Monterey Patent Attorney - Our Decades of Experience is an Asset for Business

If you are an inventor or your employee has developed a new innovation, you should contact the experienced patent attorneys at Sierra IP Law, PC. It is prudent to investigate the possible patent rights of a new innovation at the initial stages of development. Prompt action is essential to secure potential patent rights in your invention. You need the assistance of a knowledgeable patent attorney to protect your rights, ensuring that you take full advantage of your innovation. Our patent lawyers, with over 50 years of collective experience, assist clients with all aspects of patent law. If you are in the Monterey area and need assistance pursuing or enforcing patent rights, contact us for a free consultation with a skilled patent lawyer.

Our Services

Our law firm delivers superior legal services and guidance across all facets of patent law. Our patent attorneys offer comprehensive patent services, including the drafting and prosecution of patent applications, conducting patent searches and patentability evaluations, analysis of patent validity and infringement, management of patent disputes and litigation, overseeing proceedings at the Patent Trial and Appeal Board of the United States Patent and Trademark Office (USPTO), and handling patent assignments and licensing agreements. We are equally proficient in all other domains of intellectual property law, including trademarks, copyrights, trade secrets, rights of publicity, and plant variety protection.

Technical Expertise and Legal Proficiency

Our team is proficient in the nuances of U.S. patent law, equipped to handle all stages of patent proceedings in both state and federal courts. Whether it’s conducting thorough patent searches, drafting detailed applications, or navigating patent prosecution, our attorneys are dedicated to securing your intellectual property rights. To deliver both legal and technical insight, our firm's team includes engineers, scientists, and technical experts knowledgeable across a wide array of technologies, such as:

• Life sciences and biotechnology

• Chemical formulas and processes, including agricultural chemicals and industrial chemical methods

• Electronics and semiconductor fields

• Architectures in computing and software applications

• Mechanical fields including vehicle technology, heavy machinery, and aerospace

• Medical and Healthcare devices and therapeutic methods

Tailored Patent Strategies

Our patent attorneys are licensed to practice before the United States Patent and Trademark Office and have the authority to manage all aspects of patent applications for our clients. Our team is thoroughly versed in the intricacies of the US patent system and substantive patent law. Representing our clients, our patent attorneys draft and file patent applications, prosecute the applications, and handle appeals when patent applications face rejection by the patent office. They also manage patent proceedings before the Patent Trial and Appeal Board to either challenge or uphold existing patents. Moreover, the patent attorneys at Sierra IP Law, PC are licensed to practice in both state and federal courts in Monterey county and the Northern District federal court, as well as all other state and federal civil courts throughout California.

Understanding that each invention is distinct, we customize our strategies to align with your specific needs and goals. From initial patentability analysis through to filing and beyond, we focus on maximizing the protection and potential of your innovations.

Patent Search and Analysis

Filing a patent application demands a significant investment of time and resources. Prior to any patent filing, a patent search is imperative to ascertain the patentability of the invention at hand. This search uncovers existing patents and publicly disclosed information pertinent to the invention, which are examined to assess if they negate the patentability of the invention. It is crucial to gauge the likelihood of obtaining a patent on your innovative technology. Our Monterey-based patent attorneys and experts undertake extensive searches of existing literature, patents, published patent applications, technologies currently in the market, and other publicly available data that reveal similar technologies, collectively known as 'prior art'. Comprehensive searches through online databases are conducted to gather exhaustive records of U.S. and international patents, patent applications, scientific publications, and other relevant sources, all to ensure a thorough patentability analysis.

Patentability

Novelty in Patent Law

In the United States, patent law mandates that a technology must be novel to qualify for a patent. This novelty requirement ensures that the invention claimed has not been previously disclosed in any singular prior art source. For instance, if an existing patent fully describes all aspects of an invention, it renders the new invention anticipated, devoid of novelty, and hence non-patentable.

Non-Obviousness

Should an invention pass the novelty check, it must then be evaluated for non-obviousness in light of prior art. An invention is deemed non-patentable if it appears obvious to someone with ordinary skill in the relevant field to merge existing knowledge to conceive the claimed invention. The 'person of ordinary skill in the art' varies by technology sector; for example, in biotechnology, it might be a laboratory technician experienced in genetic engineering. The evaluation of public disclosures and documents regarding the invention is done considering the expertise of this hypothetical person. An invention that seems obvious to them, given the prior art, is not patentable.

We conduct exhaustive searches through extensive online databases, accessing records of U.S. patents, international patent filings, scientific publications, and other resources to ensure a detailed search and patentability analysis.

Patentability Analysis

A meticulous patent search and evaluation demands a deep understanding of patent legislation and the overarching patent framework. The intricacies of patent law encompass various authoritative sources, including federal patent statutes, federal code regulations, administrative rules of the United States Patent and Trademark Office, and judicial decisions on patent-related issues. Therefore, patentability assessments are best conducted by seasoned Monterey patent attorneys who grasp these legal elements and are capable of delivering precise and careful patentability evaluations. Reach out to our Monterey office for a no-cost discussion with our patent lawyers about conducting a patent search before you proceed with a patent application. We execute detailed searches of online databases that offer extensive records of U.S. patents and patent applications, international patents, scientific publications, and more, to ensure a thorough search and patentability evaluation.

