Patent Search

Filing Strategy: Utility Patents (US, EU, & others)

Intellectual Property FirmsA national patent application generally refers to a patent application that is filed in a single jurisdiction such as the United States, United Kingdom, Japan, or a patent in Israel. A regional patent application covering a select set of countries in the European Union is also available through the European Patent Office (EPO). When speaking about such patent applications, it is assumed that the type of patent being discussed is a utility patent, in USPTO jargon. A utility patent (as referred to by the USPTO) is:


Issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, it generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing, subject to the payment of maintenance fees. Approximately 90% of the patent documents issued by the PTO in recent years have been utility patents, also referred to as ‘patents for invention.’ 


In the patent application process under the Paris Convention, one has 12 months to claim priority in a utility patent application from a previously-filed application (such as a provisional patent application) in one of the contracting states of the Paris Convention. Prior to the approaching expiration deadline, one needs to assess options to move forward with securing IP rights as part of an IP strategy. The drafting of a full patent application is something that only a qualified professional can properly handle. That being said, selecting patent counsel from a host of intellectual property firms, and specifically the patent practitioner who will work with an inventor to draft a patent application, is a process that typically few invest much time in. Unfortunately, the consequences of a hasty or misinformed decision usually become apparent only years after an application is filed, during patent prosecution, which refers to the examination of the merits of an application by a patent office.


Before proceeding, it is important to state what is meant by a “qualified professional.” In the USPTO, the only practitioners who can act as representatives before the patent office are registered patent attorneys and registered patent agents. Such practitioners are qualified professionals. As a side note, the USPTO also allows inventors to act as pro se representatives on their own applications.


However, in many jurisdictions (such as under the European Patent Convention (EPC)), it is compulsory for the applicant to be represented by a qualified lawyer or patent attorney admitted to practice before the European Patent Office (EPO). The applicant cannot represent himself/herself before the patent office. That means, of course, that with regard to international patent families, not only the “original” practitioner (meaning the one who drafted the priority patent application of a patent family) should be carefully chosen, but also the practitioners in the chosen jurisdictions in which subsequent separate national/territorial patent examination procedures will have to be conducted.


The selection of “foreign” jurisdiction practitioners can be either made on behalf of the inventor and original applicant by the primary “local” practitioner, or can be selected by the inventor/applicant, should he/she prefer to do so, by recommending to the primary local practitioner to use such selected foreign practitioners at the discretion of the applicant/inventor in foreign countries – an aspect of a global IP strategy.


Returning to the issue of choosing patent counsel, while many inventors focus on the cost and reputation of intellectual property firms, one should consider several other factors as well. The size and reputation of a patent law firm are only two indicators of its expertise. In addition, one should consider what percentage of a firm’s work deals with patent prosecution versus patent litigation. Many firms have a strong emphasis on either one or the other. In capturing an invention correctly with the broadest legal protection, one will want a seasoned patent prosecution expert who not only knows the ins and outs of good patent drafting, but is also aware of the situations that can occur during prosecution with the Examiner.


A good indicator of this is asking the practitioner how many cases he/she has drafted in which the practitioner also prosecuted the cases to receive a patent allowance. In this way, one can get a sense of the commitment the firm or practitioner had in working with a client from filing to patent grant. Nothing makes an inventor feel less at ease than when a different patent attorney or agent is brought in to take over a case in the middle of prosecution.


FlashPoint IP, a leader among intellectual property firms, factors these wide-ranging aspects into the process of securing patent protection, whether in performing  a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file a patent application, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP.


FPIP specializes in obtaining a patent in Israel, US, and EU jurisdictions – filing patent applications on behalf of its clients directly before the USPTO, EPO, WIPO, and ILPO, and worldwide via our network of professional associates. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.