(1) Invention Disclosure

Generally speaking, the patent application process begins with the inventors describing to us what they have invented. Within our first discussion for the invented idea, as more information as possible should be disclosed such as short summary, diagram, flowchart and basic claims, which could help explain the invention.

Then we usually need further information to fully understand the invention and clarify any questions we may have.

(2) Prior Art Searching and Patentability Opinions

Once we have discussed the invention details with client, we begin searching for prior art including issued patents and patent applications in international patent databases. We will also search other materials like white paper, academic journals, etc. After we generate a list of relevant prior art, we prepare a patentability opinion, which compares the prior arts we found with the invention and determines any differences and patentability.

This is an optional stage in that sometimes clients are confident that their inventions are noval and have not been disclosed by others.

(3) Patent Drafting

At this point we will prepare a patent application for filing in one or more countries or regions. The discussions and explanations of the invention between us and clients would be the basis for drafting the patent application.

We will send client the first draft, which includes title, summary, references, diagrams, specification and claims based on the scope of the invention. Usually several back and forth drafts and discussion would be necessary until satisfaction for both side is reached.

(4) Patent Filing

After we have drafted patent files for the invention, a formal patent application will be filed to the destination patent office where we decide before. If the client wish to protect invention in multiple countries, there are two ways to do it: Paris Convention Treaty and Patent Cooperation Treaty (PCT). There are some benefits for both ways such as filing cost deferral and earlier priority date claiming. We have experience for both ways and would like to present details and discuss with client to help them choose the one which better suits them.

(5) Patent Prosecution

Patent prosecution means negotiation with patent office for the grant of a patent. After we have filed a patent application, the patent office will examine the application and determine whether it is patentable through their own searching against the application. It is common to have at least one office action to respond and some arguments and clarification back and forth before getting a granted patent.

After a patent is issued, besides issue fee most countries also require maintenance fee. For some situations in some jurisdictions there could be post-grant prosecution, which involves issues such as post-grant amendment and opposition.