Coming up with inventions to solve the world’s problems is hard enough. At Bold Patents, we want to make the process of getting a patent as easy as possible for our hard-working inventors.
It’s true, the legal profession gets a bad rap for making things overly complicated, nuanced, and dense…and while legal issues can be complex, it doesn’t mean a client should ever be in the dark or unclear about what the process is, or what’s next for them.
While we’ve always strived to be clear with our process at Bold patents, we know we can do better. So, I’ve come up with a colorful process flowchart called the Go Big, Go Bold Process. It shows the major steps (there are 9 to be exact) to getting a patent while working with our firm of attorneys and professionals.
- Advisor Screening Session
- Attorney Consultation
- Client Engagement
- Kickoff Meeting
- Patentability Search Opinion
- Provisional Patent Application
- Nonprovisional Patent Application
- Prosecution of Patent Application
- Enforcement of Patent Rights
Step 0: Taking Action and Trusting Us
I know, I didn’t put step 0 on the list above…but I don’t want to gloss over the fact that it’s not just like magic, you are all of a sudden on Step 1 and are on the phone speaking with a Bold Patents advisor about your invention. You’ve got to actually pick up the phone, or fill out the web form before anything will happen.
This step is perhaps the hardest one for many inventors. It can be hard to actually realize you need help, are willing to let go of your ego and find a professional to help.
My hope is that by reading this blog article, it will give you enough information and courage necessary to finally take action and schedule your free screening session!
Step 1: Advisor Screening Session
The goal for this step is to make sure we are a good fit for one another.
While I try not to use the word in our marketing, this is really an interview! Haha, I know, don’t get stressed out. We won’t have you dress up in a suit and tie, throw hard-ball questions at you and make you squirm. But, we will be listening, watching, and assessing your readiness.
So, what makes you a good fit for us?
- The Right Area of Law
- We need to make sure that you are seeking help for the right area of law that we practice. No sense moving forward with our attorney consultation (Step 2) if our attorneys are not experts in that area.
- That said, even though our name is “Bold Patents”, we do have services in other areas of Intellectual Property, including trademark, copyright, and trade secret law. So, your Bold Advisor will be listening to you carefully to make sure you are seeking help with patents or another area of IP that we can help advise on in the consultation.
- Note that even if our Bold Consulting Attorney can give you direction on IP, it may be the case that our firm is not best suited. After hearing the details of your case, it is sometimes the case that we refer you to one of our trusted professionals in another related area of law in parallel to the work we will do for you, or in series.
- A Plan of Action
- We don’t work with just any inventor that wants to put a piece of paper on the wall and admire their achievement. We strive to make a difference in the world, and want to help those inventors that in turn, want to help us live better lives.
- Whether you have a plan to launch your own company/brand and dominate the market, or if you have plans to license or sell your invention…that’s BOLD, and we want to help you accomplish your dreams.
- If all you’re looking for is a capstone for your research project, an academic ego-boost, or resume builder – sorry, we’re not a good fit for you
- Ready, Willing, and Able
- Our Bold Advisors will see whether you are truly ready to move forward. Have you thought about your invention concept enough? Do you have the time in your life right now to dedicate to this project? And of course, do you have the resources?
- Even if you have all of what you need to be ready, do you have any reservations? Will you hold back on us? Or are you willing to commit?
What do you think…are you ready? Do you think you’d be a good fit for us?
After a 20-30 minute Advisors Screening session, if our Bold Advisor thinks you’re a good fit, they will recommend that you schedule to speak with one of our USPTO Registered Patent Attorneys.
Step 2: Attorney Consultation
The goal for this step is to assess patent eligibility and make a recommendation for next steps.
Would you show up to an exam without studying? Would you go shopping for food without a list? Go camping on a whim, without packing supplies? Would you go on a date without first looking your date up first and learning about them?
Ok, I get some of these are a little out there – but the point is, you need to prepare for a legal consultation with your Bold Patent Attorney too…here’s how:
- Fill out the Intake Form – this will provide our staff the basics of your contact information and help your consulting attorney spot issues with respect to eligibility, inventorship, and ownership
- Send supporting documents in advance: sketches, drawings, 2D/3D images, pictures, photos, flowcharts, written descriptions, previous filings, hyperlinks to similar inventions, business plan, etc.
