San Luis Obispo Patent Lawyer

Patent Services provided to San Luis Obispo and the Central Coast Area

Our law firm provides exceptional legal services and advice in all areas of patent law. Our patent attorneys provide a full suite of patent services, including preparation and prosecution of patent applications, patent searches and patentability analyses, patent invalidity and infringement analyses, patent disputes and litigation, handling proceedings before the Patent Trial and Appeal Board at the United States Patent and Trademark Office (USPTO), and patent transfers and licensing. We also have experience and skill in all other areas of intellectual property law. Our patent attorneys provide legal advice and services with respect to trademarks, copyrights, trade secrets, rights of publicity, internet and data ownership law, and plant variety protection.

Technical Knowledge of our Patent Professionals

To provide both legal and technical expertise, our firm personnel includes engineers, scientists, and technical professionals that are versed in a broad swath of technologies, including:

• Life sciences and biotechnology

• Chemical compositions and methods, such as agricultural chemicals and industrial chemical processes

• Electronics and semiconductors

• Computer design and software

• Mechanical technologies such as automotive technology, industrial equipment, and aeronautics

• Medical devices and methods

Patent Attorneys Licensed in the Patent Office and all Federal and State Courts in California

Our patent attorneys are accepted to practice before the United States Patent and Trademark Office and are authorized to handle all matters in their client's patent applications. Our patent attorneys are also highly familiar with the US patent system and substantive patent law. On behalf of our clients, our patent attorneys prepare and file patent applications, prosecute the patent applications, file patent appeals when a patent application is rejected by the patent office, and handling patent proceedings before the Patent Trial and Appeal Board to challenge or defend granted patents. The patent attorneys at Sierra IP Law, PC are also accepted to practice in the state and federal courts in San Luis Obispo county and the Central District federal court, as well as all other state and federal civil courts in California.

Patent Searches and Patentability Analyses by Skilled Patent Attorneys

Filing a patent application is a serious commitment of time and resources. Before filing any patent application, a patent search should be performed in order to determine whether the subject invention is patentable. The search will yield prior patents and publicly available information related to the invention, which are then analyzed to determine whether they render the invention unpatentable. You want to have a good idea as to the likelihood that you will granted a patent on your new technology. Our patent attorneys and professionals conduct a broad search of pre-existing publications, patents, published patent applications, technologies present in the marketplace, and other publicly accessible information that discloses similar technologies, all of which is referred to as "prior art". We conduct a thorough searches of online databases that provide comprehensive records of both US patents and patent filings, patents in other countries, scientific journals, and other sources to provide a sufficient search and patentability analysis.

Novelty of New Technologies

United States patent law requires that a new technology be novel in order to be considered patentable. The novelty requirement means that the claimed invention is not disclosed in any single prior art source. For example, if a single patent discloses all elements and features of the claimed invention, then the invention is considered anticipated, lacking novelty, and unpatentable.

Non Obvious Requirement

If an invention is novel, it must be further analyzed in order to determine whether it non obvious in view of the prior art. Claimed subject matter is considered unpatentable if the invention would be obvious to one a person of ordinary skill in the art (the relevant technology) to combine known information to arrive at the claimed subject matter. A person of ordinary skill in the art ("POSITA") varies depending on the particular area of technology. For example, in the area of medical devices, the level of ordinary skill in the may be a technician with experience in manufacturing medical devices. The public documents and disclosures relevant to the invention are interpreted in view of the level of skill of the POSITA. If the invention would be obvious in the eyes of POSITA in view of the prior art, then the invention is not patentable.

Patentability Analysis requires the Skill of an Experienced Patent Attorney

An effective patent search and analysis requires a thorough understanding of patent law and the patent system. Patent law is highly complex and includes many sources of authority: federal patent statutes, federal code regulations, administrative rules of the United States Patent and Trademark Office, and federal court opinions on patent law issues. Thus, patentability analyses should be conducted by experienced patent attorneys who understand these sources of patent law and who can provide accurate and circumspect patentability analysis. Contact our San Luis Obispo office for a free consultation with one of our patent attorneys regarding a patent search prior to pursuing a patent filing.

Filing Patent Applications

Should the patentability analysis indicate that the invention is likely patentable, you should promptly proceed with filing a patent application to establish a filing date at the earliest possible time. Patent applications are complex documents that require technical and formal elements that both capture the invention in a detailed description and meet the legal requirements. To be eligible for grant and issuance by the patent office, the patent application must include formal components: a detailed description of the invention that provides support for the claimed invention, supportive illustrations that clarify the invention's features, at least one claim identifying the specific elements or which you seek exclusive rights, and an abstract of the invention. If the application lacks any of these required components, the application will be rejected by the patent office and will not result in the patent protection sought by the applicant. Patent forms providing relevant patent information and identifying the patent applicant must also be provided.

