Fresno Patent Attorney

If you've developed a new machine, chemical composition, industrial process, or manufactured item, you should seriously consider obtaining a patent to protect your innovation. If your invention holds market value or significance, seeking patent protection can be a valuable investment. A patent grants exclusive intellectual property rights to make, use, sell, or offer the patented invention for a period of twenty years. Contact our Fresno office to consult with experienced patent attorneys who can help you secure a patent for your invention.

US Patent Protection

Patent applications are submitted to the United States Patent and Trademark Office (USPTO) and must navigate a complex examination process. US patent law requires that utility patent applications include detailed drawings, written specifications, and patent claims that meet stringent clarity and thoroughness standards. The patent application process is complicated and demanding. The USPTO therefore advises inventors to work with a registered patent attorney for drafting, filing, and prosecuting their patent applications. Our patent attorneys have extensive experience in the patent application and prosecution process. Contact Sierra IP Law's Fresno office to discuss your invention and explore your options for pursuing patents and other intellectual property rights.

Types of Patent Applications

Determining whether a patent is the right form of intellectual property protection is the first step. Some innovations are not patentable, such as original written or visual materials (which can be protected by copyright registration) and logos and brand names (which can be protected by trademark registration with the USPTO's trademark office). If a patent is appropriate, you must decide which type of patent application is needed. The US patent system offers different types of patents cover various types of innovations:

• Utility patents: Utility patents covers a machine, manufactured article, compositions of matter, method, and/or improvements thereon.

• Design patents: Design patents covers the ornamental design of a manufactured article.

• Plant patents: A plant patent covers new and distinct asexually reproduced plant varieties.

Our attorneys can help you determine which type of patent protection is suitable. If you are able to seek patent protection for you innovation, conducting a patent search is an important due diligence process prior to filing a patent application. A patent search informs the patent applicant as to whether the invention is novel and non-obvious in view of related public documents and information. Consulting a patent attorney for the search is highly recommended due to the complexity of patent laws related to patentability.

Patent Search

Before filing a patent application, it's advisable to have a patent attorney perform a patent search and analysis to determine if the invention is novel and non-obvious compared to existing technologies. A patentability search is a thorough investigation to identify any existing patents, patent publications, or public disclosures similar to the invention. The patent search includes databases from the USPTO, European Patent Office (EPO), World Intellectual Property Organization (WIPO), scientific journals, trade publications, and other public resources. Prior art refers to any evidence that the invention or a similar technology has been disclosed before the invention. Patent law prohibits the issuance of a patent if the invention was previously disclosed or is obvious based on prior technology.

What is Prior Art?

Prior art refers to any evidence that an invention is already known to the public before a patent application is filed. It includes any public information that is related to the invention, including US granted patents (there are now over eleven million patent documents), US patent publications, international applications and foreign applications, journal articles, technical papers, trade publications, catalogs, websites, Youtube videos, and any other information publicly available before the filing date of a patent application. The publications can be from anywhere in the world. It does not matter if a publication or article was published in another country or language. An international application publication has the same effect as a US patent publication. Thus, it is crucial to search databases that cover publications throughout the world to make an informed determination as to the novelty and non-obviousness of the invention.

Novelty and Obviousness Analysis

Determining whether an invention is novel (i.e., never been done before) is a substantive patent law requirement for patentability. An invention is considered novel if it has not been described in prior art, which includes earlier patents, publications, or any public disclosure before the invention's filing date. Novelty requires that no single reference discloses all elements of the claimed invention, either explicitly or inherently. For example, if a prior patent reveals a similar invention with all the same elements, the new invention lacks novelty. The novelty requirement is outlined in 35 U.S.C. § 102, ensuring that only new inventions can be patented. This prevents the patenting of inventions that are already known, promoting genuine innovation and the progress of technology.

What is Inherency

A prior patent might disclose a chemical technology that includes constituents A, B, and C. Your invention might include A, B, C, and D, and you may think it is novel due to the additional constituent D. However, if the prior patent describes a process that inherently produces D when combining A, B, and C, your invention is not novel. This example illustrates the concept of inherency in the determination of novelty under the US Patent Act. This example also demonstrates that concepts as simple as novelty can become complicated in the context of patentability and necessitate the expertise of an experienced patent attorney.

Obviousness in Patent Law

Obviousness is a complex legal concept informed by federal statutes and numerous court opinions. Patent attorneys must understand these statutes and judicial interpretations to conduct a proper obviousness analysis. This includes determining the level of skill of a person having ordinary skill in the art ("POSITA") and reviewing patents, documents, and other relevant items found in the search from this guise. The analysis must consider whether it would be obvious to a person skilled in the art to combine elements from various prior patents and disclosures to arrive at the claimed invention. The foundational case for obviousness analysis is Graham v. John Deere Co., which outlines the legal framework for determining obviousness, including scope and content of prior art, differences between the invention and prior art, level of ordinary skill, and secondary considerations such as commercial success and problem-solving. Given the complexity of this analysis, engaging a patent attorney is wise step if you seek patent protection.

