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Patent Drafting

Patent Drafting (or “Patent Preparation”)

What can the individual inventor or startup enterprise expect?

From the moment the inventor(s) contact me, opposing goals are set in motion.  On the one hand, it behooves the inventor(s) to file a patent application in the United States Patent Office as soon as feasible.  On the other hand, we want to maximize the quality of the initial filing.  After some initial inquiry (e.g., field of the invention, who is/are the inventor(s)), I ask the inventor(s) to describe the invention, preferably or largely in writing and illustrations.  Based on this description, I will often quote a price for a preliminary novelty search.  I will also often quote a price for writing a patent application and a time by which a draft can be completed, although whether we ultimately decide to proceed with the drafting will likely depend on the results of the search.  If we decide to proceed, it will typically begin now by my performing the search.  At this point, I offer the client a retainer agreement which details what I will do in performing the search, the Patent Office fees, and what I will need from the client.  From this same disclosure provided by the inventor(s), I perform the preliminary novelty search to find references (i.e., patents, patent applications, and other publications) similar to the invention as described.  These found references provide a basis for deciding our prospects on obtaining a commercially significant patent.  The search and references also further reveal the technical jargon of the invention, and variations on that jargon.  This terminology, along with what can be gauged from the found references in terms of the proximity of their subject matter to that of the invention, are all useful in drafting the patent application if proceeding with the patent application is the decided upon course of action.  If we decide to go ahead with a patent application, I offer the client a second retainer agreement.  A goal of the patent drafting stage is to file, or eventually file, what is known as a non-provisional (or “regular”) patent application.  The non-provisional patent application is the patent application that has the potential for becoming a patent – any provisional patent application becomes significant only if a later-filed non-provisional patent application claims priority back to the provisional patent application.  This non-provisional patent application (hereinafter “patent application”) is filed with claims that, more typically than not, undergo revision post-filing.  That revision is within the confines of what the patent application already discloses — no new subject matter may be added to the patent application post-filing.  If the claims, and the patent application overall, are found by the Patent Office to be acceptable, the patent application is allowed.  Shortly afterward, a patent is typically granted, after the Patent Office receives payment of an issue fee.