- SEND AS MUCH INFORMATION AS YOU CAN to your consulting attorney in advance of the meeting, so they can review it prior to the meeting, to have a more efficient and valuable 30 minutes.
- Test your computer/phone and software for microphone and audio before the meeting: there’s nothing worse than trying to connect audio/video at the time of the meeting, where you will lose valuable time with your consulting attorney
- Be in a quiet, focused environment, where you will be sitting down able to fully listen, ask questions, and take notes: do not waste your money/time by being distracted when you are in a consultation because you are driving, cooking, walking around, or have noisy environments where both parties have to repeat themselves
- This is where it all starts. You will explain to your consulting attorney what it is you’ve invented. Hopefully, you’ve sent in supporting documentation ahead of time, and this part will be straightforward
- Your consulting attorney will be able to ask clarifying questions to make sure they fully understand the invention
- There is a lot that goes into this step, but initially, the consulting attorney will confirm there are no statutory bar issues with respect to any prior disclosures/publications or sales of the invention
- The consulting attorney will go over the types of patents that are available, and will confirm whether the disclosed invention fits into one or more of them
- Your Bold consulting attorney will then discuss the patent process and how our firm helps inventors through it
- They will go into some detail about the patentability search opinion, provisional patent application, non-provisional patent application, international filing, and post-filing as well
Recommended Next Steps
- These are unique to each client, and the consulting patent attorney will determine which step in the patent process is best for the client based on their business goals and objectives
- The consulting attorney will answer any questions related to the recommendation and discuss our firm’s approach
Client Selection Process
- As I mentioned above, we are careful who we work with, and want to make sure that we are a good fit for each other.
- We need 1-2 days to review each potential client to assess whether we are able to take the case on. We review many factors including whether there may pose a conflict of interest with current clients, technical subject matter, and general interest/affiliation with the client’s invention.
- In some cases, after this review period, we may decide not to offer an engagement, but instead offer to refer the client to another esteemed patent law firm.
At the end of the consultation, the attorney will schedule a time for you to follow up with your Bold Advisor after our 1-2 days of review, to let you know our decision.
Step 3: Client Engagement
The goal of this step is to let you know our decision on bringing you on as a client.
If after the 1-2 day period, and our team still believes you are a good fit, and we have no conflicts of interest, you will receive a Client Service Agreement (CSA) from Bold Patents! Congratulations!
You will review the CSA with your Bold Advisor, and after answering all of your questions, you will e-sign, provide payment, and schedule your kickoff meeting with your Patent Attorney.
Step 4: Kickoff Meeting
The goal of this step is to introduce you to your Patent Attorney and go over the plan of action.
Just like the initial consultation, you will want to thoroughly prepare for the meeting by sending any additional documents, sketches, pictures, and questions in advance of the meeting.
You will need to complete an Invention Disclosure Document (IDD) before the meeting can be scheduled. This IDD will help you describe your invention very thoroughly, and it will help your Patent Attorney get started on the work much faster.
After you get introduced, the bulk of the Kickoff is going to be the Patent Attorney asking more detailed questions about your invention, making sure they know your invention in and out.
Your Patent Attorney will cover our Bold Communications Policy, and set expectations for how communications will work best for each of you. Typically, e-mail will be the communication of choice, but if there are any other modes of communication, it should be laid out in the kickoff meeting.
Lastly, any followup meetings and deadlines will be set and a game plan will be created.
Step 5: Patentability Search Opinion
The goal of this step is to provide a legal opinion on whether you should file an application.
There is a lot to learn in this phase that goes well beyond the scope of this blog post. Therefore, I direct you to learn more about the patent search process on our other blog post.
In that article, I cover a six step process:
- Understanding what a patent search is and what it is not
- Invention Disclosure
- Identify 3-5 Key Features
- Begin Searching Broadly
- Classification Searching
- Publication Searching
The last step is for your Patent Attorney to analyze the results found in the search, and provide an opinion on novelty, non-obviousness, and utility to determine whether you should file a patent application.
If they do recommend filing, they will typically be able to recommend which type: design, provisional, or non-provisional application.
Step 6: Provisional Patent Application (PPA)
The goal of this step is to secure the priority date, and be Patent Pending before the USPTO.
This step focuses on drafting an enabled specification (written words and drawings) to fully explain how to make and use your invention.