Vet the Invention Before You Seek Patent Protection

Filing and prosecuting patent applications can be time-consuming and costly. A patentability search can gauge the likelihood of obtaining a patent. If the search reveals high similarity to existing patents or other public information, inventors might decide not to proceed with a patent filing in order to save resources. Conversely, the search can highlight unique aspects of the technology that distinguish it from prior patents and disclosures, helping to strengthen the application. A patent attorney can assist in drafting an application that emphasizes these unique aspects, improving the chances of obtaining a patent. A thorough patentability search for new inventions also identifies potential infringement issues with third party patents.

Identifying Patent Infringement Risks

A patentability search can also identify potential infringement risks. Patent infringement can lead to litigation, legal fees, financial penalties, and injunctions preventing the use of the technology. An experienced patent attorney can analyze prior art to identify and mitigate infringement risks before filing a patent application.

Strategic Insights from a Patentability Search

For businesses and entrepreneurs, a patentability search provides valuable insights into the competitive landscape. Experienced patent attorneys can help understand what has already been patented and assist in making strategic decisions about product development, research directions, and patent claims.

A patentability search should be the first step in the patent process. It helps inventors and businesses understand the patentability of their invention and make informed decisions about patent applications. The skilled patent lawyers at Sierra IP Law can evaluate your invention and conduct a thorough patent search and analysis.

Filing Patent Applications and Prosecution Process

Once confident in the invention's patentability, a patent application can be drafted and submitted to the United States Patent and Trademark Office. The application includes a written specification, one or more claims, drawings (if needed to demonstrate the invention), and an abstract. Drafting these documents requires expertise to avoid pitfalls in complying with US patent law. Engaging an experienced patent attorney is needed to draft a proper application. Pro se applications (filed without attorney assistance) usually fail to result in issued patents, and even if a patent is granted, they typically contain flaws that make the issued claims difficult to enforce.

Submission and Preliminary Examination

After drafting, the application is filed with the USPTO. The patent examining procedure initiates with a preliminary review to ensure all formal requirements are met. Discrepancies are notified to the applicant for correction. Pro se applicants often encounter issues at this stage, highlighting the importance of having an attorney.

Substantive Examination and USPTO Actions

The patent filing is then assigned to a patent examiner for substantive examination to determine whether an invention is eligible for a patent grant. Examiners play a critical role in maintaining the integrity of the patent system by ensuring that only deserving inventions receive patent rights. They must stay abreast of new technologies and developments in their technical fields to evaluate applications effectively.

The examiner conducts their own patent search for similar patents, patent publications, and other publicly available documents. The examiner evaluates the patent claims to ensure they meet the requirements of US patent law. During the examination, the patent examiner may issue one or more office actions. These are official communications that highlight any deficiencies in the application, such as issues with the claims or the need for more detailed descriptions of the invention. The applicant must respond to these office actions, often amending the claims or providing additional information to address the examiner's concerns. Responding to these rejections typically requires amendments and arguments by a skilled patent attorney.

Responding to Office Actions

A response to an office action includes amendments to address formality issues and distinguish claims from prior art. The patent examiner reviews the response and reassesses patentability. If the examiner finds that the invention meets all the necessary criteria, they will issue a notice of allowance, indicating that the application is ready for a patent grant. However, if the examiner determines that the invention does not meet the requirements, they may issue a final rejection. At this point, the applicant has several options, including appealing the decision, amending the claims, or providing further arguments to overcome the rejection. The patent attorney strategizes the next steps, which could include amending claims, submitting further arguments, requesting continued examination, or filing an appeal to the Patent Trial and Appeal Board (PTAB).

Patent Appeals

The PTAB consists of administrative patent judges who review the application and examination record. The appeal process is an administrative legal proceeding where the examiner and applicant present their positions. Most applications do not go to appeal, but the possibility underscores the need for an experienced patent attorney.

Expertise in Handling Patent Applications

Patent attorneys need years of experience to properly handle patent applications from start to finish, including appeals. They must understand the distinctions between the invention and prior art, emphasize these distinctions in claims and arguments, and navigate the examination process. The patent attorneys at Sierra IP Law have the expertise and experience to manage applications and appeals. Contact our Fresno office to discuss your invention and the patent process.

Benefits of a Patent

The issued patent grants the patent holder exclusive rights to the invention, allowing them to seek protection against unauthorized use. A patent provides the legal means to stop unauthorized use and protect the inventor's hard work. This exclusivity is essential for encouraging innovation and investment in research and development. By protecting intellectual property through a patent, the patent owner can secure their contributions to advancing technology and improving society.