Knowledge and Skill in Patent Law and Technologies is needed to Draft and Prosecute Patent Applications

It is not enough to simply include the required features of a patent application. The written description, drawings, and claims of the filed must be prepared in a complete and effective manner. Patent law is complex and requires the observance of many subtle rules and requirements in order to successfully pursue a granted patent. Failure to consider and account for these rules in preparing the elements of the patent application can result in complications during patent examination and in the enforcement of a patent granted therefrom. To sidestep pitfalls during the examination phase or when enforcing a patent, skilled patent drafting is crucial. Engaging a seasoned patent attorney is essential to successfully prosecute your patent application before the United States Patent and Trademark Office.

Provisional vs. Non-provisional Patent Applications

An initial application can be either a provisional or a non-provisional. The United States Patent and Trademark Office allows for the filing of “provisional” patent applications that allow the applicant to submit a document that is not examined by the patent office, but establishes a record that the invention described in the provisional application is your creation. The timing of this application is critically important, as the date upon which the initial application is received is stamped onto the application by the USPTO. This date – the priority date – is the date by which the USPTO will judge the novelty of your invention and against which it will judge all claims in view of the prior art. The patent applicant has 12 months to file a full, “nonprovisional” application that will be examined by the patent office. If the applicant fails to file the non-provisional within the 12-month period, the original filing date is lost. It is therefore critically important that you file your patent application as early as possible.

Patent Examination Process

A properly drafted patent application will be assigned by the patent office to a patent examiner in the relevant art unit, which handles the kind of technology claimed in the patent application. The patent examiner will conduct their own search for related earlier patents, patent filings, and other relevant documents. The patent examiner will then compare the invention claimed in the patent application to the search results to determine whether patent protection is warranted under US patent law. If the examiner determines that the invention is novel and non obvious and meets all of the formal requirements, the examiner will issue a notice of allowance. If not, the examiner will issue a patent office action that explains that the patent application is rejected and the reasons why it is rejected.

Overcoming Patent Office Actions

Most patent applications are rejected at least once during the examination process. It is the job of the patent attorney to analyze and propose strategies for overcoming the rejections in the patent office action in order to get a patent granted. Patent office actions must be thoroughly scrutinized to determined whether the positions taken by the patent examiner are valid and what legal arguments may be used to overcome the rejections. The patent attorney must also determine whether the patent claims should be amended in order to overcome the rejections and be valid and enforceable if a patent is granted. It is possible to convince the patent examiner that the patent claims are patentable when they are ultimately invalid. In such a case, you may get a patent that provides little legal protection. Thus, analyzing and responding to patent office actions is an intricate process that requires deep experience and knowledge in patent law and patent prosecution. In the event of further patent office actions (e.g., a final rejection), the patent attorney may continue the patent examination or pursue a patent appeal to the Patent Trial and Appeal Board (PTAB).

Appealing Patent Rejections to the PTAB

An appeal removes patent applications from the examination process and puts the issues raised during examination before the PTAB. The patent attorney and applicant and the patent examiner become opposing parties arguing their positions on the appealed issues to the patent judges of the PTAB. Patent appeals require the skill and knowledge of a patent attorney that has meaningful experience in the patent examination process and patent disputes, such as PTAB proceedings, patent litigation, patent arbitration, or other dispute experience. The patent attorneys at Sierra IP Law have the experience and skill to argue patent cases and effectively prosecute patent applications through the entire patent process.

Our Patent Attorneys have the Expertise to Prosecute Patent Applications and Procure Patent Protection

Our team of veteran patent attorneys brings a wealth of experience in filing applications and prosecuting them before the U.S. Patent and Trademark Office. We collaborate closely with you to determine the most effective strategy for pursuing and securing patent rights for your innovation that best benefit to your enterprise. We have successfully secured patents granted for hundreds of clients. So if you seek patent protection for your invention or innovation, contact our San Luis Obispo office to set up a free consultation with one of our skilled patent attorneys.

Obtaining Patents in Other Countries

If you are interested international patent coverage, our law firm has a global network of foreign patent attorney associates through which we can pursue foreign patent rights on behalf of our clients. We routinely file patent applications under the Patent Cooperation Treaty (international patent applications) and also handle national phase submissions for our clientele, while coordinating with our foreign patent attorney associates.

