Do you have a patent that you need moved along quickly? If so, the United States Patent Office (USPTO) Track One prioritized examination will allow you to get a final disposition within twelve months. This program gives your application special status and fewer requirements than the current accelerated examination program and does not require a pre-examination search.  

The number of prioritized examination requests accepted in a fiscal year is 12,000 and the USPTO posts statistics which includes the number of granted prioritized examinations and they post a message on EFS-Web if and when the number of granted requests is close to the limit. Once the limit is reached, the USPTO will turn off the ability to file a request for prioritized examination.  

The prioritized examination is available for a fee at the time of filing your utility application.  It is not available for provisional applications and is only available to users through EFS-Web and if the user is a registered filer. The USPTO strongly recommends to transmit electronic filings early in the day to allow time for alternative filings that might need to be done. This examination is useful because it provides you with greater control over your application and makes the examination process more efficient. You can also file Prioritized Examination for an existing application in which a Request for Continued Examination has been filed.

It is also strongly recommended that applicants use the USPTO’s certification and request form to request this prioritized examination but it is not required. Failure to use this form could result in the USPTO not recognizing this request or delays in processing the request.  

If the request for the prioritized examination is dismissed, only the Track One examination fee will be refunded upon the dismissal.

This examination program grants special status to the application until one of the following occurs: there is a petition of time to extend the time period for filing a reply filed; an amendment is filed to contain more than four independent claims, more than thirty total claims or a multiple dependent claim; applicant files a Request for Continued Examination (you can file a Prioritized Examination if it is filed prior to the mailing of the first Office action after filing the Request for Continued Examination; applicant files a notice of appeal; applicant files a request for suspension of action; a notice of allowance is received; or a final office action is received or the application is abandoned.

Please always use an attorney to help you through the patent process but you can find more information about this using this link:  https://www.uspto.gov/patent/initiatives/usptos-prioritized-patent-examination-program.

The process of preparing and obtaining a patent has several stages.

The first stage of the patent is to prepare and draft your application. There are different requirements concerning the written description, drawings and claims.  If an attorney is involved, it is always important to have effective communication between the inventor and the attorney.  The inventor should be sure that he/she discloses all of the relevant details of the invention and the attorney should be able to understand the invention.

The second stage is filing your application. The filing requirements vary depending on what type of patent application you are filing.  An application that does meet the filing requirements is awarded a filing date and application number, which are provided on the Filing Receipt that is issued by the United States Patent Office. Once there is a filing date secured, the invention is “patent pending.”

The third stage is prosecuting and reviewing your patent application. Once the application is filed, the application is assigned to a patent examiner.  He/she is responsible for reviewing the application, searches for prior art and makes any objections or rejections in an office action.  This process can be lengthy and can take several years.  This process can also be expensive depending on the number of responses required to get the patent application ready for allowance.

The fourth stage is allowance. Once the patent is allowed, the United States Patent Office sends a Notice of Allowability to the applicant but may include requirements before the patent issues.

The fifth stage is issuance.  Once the issue fee is paid, the patent office assigns a number and issues the patent.

The last stage is maintenance of the patent.  Once a utility patent is issued, there are maintenance fees required to maintain the patent in force. Design patents do not require a maintenance fee.

Don’t Let Your Idea Become Public Domain!

The US patent law requires filing a patent application for inventions within a set time of various events occurring. These events trigger deadlines called “bar dates.” In the United States, the law allows one year from the date of first public disclosure, public use, publication, sale or offer for sale of an invention, in which to file at least a provisional patent application. Failure to do so prohibits (or forever bars, hence the term “bar date”) the filing of a patent application for that invention. In other words, if an inventor does any one of these things on December 1, 2010, then the inventor must file at least a provisional patent application by December 1, 2011, or the invention has essentially been donated to the public domain.

Most foreign countries have an even stricter standard – the invention cannot have disclosed at all prior to filing a patent application.

STOP READING right now if you have done anything which might be considered to have triggered a bar date, and talk to a patent attorney right away to discuss your particular situation.

What Is A Prior Art Search?

Business owners may want to consider a prior art search to find out what is out there that might be the same or similar to their invention. The prior art search can give business owners a better idea of the state of the art related to their invention.
Business owners are not required to conduct a prior art search before filing a patent application (or at any time, for that matter). But in some cases, the prior art search turns up references that are the same as, or so similar to their invention. If this is the case, and the business owner decides not file a patent application, then they’ve just saved thousands of dollars!
Even if the prior art search indicates that one or more feature of the invention might be patentable, it is still a good idea to have an understanding of other inventions that are out there already. These might be the competition and business owners can see how to make their invention even better.
Oftentimes, seeing what else is out there will prompt business owners to think of additional features or enhancements for the invention, that can help better distinguish the invention over competitors. This can not only be helpful in preparing the patent application, but also for marketing the invention.
Of course, there is no guarantee that the prior art search will uncover all relevant (or even the most relevant) references. This is simply because there is so much information available, that it would be impossible to find and evaluate every reference that is related to the invention.

Is my invention protected?