A patent grants exclusive rights to protect the economic value of the invention. For twenty years from the filing date, the patent holder has the exclusive right to make, use, sell, or offer the invention for sale. Once the patent expires, the invention is in the public domain and can be used by anyone. The patent system operates on a quid pro quo principle, granting inventors exclusive rights to their inventions for a limited period in exchange for publicly disclosing their inventions. This disclosure allows others to understand and build upon the invention, promoting further new technologies.

Foreign Patent Rights

Pursuing foreign patent rights can pursued in any country in which the patent applicant is interested as long as the formal requirements and deadlines are met. Foreign patent applications can be filed directly in foreign countries. An alternative and efficient method is through the Patent Cooperation Treaty (PCT), which simplifies the process of filing patents in other countries. The PCT allows inventors to file a single international patent application that is recognized by all member states of the treaty. This initial filing grants the applicant time to decide in which specific countries or regions to pursue patent protection.

After the international phase, the application enters the national phase, where it is subjected to the national laws of each selected country. The PCT process helps streamline the administrative burden of separate applications filed in each country, thus providing a cost-effective solution for obtaining foreign patent rights.

The European Patent Office (EPO) is a key regional body that grants patents valid in multiple European countries through a single application. Once the EPO grants a patent, it must be validated in the designated member states according to their national laws.

The PCT and EPO facilitate the foreign patent process through international treaties, avoiding some of the complications of specific requirements and examination procedures in individual countries. Inventors can effectively secure patent rights in multiple jurisdictions through these processes, facilitating broad protection for their innovations.

Addressing Patent Infringement

Patent infringement occurs when an unauthorized party makes, uses, sells, or offers to sell a patented invention. In patent cases, the patent owner holds the exclusive right to the patented invention, allowing them to control how it is utilized and commercialized. This exclusive right is granted by the United States Patent and Trademark Office (USPTO) when the patent is issued. Once granted, a patent is presumed valid, meaning the law recognizes the patent owner's claims to their invention unless proven otherwise by the defendant.

Protecting the Rights of the Patent Owner

Unauthorized use of patents undermines the patent owner's intellectual property rights. Making, using, selling, or offering to sell the patented invention each constitute infringement. When a patent is infringed, the patent owner can file a lawsuit in federal court, where the patent owner must demonstrate that the accused party has violated their exclusive rights. The process of proving that a patent has been infringed involves showing that the infringing product or process falls within the scope of one or more claims of the patent. Claims define the boundaries of the patent rights and are crucial in determining infringement. If the court finds in favor of the patent owner, the infringer may be ordered to cease their activities, pay damages, and possibly cover legal fees.

Patent cases can be complex and costly, but they are essential for protecting the patent owner's investments and maintaining the integrity of the patent system. Even though patents are presumed valid, defendants in infringement cases can challenge the validity of the patent. They might argue that the patent should not have been granted due to prior art or lack of novelty and non-obviousness.

In conclusion, patent infringement is a serious violation of the patent owner's exclusive right to their invention. Ensuring that these rights are respected is vital for fostering innovation and protecting intellectual property. Without the patent owner's permission, using a patented invention constitutes infringement and can lead to significant legal consequences under the law.

Cease and Desist Letters

A cease and desist letter provides actual notice to the infringer of its patent violation and the intent to take legal action unless the infringement stops. The letter outlines the specific patents involved, details the infringement, and warns of potential legal action if the infringing activities do not cease. By doing so, the patent holder aims to protect the value of their intellectual property without immediately resorting to litigation. Cease and desist letters can be effective in resolving disputes quickly, allowing the parties to negotiate a settlement or licensing agreement. This approach can save time and resources compared to the lengthy process of patent litigation, providing a proactive method for patent holders to safeguard their innovations from unauthorized use. Cease and desist letters cannot be sent based on applications filed, but not yet approved for a patent. There must be a patent granted before a cease and desist letter is sent.

Patent Licensing and Transfers of Rights

Patent licensing and patent transfers are common and potentially lucrative uses of intellectual property. Through patent licensing, the patent holder grants others the rights to use all or some of the rights in their patents in exchange for royalty payments. This process allows the licensee to utilize the patented technology while the patent holder retains ownership. Licensing can generate significant revenue for the patent holder and can be structured in various ways to suit business needs.

Patent transfers, on the other hand, involve the complete transfer of ownership of patents from one party to another. This process is essential a sale of the patent, where the new owner gains the same rights as the original patent holder, including the ability to make, use, and sell the patented invention without restriction.

Both licensing and transfers must comply with applicable intellectual property law. Such contracts can include provisions relating to other matters or intellectual property, such as trade secrets. These agreements often require careful negotiation and documentation.

Contact Our Fresno Office

Our patent attorneys are dedicated to providing exceptional support to entrepreneurs, small businesses, and large enterprises in protecting their innovations. With extensive expertise in patents and intellectual property, our team ensures your inventions receive the comprehensive legal protection they deserve. Selecting the right patent attorney is essential for safeguarding your invention's commercial potential. With our legal expertise, you can secure your invention's future, fostering innovation and paving the way for success. Contact our Fresno office for a free consultation.