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Inventor Update

Jill Gilbert Welytok is the managing attorney for Absolute Technology Law Group LLC, which is a team of Registered Patent, Trademark and Transactional attorneys.

The Patent Process De-Mystified

Announcement: Inventors' and Entrepreneurs' Symposium Series

Next Meeting: April 11, 2011 at 5:30PM
To be held at:
Marquette University High School
Room 127, Conference Center
3306 W. Michigan Street, Milwaukee

Topic: Finding the Funds for Startup Ventures and Product Launches - BizStarts Milwaukee and Beyond

Speaker: Chelsea Krause of BizStarts Milwaukee's Venture Track program

We will talk about:

-Funding strategies for new businesses and product ventures
-Update on patent, trademark and trade dress issues (announcement for our "Annual Inventor Law School")
-Foreign sourcing issues
-Tips to build patent and trademark portfolios that attract investors

For more information, please visit our website


The patent process is a 220 year old compilation of rules and regulations to ensure that patents are awarded only when someone has developed something truly novel. As you can imagine, this determination requires some subjective analysis, and is not always predictable.   The good news is that all patents go through a similar examination process, and businesses and individuals can plan for the process.

In our experience, a patent takes between 1 to 3 years to go from initial application to issuance depending on the practice group and other factors one can and cannot control.   This is our experience with most patents. One or two have been pending longer, but usually for reasons we can identify if not always control.

                The following are some steps all patent applicants can expect to follow:

1. Searching Patents and Prior Art: In our search process we review published patents and other literature to indicate whether an invention is distinguishable from "prior art" so we can determine whether it is more likely than not that a patent will ultimately issue. Sometimes, because innovation often occurs in small increments, seemingly small changes to existing technology that provide a commercial advantage and serve an unmet need can often result in the eventual issuance of a patent. The patent search, along with your own market analysis will help you decide whether to go forward.

2. Formulating a Filing Strategy: We will decide what type of patent application to file depending on how far along a company is are in developing its technology and marketing strategy. A "provisional" patent application is a less expensive type of application that allows an inventor to use the "patent pending" status but which does not contain all the information required for examination.   A non-provisional application is an application ready to be examined, and will move through the process faster. It is important to note that a provisional application is only valid for one year, after which we will convert the application to a non-provisional. During this year, companies develop their idea, find funding sources, produce sales and determine whether ongoing patent prosecution is justified. In the event you opt to start with a provisional then convert to a non-provisional, the costs of the process should not be much more in the long run. A provisional application simply defers some costs as you explore marketing options.   Note: Sometimes we recommend filing a design patent if the novelty of your invention is something ornamental.

3. Responding to Office Actions: After you file your non-provisional patent application, you can expect an initial response from the patent office in about 9-24 months. There are some exceptions to this time frame, but generally this is our experience. After examining your application in light of all prior art, an Examiner issues a document called a First Office Action. In this document, the Examiner makes written arguments against issuing a patent. More than 95% of patents, in our experience, are initially rejected on the first Office Action. However, almost ALL of them ARE allowed after we respond to that action. Examiners are gatekeepers at the Patent Office, and their job is to ensure that only innovative non-obvious ideas eventually receive patent protection.

You should not be discouraged by Office Actions. Although we sometimes get allowances without an Office Action, this is rare on a utility patent application. It is virtually unheard of for a utility patent to be issued without at least one Office Action being issued by the USPTO. (Design patents are frequently issued without Office Actions).

Second or even subsequent Office Actions are also not uncommon as your attorney and the Patent Office argue back and forth about the merits of your invention.   Most applications are allowed in our office after one or two Office Actions, with more than half being issued after a first Office Action.   The rest are usually allowed by supplementing the application based on some language we agree upon with the Examiner.

Your application, particularly the Claims section, is amended to respond to the concerns of your Examiner.

The goal for any inventor is the eventual allowance of their patent. Once allowed, USPTO fees must be paid and a patent is issued. Although no guarantees can be made at the outset of patent prosecution regarding the eventual allowance of a patent, the odds are very good if you have an attorney familiar with the system.   Costs of obtaining patents vary, but most attorneys can give you a very good idea when you explain your technology to them. We post a general schedule of fee ranges on our website at milwaukeepatents.com.

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