A PPA is not required, and many inventors skip the PPA and opt to file the Nonprovisional Patent Application (see Step 7 below). There are many reasons for filing a PPA, including of course the time buffer it provides as well as decreased effort/cost up front. Your Bold patent attorney can help you decide which option is best for you.
One of the most important aspects of this step is to describe your invention as broadly as possible and think of as many variations, versions, or embodiments of your invention as imaginable, and describe them so that when it comes time to write the nonprovisional, the palette to paint (write) the claims is vast.
Don’t worry, this burden is not only on your shoulders, your Bold Patent Attorney will be there with you the whole way, making sure they document and write all of the details you have for your invention.
To get into the nuts and bolts of provisional application drafting, I must refer you to this article on how to write a provisional patent application, which covers everything you need to know.
There are formal documents to sign, internal reviews within the firm, and USPTO fees that need to be paid.
The application is then submitted to the USPTO and the filing date is locked in, which is very important, so that any inventor that files after you with the same/similar invention will lose to you in a priority battle.
As soon as the PPA is filed, your Patent attorney will be able to recommend you speak with a variety of professionals to help you prepare to bring your product to market or instead to prepare to license/sell your invention (even while it’s pending). Just ask your patent attorney if you need an introduction to a business attorney, prototyper, manufacturer, marketing person, etc. We have worked hard over the years to develop a robust rolodex of vetted professionals.
Step 7: Non-Provisional Patent Application (NPA)
The goal of this step is to formally file the complete patent application spec, claim and drawings.
There are many formalities that are required in the NPA that are not required in the PPA step (See Step 6 above), these details are found in the complete guide on NPAs i wrote about earlier this year.
That guide has 16 steps! And it sounds like a lot, but after you open the article, you’d be surprised to find that 13 of those steps are accomplished by completing the PPA!
So, if you’ve done the PPA first, doing the NPA next is not so bad! I cover in-depth the 3 major steps that an NPA focuses on that differentiate it from the PPA:
Each of these areas must be formalized, drafted, and meet certain requirements of the MPEP and USPTO rules.
Just like the PPA, there will be ample time for your input and review of the drafted spec, claims, and drawings. There will be an internal quality review, paralegal support to collect, get signatures on and file all USPTO required documents.
Typically at this step, your patent attorney will advise you about international patent protection under either the PCT (for utility patents) or Hague (for design patents) processes and provide you costs/options. Also, they will usually recommend expediting the prosecution by applying for track one or for a petition to make it special to get through the long examination phase.
Once filed, you get an official filing receipt confirming all documents were received and then, you are officially in the “prosecution phase”!
Step 8: Prosecution of Patent Application
The goal of this step is to overcome any rejections by the USPTO to get the patent granted.
There is a LOT that can happen during prosecution, and for that reason I drafted a separate article all about patent prosecution and what you need to know. There are 12 major steps in this process, as outlined in the article:
- Pre-Filing Considerations
- Filing a Patent Application
- Special Requests at Time of Filing
- Formalities Review
- Filing Receipt
- Assignment of Class/Subclass
- Technology Center Dockets Case to Examiner
- Publishes Patent Application
- Examiner Conducts Substantive Examination
- Examiner Notifies Applicant via Office Action
- Inventor/Attorney Replies with Argument/Amendments
- Examiner Considers Allowance of Patent Application
The end step is Notice of Allowance (NOA) whereby an examiner says, “OK, I agree, you deserve a patent!” and this is a HUGE moment.
You will then consult with your patent attorney to discuss how many continuations, divisionals, or continuations-in-part (child patents) before you pay the issue fee. These child patents are VERY important ways you can greatly expand/increase the value of your invention by going after additional claim scope on top of the parent patent application which will soon be granted.
You are well on your way to having a well-developed patent portfolio to enforce!
Step 9: Enforcement of Patent Rights
The goal of this step is to provide opinions and support for enforcing or monetizing your patent.
After grant, a patent may be used to assert infringement against someone else, it can be licensed in whole or in part, and outright sold.
Your Bold Patent Team will help to maintain your patent rights by making periodic payments on your behalf to keep the patent rights enforceable.
We will assist you in any effort to confirm the validity of your patent rights as well as provide opinions on infringement to support federal or PTAB patent court cases.
Legal Note: This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.