Filing a Patent Application - "Patent Pending"

If the patentability analysis suggests that your invention may indeed be patentable, it is wise to swiftly proceed with filing a utility patent application to secure an early filing date. The term "patent pending" refers to the status of an invention between the filing date of the patent application and its approval or final rejection. This status begins as soon as an application is filed with the USPTO, which could be a provisional or non-provisional filing date. The application filing establishes the named inventors as the as having priority in the claimed invention as of the filing date. The filing also protects the inventors against later filings by third parties. The invention and marketing materials for the invention can be marked with a "patent pending" notice, which puts others on notice that the inventors have filed a patent application for the invention. The notice also serves to deter potential infringers by indicating that an inventor is seeking patent protection.

Drafting a Utility Patent Application

Preparing a utility application is a delicate process, demanding both familiarity with the technology of the invention and adherence to strict formal requirements. To qualify for allowance and issuance by the USPTO, the application must incorporate essential components: a detailed description and disclosure of the invention supporting the patent claims, illustrative drawings that highlight the invention's elements, a brief summary of the drawings, at least one patent claim, and an abstract summarizing the invention. The absence of any of these critical elements will lead to rejection by the USPTO examiner, and potential failure to acquire the desired patent protection. Patent forms that provide pertinent patent details, identify the patent applicant, and identify prior filings, such as a related provisional application, are also necessary. We search databases offering detailed records of U.S. and international patents and applications, scientific publications, and other resources to ensure a thorough patentability evaluation.

Expertise in Patent Law and Technology

Merely listing the necessary elements and attending to the basic steps of a patent application does not suffice. The description, illustrations, and claims within the application must be carefully crafted to be effective and to demonstrate that the invention works in the eyes of a person of ordinary skill in the art. Patent law is complicated and governed by numerous regulations and standards. Overlooking these guidelines when preparing patent applications can lead to challenges during the patent examination or in enforcing the patent in the case of infringement. To avoid such issues during the examination phase or subsequent enforcement, proficient patent drafting is imperative. Employing a well-versed patent attorney is crucial for adeptly navigating your patent application through the USPTO.

Provisional Applications vs. Non-provisional Patent Applications

An initial application might be provisional or non-provisional. Applicants can file 'provisional' applications, which are not examined but establish a record that the invention outlined therein is your intellectual creation. An applicant has one year to submit a complete 'nonprovisional' application for examination. The filing date of the provisional application is the effective filing date of a subsequently filed non-provisional application, known as the priority date. The priority date is the date that determines what other inventions, other publications, and other relevant documents qualify as prior art to your invention. The novelty and non-obviousness of the claimed invention is evaluated in view prior art made public before the priority date.

Utility Patent Examination Process

After filing a patent application, it will be allocated to an appropriate examiner within the designated art unit at the USPTO, which is responsible for the specific technology area claimed in the patent application. The examiner embarks on a detailed search for prior patents, patent applications, and other pertinent documentation. Following this, they meticulously compare the claimed invention in the patent application against their findings to assess whether the invention qualifies for patent protection under U.S. patent law. Should the examiner conclude that the invention is both novel and non-obvious, in addition to meeting all formal prerequisites, a notice of allowance will be issued. Conversely, if the invention fails to meet these criteria, the examiner will issue a patent office action, detailing the reasons for the rejection of the patent application.

Addressing Patent Office Actions

Every patent application faces potential rejection during its review process. It falls upon the patent lawyer to deal with rejections based on earlier patents or other issues. The examiner issues office actions laying out the issues the examiner perceives. It is the job of the patent lawyer to evaluate the examiner's position and determine whether it has any validity and prepare a strategy for overcoming it. The attorney must evaluate whether amendments to the patent claims and legal arguments are necessary to not only overcome the rejections. Effective evaluation and response to office actions requires skill and extensive experience in prosecuting patents. Even with a strong attorney on your side an examiner may refuse to allow the application. In such cases, an appeal to the Patent Trial and Appeal Board (PTAB) may be appropriate.

Appealing Patent Rejections to the PTAB

An appeal removes patent applications from the examination process and places them before the PTAB, where the rejections issued during examination are scrutinized. In this forum, the patent lawyer and the patent examiner are positioned as adversaries, presenting their arguments on the contested issues to the PTAB judges. Such appeals demand the expertise of a patent lawyer versed in the nuances of patent examination and prosecution, including PTAB proceedings and other forms of patent dispute resolution. At Sierra IP Law, our attorneys possess the adeptness and experience necessary to manage patent applications throughout the entire patent process.

