Santa Barbara Patent Attorney

If you or your business has created an innovative product or service, the experienced patent lawyers at Sierra IP Law, PC can help you protect it. The patent rights in a new innovation should be considered immediately. It is critical to protect potential patent rights in an invention early because inaction can result in a loss of patent rights. The skilled patent lawyers at Sierra IP Law can ensure that your rights are protected and that you receive the full benefits of your invention. Our patent attorneys have over 50 years of experience in all areas of patent law. Connect with our Santa Barbara office for a free consultation with one of our patent attorneys to discuss your patent rights.

Patent Services in Santa Barbara Area

Our Santa Barbara office provides comprehensive patent services, including patent application preparation and prosecution, patentability analyses, proceedings before the Patent Trial and Appeal Board at the United States Patent and Trademark Office (USPTO), invalidity analyses, infringement analyses, patent litigation, and patent licensing and transfers. Our patent attorneys also have extensive experience in related practice areas of intellectual property law, including plant variety protection, trademarks, trade secrets, rights of publicity, copyrights, and internet and data ownership law.

Our Technical Expertise

To provide technical expertise in association with our legal services, our personnel includes scientists, engineers, and technical professionals that have knowledge and expertise in many areas of technology, including:

• Electronics and semiconductors
• Computer design and software
• Mechanical technologies such as automotive technology, industrial equipment, and aeronautics
• Chemical compositions and methods, such as agricultural chemicals and industrial chemical processes
• Life sciences and biotechnology
• Medical devices and methods

Patent Attorneys Licensed throughout California and the USPTO

Our patent attorneys handle all types of matters before the United States Patent and Trademark Office and Patent Trial and Appeal Board, including preparing and filing patent applications, prosecuting patent applications, patent appeals, inter partes reviews, and post-grant reviews. Our patent lawyers are also experts in US patent law and the US patent system. The attorneys at Sierra IP Law, PC also licensed to practice in state court in Santa Barbara county and the California Central District federal court, as well as all other California state and federal civil courts.

Patent Searches and Patentability Analyses

A patent search and analysis addresses whether the invention in question is patentable. A patent search should be performed prior to filing a patent application. You want to understand the likelihood that you will be granted a patent for your invention before investing in a patent application. Our patent lawyers and professionals 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". Prior art can prevent you from getting a patent when it is closely related to the invention. We conduct a thorough search of prior art databases and analyze the search results to determine how closely related they are to the invention.

An Invention must be Novel

Under US patent law, an invention must be novel in order to be considered patentable. This is the novelty requirement under 35 USC 102. If a claimed invention is disclosed in any single prior art source (e.g., a single patent document), the invention is considered anticipated and fails to meet the novelty requirement.

Non Obvious Requirement

An invention must also be non obvious in view of the prior art. An invention is considered unpatentable if the invention would be obvious to a person of ordinary skill in the the relevant art or field of technology ("POSITA") to make or practice the invention in view of known information. A POSITA varies depending on the particular technology. For example, in the area of automotive technology, a POSITA may be a technician with experience in manufacturing vehicles. The prior art relevant to the invention are interpreted in view of the level of skill of a POSITA. If it would be obvious to a POSITA to create or practice the invention in view of the prior art, the invention is unpatentable.

Patentability Analyses Require Expertise

To be effective, an intellectual property lawyer with a thorough understanding of patent law must conduct or supervise a patentability search and analysis. US patent law is complex and is a chimaera of many sources of authority: the federal patent act, the code of federal regulations, administrative rules created by the USPTO, and court opinions that decide patent law issues. To properly interpret and analyze the results of a patent search, an experienced patent attorney steeped in US patent law is needed to provide accurate analysis. Contact our Santa Barbara office for a free consultation with a skilled patent attorney regarding a patent search before filing a patent application.

Patent Applications

If an invention is unique and not closely related to the prior art, a patent application should be filed at the earliest possible time to establish a filing date. Patent applications require technical and formal detail that capture the invention and meet several legal requirements. To be eligible for a patent, the patent application must include several formal sections and elements: a detailed description that provides sufficient detail to inform the reader of the claimed invention, drawings that clarify the invention's features, at least one written claim identifying the specific elements that define the patentee's rights, and an brief abstract of the invention. If the application lacks any of these components, it will be rejected by the USPTO.

Knowledge in Patent Law and Technologies

Simply including the required components of a patent application is insufficient to achieve a strong patent. The complexity and nuances of the patent laws demand observance in order to successfully pursue a patent. Failure to account for the subtle rules and practices that affect a patent application can cause delays and issues during patent examination and complications in the enforcement of any patent granted from the application. To avoid pitfalls during the examination of an application or in the enforcement of a patent, the patent application must be drafted with skill and expertise. Contact our Santa Barbara office to engage an experienced patent lawyer to assist you with your patent application.

Provisional and Non-provisional Applications

A patent applicant can initially file either a provisional or a non-provisional application. A “provisional” patent application is not examined by the USPTO. Instead, a provisional application establishes that the applicant created the described invention at least as early as the filing date. The date the application is filed is critical, as this is the effective date of invention. This date is referred to as the priority date. The applicant has one year from the priority date to file a full, “nonprovisional” application that is examined by the USPTO. If a non-provisional application is not filed within the 12-month period, the priority date is lost. The priority date is important because the USPTO will compare the disclosed invention to prior art that existed before the priority date when determining the novelty of your invention. Thus, it is critical that (1) you file your patent application as early as possible and (2) that you timely file a non-provisional application if a provisional application is initially filed.

