosecution: This stage occurs over the next about 11-35
months. It involves a number of steps including filing of an Information Disclosure Statement (IDS), reviewing of office
actions and references, filing of responses to office actions and more. Most important among these are the steps relating
to office actions. An office action (OA) is a document prepared by the examiner handling the application in the Patent Office.
The OA includes the examiner's comments regarding patentability of the invention, and the first OA is almost always negative,
meaning the examiner has rejected the claims of the application for one reason or another. We review the OA and draft a letter
to the client suggesting an appropriate response. After the client agrees to the general content of the response, a first
draft of the response is prepared and sent to the client for review and approval. The response is filed with the Patent Office
after being finalized. Prosecution generally involves two to three office actions and corresponding responses. At some point,
agreement is reached regarding the patentability of the invention as claimed, so the claims are indicated as allowable.
Issuance: Once
the claims have been allowed, the patent is granted/issued as long as the issue fee and publication fee have been paid and
the formal drawings have been filed and approved.
Maintenance: A patent filed now has a maximum term of 20 years
calculated from its filing date (or priority date). In order to keep the patent enforceable, periodic maintenance fees are
paid about every 3.5 - 4 years. The longer a patent is maintained, the higher the maintenance fees.
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PATENT PORTFOLIO STRATEGIZATION AND MANAGEMENT
Once a
company has a patent, it has to decide what it will do with it. However, many companies fail to reconcile the scope of their
patent coverage with their business plan. Working with the company, we develop a strategy toward exploiting the company's
patent(s) thereby increasing the overall value of the company's intellectual property assets.
Of course, several
of Innovar's clients have patents that other firms have helped them acquire. We help those clients review their patent portfolio
to identify gaps in patent coverage and weaknesses in the patent portfolio. For example, we will review a patent to identify
problems that may exist in its claims or specification and, where possible, suggest and apply remedies to correct those problems.
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PATENT AND LITERATURE RESEARCH
We provide some of the
most comprehensive on-line patent and literature search services available. We subscribe to databases worldwide in order
to obtain the most comprehensive searches possible. Where necessary, we even contract our associates to perform hand searches
of patent and literature records.
Patentability Search and Opinion. Part of obtaining a valuable and enforceable
patent is understanding the scope of the patent and scientific or trade literature prior to preparing an application. Our
patentability searches are broad in scope and encompass the many different applications and potentially independently patentable
features of the inventions we handle. If we say an invention is patentable, we truly believe it is. Our track record in
obtaining strong and broad patent coverage for our clients speaks for itself.
State of the Art Search and Review. Most
companies are relatively well versed with the technologies, activities and products of their competitors. However, access
to worldwide patent and scientific literature is typically not readily available. And if it is, it is not easily searchable.
If you are interested in finding out more about your competitors than they know about you or if you need to know as much
as possible about a particular technology, then our state of the art search service is your answer. We scour the wealth of
on-line literature databases to uncover relevant and important information. We then provide a summary of the literature in
an information packed yet comprehensible report.
Freedom to Operate Search. Non-infringement, or freedom to operate
(FTO), means that a company is able to practice a technology without infringing another company's patent(s). The company
is literally free to operate in a particular area. The first step in determining this is conducting a comprehensive FTO search
of the patent literature in the country(ies) in which the company is interested in conducting its business. As part of the
search, we conduct a preliminary review of the claims of the patents identified during the search to determine which of these
might present a problem. We then draft a summary of the search and detail some of the key aspects of the relevant patents.
With the FTO search results in hand, a company is then able to approach an attorney to prepare a FTO opinion. The FTO opinion,
and not the FTO search, would let a company know which patents it would or would not infringe if it were to practice its proposed
technology.
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