Our Patent Attorneys Effectively Procure Patent Protection

Our team of seasoned patent lawyers offers extensive experience in the submission and prosecution of applications before the USPTO. We work intimately with you to devise the optimal strategy for obtaining and maintaining patent rights that provide the greatest benefit to your business. We have successfully obtained patents granted for many clients. Our clients also rely on us to protect their patented inventions through enforcement of their granted patents.

Obtaining Foreign Patents

If you need international patent protection, we have a global network of foreign patent associates assisting us in pursuing foreign patent rights on behalf of our clients. We file and prosecute foreign applications under the Patent Cooperation Treaty (PCT) and national phase applications with the cooperation of our foreign patent associates.

Pursuing an International Application

Each foreign nation maintains its own patent authority. Almost every nation participates in the patent cooperation treaty (PCT) system, enabling patent proprietors to file a singular PCT application, initiating the process for seeking international patent protection. A PCT is an international application that safeguards the filer’s right to seek patent protection in nearly all foreign countries. A national phase application must be submitted within 30 months from the filing date of the primary application (e.g., the corresponding utility application) to each national patent office where patent rights are sought. International patent rights are a crucial aspect to discuss with a proficient patent attorney at the earliest opportunity. National patent regulations vary regarding how public disclosure of an invention might prevent patent grant. Our firm not only assists our US clients with seeking international patent protection, we also assist foreign applicants with pursuing US national phase utility patents.

Patent Portfolio Management

Our firm monitors, prosecutes, and manages US and foreign patent applications for many clients. Often a client files applications in multiple countries. Each patent family covers a particular invention and has its own timeline based on its priority date. Patent applications in other countries each have different examination rules and deadlines. Our patent attorneys have the skills, expertise, and relationships to manage foreign patent portfolios and effectively pursue patent applications across international borders. We keep our clients informed of deadlines and changes in national laws that may affect their rights.

Licensing Patent Rights and Patent Transactions

Our professionals have extensive experience in drafting patent license agreements for our clients. We safeguard our clients' interests and intellectual property rights, ensuring the financial benefits of the agreements are maximized within a licensing context. Additionally, our patent attorneys are skilled in developing patent transfer agreements and various other patent-related contracts. We conduct thorough patent due diligence for licensing and transfer purposes. These patent dealings rely on the fundamental assumption of a patent’s validity and its inherent value. Nonetheless, one should never presume the validity of a patent, its enforceability, or its adequate patent breadth to deliver the anticipated value from a patent license.

Patent Validity Analysis

Even though a patent is granted by the Patent Office, its validity and scope can be crucial. Performing a patent validity analysis is essential before entering into licensing agreements or acquiring a patent. A patent that is deemed invalid carries minimal value and cannot be enforced successfully in infringement cases. The concept of a patent validity analysis aligns with patentability searches, but it involves a more thorough investigation of the issued claims by the United States Patent and Trademark Office. The depth of validity searches is driven by the substantial investments and commitments involved in licensing agreements.

Freedom to Operate under the Licensed Patent

A freedom to operate analysis is crucial for determining if your business can utilize patented technology without infringing on another's patent rights. Numerous enterprises, including major industry players, are perpetually developing new technologies, securing patents, and enforcing them vigorously. Facing a patent infringement lawsuit can be financially crippling. To circumvent such risks, conducting a comprehensive freedom to operate search is imperative to identify any pertinent patents and assess if the technology you wish to license infringes on others’ patent rights.

Types of Patents

When you are preparing to file a patent, it's essential first to ascertain whether your patent is pertinent to your invention. There are three primary types of patents: utility, design, and plant patents, each offering distinct forms of protection. Utility patents are available for anyone who invents or discovers a new or useful process, machine, article of manufacture, or composition, or any novel improvement thereof. Such patents cover the practical aspects of these categories. Technologies typically protected under utility patents include software programs, healthcare devices, hardware tools, chemical formulas, and biotechnological advances, providing exclusive rights to the patent holder to prevent others from manufacturing, using, or selling the inventions for a 20-year term from the patent's filing date.

Conversely, design patents are suitable for new, original ornamental designs that are incorporated into or applied to commercial products. These design patent applications grant the inventor the exclusive right to protect and prevent others from producing, utilizing, or selling the ornamental design for 15 years.

Plant patents are granted for the invention or discovery of a new and unique asexually reproducible plant variety, including hybrids, seedlings, mutants, and cultivars.

Contact Us

If you are an entrepreneur or you operate a business in Monterey or the surrounding areas, the seasoned patent attorneys at Sierra IP Law are equipped to assist you with obtaining patents, enforcing patent rights, and maximizing patent value through strategic transactions. We assist individual inventors, small businesses, and large enterprises alike.  We are equipped to procure patent rights for you, whether it be through utility, plant, and/or design patents.  It is wise to actively pursue intellectual property rights to benefit your business. Our knowledgeable patent attorneys are here to help you develop and safeguard a comprehensive intellectual property portfolio to bolster your business's competitive advantage.

Please reach out to our office for a complimentary consultation with one of our patent attorneys. We look forward to assisting you.