Examination of a Patent Application

Each non-provisional patent application is assigned by the USPTO to an examiner in an appropriate art unit that is knowledgeable in the type of technology disclosed in the patent application. Once examination begins, the patent examiner will perform a search of the relevant prior art and compare the claimed invention to the search results. It is the examiner task to determine that the invention is novel and non obvious and satisfies the formal requirements of US patent law. If the examiner determines that the invention is patentable, they will issue a notice of allowance. If the examiner finds the invention obvious, anticipated, or otherwise unpatentable, they will reject the application and will issue an office action that explains why the application is rejected.

Dealing with Patent Office Actions

Patent applications are typically rejected at least once by the examiner. Patent office actions must be carefully analyzed to determine whether the rejections are valid and the legal arguments that can be utilized to overcome the rejections. A skilled patent attorney can analyze the office action and devise strategies for overcoming the office action. The patent attorney also determines what amendments to the patent claims may aid in overcoming the rejections. Analyzing and responding to an office action is a complex and subtle process. Experience and expertise in patent prosecution is needed to respond effectively. In many circumstances, the examiner may issue multiple office actions. This may be due to the discovery of additional prior art, disagreements between the examiner and the patent attorney, and/or significant changes to the claims. The patent attorney may continue to prosecute the patent application, presenting new arguments and amendments. However, if the examiner cannot be swayed, an appeal to the Patent Trial and Appeal Board (PTAB) may be pursued.

Appealing Patent Rejections

An appeal to the PTAB removes the application from the examiner's control and places it in the jurisdiction of the PTAB. The applicant and the examiner become opposing parties, each arguing their positions on the issues appealed to the patent judges of the PTAB. Patent appeals are administrative proceedings that require meaningful experience in the patent examination and disputes, such as patent litigation, PTAB proceedings, patent arbitration, or other disputes. Our patent attorneys have the knowledge and skill to handle patent cases effectively through the entire patent process.

Expertise to Prosecute Applications and Acquire Patents

The patent attorneys at Sierra IP Law possess a wealth of knowledge and experience in patent prosecution. Our attorneys collaborate closely with our clients to determine the most efficient and effective approach for securing patent rights that best benefit the client and align with their goals. We have secured hundreds of patents for our clients. If you developed an innovation and want to pursue patent protection, contact our Santa Barbara office to schedule a free consultation.

Foreign Patent Protection

Sierra IP Law has a global network of foreign associates through which we can pursue foreign patent rights for our clients. We can pursue international patent rights under the Patent Cooperation Treaty (international patent applications) for our clientele, coordinating with our foreign associates. Nearly all countries participates in the patent cooperation treaty (PCT) system, and thus a single PCT application allows the pursuit of foreign patent rights in all countries that participate in the PCT system. A PCT application preserves the applicant's right to pursue national phase applications in the countries that participate in the PCT system. The national phase applications must be filed within 30 months of the filing date (or priority date) of the original application filing (e.g., a US provisional application) in the national patent office of each country in which patent rights are desired. Contact our Santa Barbara office to discuss your options to protect your invention in the US and foreign countries.

Patent Portfolios

Sierra IP Law manages foreign and US patents and pending patent applications for our clients. Each patent family has a unique priority date and deadlines, and foreign countries have differing examination processes and rules. Our attorneys have the expertise and relationships to curate and manage complex portfolios across international borders. Our professionals keep our clients informed of the progress and status of their patent portfolios.

Licensing Patent Rights and Patent Transactions

Our patent attorneys have may years of experience in preparing patent licenses, patent transfer agreements, and other patent transaction contracts. You can't assume that a patent is valid, enforceable, and sufficiently broad to provide the value that you are seeking through the patent license. We perform patent due diligence for purposes of patent licenses and transfers in order to maximize the financial value of the agreement to the client.

Patent Validity Analysis

A granted patent may be invalid or may have narrow scope. The validity of a patent should always be performed prior to any license or transfer agreement. An invalid patent, has little to no value, as it cannot be successfully enforced against an infringer. A patent validity analysis is similar to a patentability search. It differs in that it analyzes final claims issued by the USPTO. Also, there are typically higher stakes when conducting a validity search due to the significant commitment and business investment of a license agreement, and are usually more in depth.

Freedom to Operate Analyses

A freedom to operate (FTO) analysis is performed to determine whether a technology can be practiced without infringing any enforceable patents. There are many enterprises (e.g., large tech companies) that are developing new technologies, and some aggressively pursue and enforce patents. Being sued for patent infringement is highly expensive, and can be devastating. In order to avoid inadvertent patent infringement, a freedom to operate analysis should be performed in the context of licensing or purchasing the intellectual property rights in a technology.

Santa Barbara Patent Attorney

If you own a business or are an entrepreneur in the Santa Barbara or the Central Coast area, Sierra IP Law, PC can help you with patents, trademarks, trade secrets, and related practice areas. Whether you're seeking a utility, plant, or design patent, we can help to protect your intellectual property rights and enhance the value of your business with effective patent protection. Our experienced patent attorneys have helped many companies and businesses build and protect robust intellectual property portfolios to enhance their value and competitiveness.

Contact our Santa Barbara office for a free consultation. We look forward to speaking with you.

Free Consultation with a experienced Patent Lawyer

Client Review

"Partnering with Mark Miller at Sierra IP Law is one of the smartest choices I could have made in the world of bringing a new invention to market. He is extremely responsive, knowledgeable, and professional. I could never have conceived of the areas he has advised me on and covered in attempting to write a patent on my own. He and his team have not only insured that my Intellectual Property Rights are well protected, but they have advised and recommended additional protections that I could not have thought of otherwise. I highly recommend Sierra IP Law to anyone looking for a strong and trustworthy legal partner." Fraser M.