Pursuing an International Application

Each foreign country has its own national patent office. Nearly every foreign country engages in the patent cooperation treaty (PCT) system, which allows the patent owner to file a single PCT application to begin the process of pursuing foreign patent protection. A PCT is an international application that preserves the applicant's right to pursue patent protection in essentially any foreign country. A national phase application must be filed within 30 months of the filing date of the original application filing (e.g., the Unites States patent application) with the national patent office of each country in which the applicant wants to pursue patent rights. Foreign patent rights are an important consideration that should be discussed with a knowledgeable patent attorney at the earliest possible time. Foreign patent offices have different national laws with respect to whether a public disclosure of the invention prevents the grant of a patent. Contact our San Luis Obispo office to discuss US and foreign patent applications with an experienced patent attorney.

Managing Patent Portfolios

Our clients trust our patent attorneys to manage their foreign and US patents and pending patent applications. A patent owner may have multiple inventions and applications filed in multiple countries. Each patent family has its own priority date and timeline, and patent applications in other countries each have different examination processes and deadlines. We have the expertise, tools, and relationships to manage complex patent portfolios and effectively prosecute patent applications across international borders. Our patent attorneys keep our clients informed of patent renewals and changes in national laws that may affect their patent rights.

Licensing Patent Rights and Patent Transactions

The patent attorneys at Sierra IP Law have decades of experience in preparing patent license agreements for our clients. We protect our clients' interests and intellectual property rights while maximizing the financial value of the agreement in the context of a licensing agreement. Our patent attorneys also can prepare patent transfer agreements and other patent transaction contracts. We perform patent due diligence for purposes of patent licenses and transfers. These patent transactions are premised on the validity and value of the patent. However, you cannot take it for granted that a patent is valid, is enforceable, and has sufficient patent scope to provide the value that you are seeking through the patent license.

Patent Validity Analysis

Even though a patent is granted by the Patent Office, it may not be valid or have valuable scope. A patent validity analysis should be performed before a patent is licensed or purchased. If the patent is invalid, it has limited value. An invalid patent cannot be successfully enforced if there is a patent infringement. Patent validity analysis is similar in concept to patentability searches. However, a patent validity search analyzes finalized claims that have been issued by the United States Patent and Trademark Office. Validity searches are also performed more in depth because of the significant commitment and business investment of a license agreement.

Freedom to Operate under the Licensed Patent

A freedom to operate search is performed in order to determine whether the patented technology can be practiced without infringing a patented invention of a third party. There are many businesses, including many large corporations, that are continuously innovating new technology, filing patents for these technologies, and actively enforcing their patents when they are infringed. If your company is sued for patent infringement, the costs could be devastating for your business. In order to avoid the patent infringement trap, a freedom to operate search and analysis should be performed to find any related patented invention and determine whether the licensed technology would infringe any other patents.

Types of Patents

When you are looking to file a patent you must first determine if your patent applies to your invention. There are three types of patents: utility, design, and plant patents. And each type of patent focuses on different types of protection. Utility patents can be granted for anyone that invents or discovers a new or useful process, a machine, an article of manufacturing, or composition, or any new useful improvement of an existing invention. A utility patent covers the functional aspects of these categories. Examples of technologies that are the subject of utility patents include computer software, medical equipment, tools, chemical compositions, biotechnologies, and improvement. These patents allow the owners to exclude others from making or using or selling these inventions for a 20 year period from the date that the patent is filed.

A design patent on the other hand is used in connection with new and original ornamental designs that are contained with or applied to something that is manufactured. A design patent allows the owner of this patent to exclude others from making or using or selling a patented design for 15 years. 

Plant patents are issued for the discovery or invention of a new and distinct asexually reproduceable plant breed. This can include hybrids, seedlings, mutants and cultivars. 

San Luis Obispo Patent Attorney

If you are an entrepreneur or you own a business in San Luis Obispo or the Central Coast area, the experienced patent attorneys at Sierra IP Law, PC can help you with pursuing patents, enforcing patents, and creating value in patents through patent transactions. Whether you're seeking a utility, plant, or design patent, we can help to protect your intellectual property rights and enhance your business's value through effective patent protection. It is a best practice to be proactive about securing intellectual property rights for the benefit of your business. Our experienced patent attorneys can help you to build and protect a robust intellectual property portfolio to enhance the value competitiveness of your business.

Contact our San Luis Obispo office for a free consultation with one of our skilled patent attorneys. We look forward to speaking with you.