Inventors call Colorado based patent attorney Mark Trenner all the time and ask “is my invention protected?” The first question I ask is “what have you done to protect your invention?” Often, the inventor answers, as expected, that they have done nothing to protect their invention. At least, they have not taken any legal steps to protect their invention. And if an inventor has not taken any legal steps to protect their invention, they really haven’t done anything at all to protect their invention.
There are two basic ways to protect an invention. An inventor can keep their invention secret. This is typically known as trade secret protection. Trade secret protect is inexpensive, in fact, nearly free. All that is required is that the invention be maintained in secret. Of course, I say “nearly free” because there may be some expense associated with a safe to keep the invention locked up, stamps which can be purchased at the local business supply store to mark everything as confidential if the inventor is going to show their invention to someone under a non-disclosure agreement (NDA) or confidentiality agreement, and the cost to have an attorney prepare a solid NDA to use.
The “free” or “nearly free” aspect may seem very appealing to some inventors. But unless the invention can be maintained in secret forever, this isn’t likely a good option for protecting the invention. That is because as soon as an invention is made available to the public, the invention can no longer be protected by trade secret law.
So for things like a favorite recipe (think about the recipe for your favorite soda), trade secret protection may be a viable option. But for most inventions that can be unassembled and reverse engineered, trade secret law does not offer any protection. Keeping these types of inventions locked up in your safe provides no benefit to society (or to the inventor financially).
Instead, the inventor should consider patent protection. An inventor can only claim patent protection for an invention which has been filed as a patent application in the US Patent Office. So back to the original question “is my invention protected,” the answer depends on whether the inventor has received an issued patent from the Patent Office. If not, then the inventor should waste no time contacting a patent attorney to discuss filing a patent application with the Patent Office.

How much does it cost to patent my invention?

This is always one of the first questions inventors ask when they come into my patent law firm. The answer would be the same if you walked onto a car lot and asked the dealer what is it going to cost to buy a car. It depends.
While Trenner Law Firm quotes most patent services up-front and as flat fees for individual inventors and small businesses, there are too many options to simply quote a flat fee for “getting a patent.”
For example, I almost always recommend my clients order a background search or “prior art search” to find out what has already been done, before investing their hard earned savings pursuing a patent application. If the prior art search is favorable, then the client can select between filing a provisional patent application and a regular utility patent application. While there are advantages to either approach, the cost can be significantly different.
But even after a patent application has been filed, there are usually downstream costs. These downstream costs can be significant if the Examiner at the Patent Office rejects the invention as being anticipated (already been done) or an obvious variant over what has already been done. It can take several attempts to convince an Examiner to allow a patent application to issue as a patent. Sometimes the Examiner is unconvinced, and the inventor may need to file an Appeal. So there really is no way of knowing in advance what path the patent application will take, and as such, there is no fair way to answer in advance “what it will cost to get a patent.”

I need help developing and marketing my invention.

By Colorado Patent Attorney Mark Trenner

Inventors often need help in two areas: (1) legal protection for their inventions, and (2) product development and marketing their product. Unfortunately, these typically cannot be handled by the same person (or even the same business).
Sure, there are invention submission companies that claim to do everything under one roof, from filing a patent application to developing your invention as a product and taking the product to market. But some invention submissions companies have garnered a bad reputation for doing little of either protecting the invention or getting the product to market.
The first step should always be speaking with a patent attorney. Most patent attorneys work on a flat fee or hourly basis, and only charge for the services they perform. Most patent attorneys do not take a stake in the outcome of a product. As such, the patent attorney is focused on what patent attorneys should focus on – helping inventors obtain legal protection for their inventions.
Once the legal protections are in place, typically by filing a patent application for the invention, then the inventor can freely talk to product developers and marketing experts to help develop and bring the product to market.

Colorado Patent Attorney Mark Trenner on KHOW AM 630

Mark Trenner is on KHOW again this week:

Tuesday, October 30th from 10:00 to 12:00

On AM 630 in Denver, Colorado.

Myth – my invention will make me rich!

Excited inventors call Trenner Law Firm, a Denver-area patent law office established by patent attorney Mark Trenner in 2004, claiming that their invention will make them rich! The inventor believes there is nothing else on the market today that even comes close to their idea, and as soon as they get a patent application filed, their invention is going to make them millions of dollars.

While I wish this were true of every new invention, most of the time this is not the case. There are various reasons that an invention won’t make you rich. For example, the idea may not be as unique as the inventor believes. Or consumers may have no need or no desire for the product. Too often, the inventor simply never follows through with their idea.

There are a lot of factors that go into making a product a success in the marketplace. Most successful products are the result of a lot of time and money invested to make the product a hit in the marketplace.

But for any invention, regardless if it is the next “Million Dollar Idea” or the next “Thousand Dollar Idea,” the first steps should almost always be to develop the invention beyond a mere idea, and take the appropriate steps to protect the invention so that it remains competitive if it is indeed the “Next Big Thing.”

Working with a registered patent attorney is the best way to take the proper legal steps to protect an invention.

My idea is the next big thing!

Many excited new inventors that call the Denver patent law office of patent attorney Mark Trenner says “My idea is the next big thing!” The inventor believes their idea is going to take the market by storm, making them and everyone in their path rich beyond their dreams. Their invention is the next “million dollar idea!”

While I wish this were true of everyone who called my office, and indeed, true for inventors everywhere, many times this is not the case. For various reasons, many times ideas go nowhere, either because the idea isn’t that significant, the inventor just doesn’t bother to pursue the idea to help make it a big hit in the marketplace, or worse, the inventor doesn’t take the proper steps to develop and protect their invention.

These two steps cannot be emphasized enough: (1) develop the invention beyond a mere idea so that it can be embodied as a product you can take to the marketplace, and (2) take steps to protect the invention so that it remains competitive and doesn’t end up in the public domain.
Working with a registered patent attorney is the best way to take the proper legal steps to protect an invention. It will cost a relatively significant amount of money, but this is an investment in the product that shouldn’t be overlooked. Skimp on legal protection now, and pay the price later.