Practice Areas

Patent Prosecution

California Patent Prosecution Attorney

At the Law Office of Michael Blaine Brooks, P.C., our patent lawyers assist California and domestic clients seeking patent prosecution in the United States, California and domestic clients seeking foreign patent prosecution, and international clients seeking patent prosecution in the United States. We have extensive experience with U.S. Patent Office.

Our California patent attorneys not only have the education (e.g., California registered Professional Electrical Engineer, PhD in Engineering) but also the practical experience, which gives you the Brooks advantage.

We offer in-depth personal service for individuals and companies seeking our assistance with their patent prosecutions, including the following services:

• Patent Application Drafting Assistance
  • Patent description and disclosure - including assistance making these as broad as possible in light of the state of the patent law and the state of the art to secure the greatest patent rights for you
• Patent Filing
• Responding to Patent Office Actions
• Communicating with Patent Examiners
• Assisting Clients with Disclosure Issues
  • Making sure full disclosure is made to support differentiating your patent application claims from existing patented technology and literature published prior to your invention date
  • Problem/Solution analysis; Determining the new functionality 
• Assist Clients with Patent Licensing Issues
• Prepare and Submit Briefs (via Co-Counsel) to the International Trade Commission

Patentability: A prospective utility patent applicant should appreciate that it will be the claims of the patent application that will receive the most attention by the Patent Examiner. The name of the game is the claims. The remainder of the application (termed the specification) must disclose the invention in sufficient detail to enable one of ordinary skill in the field to which the invention pertains to make and use the invention without undue trial and error and this description must include the best way of making and using the invention known to the applicant. In relation to the claims, the specification must provide the written basis for the claims being made. Depending on the subject matter of the invention, the claims may be fashioned as steps of a process or elements of a device or ingredients of composition of matter. The elements or steps together with qualifying adjective and other functional limitations are generally termed the limitation of a claim. A Patent Examiner will read the elements or steps of the claim as broadly as is deemed reasonable and conduct a search of at least the patent databases (and may include any other relevant database) to find a single reference having all of the steps or elements (i.e., the limitations), as read broadly, of the claim. The literature is limited by date to patents and patent applications of others filed  and non-patent literature published, before the patent application filing date. If such a reference is identified, the Patent Examiner will reject the claim for lacking novelty for be anticipated by the reference. If no such reference has all of the limitations of the claim, but such limitations are present across two or more reference, the Patent Examiner will determine whether there are objective reasons for combining such references and if such reasons can be articulated, will combine the references and reject the claim for being obvious to one of ordinary skill in the art at the time the application was filed. Where a new function results from the combination of elements or steps or a particular element or step is itself novel or where the combination yields an unexpected result, the claim may be found to be non-obvious. Any claims that are not found to be anticipated (i.e., novel) and are not found to be obvious (i.e., non-obvious) may be allowed as patentable claims.

Design Patents: A design patent applicant should appreciate that it is the ornamental aspect of the object/article that will receive the most attention by the Patent Examiner. The name of the game is the drawings. Based on the drawings depicting the ornamental features of the design, the Patent Examiner will conduct a search of publications preceding the design patent filing date, and patent applications filed before the design patent filing date, in an attempt to find illustrations substantially identical to the depictions of the application. If such illustrations are found, the Patent Examiner will reject the single claim to the drawings as lacking novelty. If no such illustration is found, but the combinations of two illustrations from analogous fields produces the depiction and the combination would not destroy the utility of the combined reference objects/articles, then the Patent Examiner will reject the single claim of the drawings as obvious. If the ornamental design is both novel and non-obvious, may be allowed by the Patent Examiner.

International Applications: In addition to filing a domestic (i.e., US) utility patent application, the applicant may file an application in foreign jurisdictions and/or what is termed an international patent application. Foreign filings may be made (under the Paris Convention or an equivalent treaty) by agents licensed to file in their particular jurisdictions after the US applicant has received a foreign filing license from the USPTO (which may be granted after the PTO's review of the related prior-filed domestic application or separately obtained via the PTO's Office of License and Review). Generally, foreign filings wishing to claim priority of a US application must be filed in the foreign jurisdictions within one-year of the first domestic filing. An international application may be filed via the USPTO which, for most jurisdictions,  effectively extends the priority claim to thirty months from the first domestic filing. Foreign filings may then claim priority to the international application and may enter those jurisdictions in what is termed the national stage of the international application. National and regional jurisdictions that honor international applications have signed on to at least a portion of the Patent Cooperation Treaty (PCT). When considering a PCT (international) application, the applicant should be mindful of: (a) the "absolute novelty" rules of most foreign jurisdiction which require no public disclosure of the invention prior to filing the first domestic application; (b) the additional filing fees required and strict timelines that must be followed; and (c) that if successive US provisional patent applications (PPAs) having common subject matter are filed, that consideration be given to expressly abandoning each before filing the next so as to give the applicant of a non-publicly disclosed invention the option to file a PCT after the anniversary of the first (and after the anniversary of any subsequent) PPA.  

We have the technical background and knowledge to provide you with the value-added service and advice you demand. Our patent attorneys are well-versed in performing a troubleshooting analysis, reviewing technical specifications, and handling a variety of utility patent prosecutions. Contact our California patent prosecution attorney to schedule a confidential consultation or call Toll Free: 1-866-LAW-PAT1 (529-7281). Discover how we earned our international reputation for excellence.

US REGISTERED PATENT ATTORNEYS

Patent attorney Dr. Michael Brooks assists clients internationally (Canada, Europe & Asia), domestically (United States, from California to Washington, D.C.), and locally (California, including the cities of: Simi Valley, Los Angeles, Pasadena, Thousand Oaks, Woodland Hills, San Fernando Valley, Irvine, Newport Beach and the counties of Los Angeles County, Ventura County, Orange County, San Diego County, as well as throughout the Tech Forest of the Pacific Northwest, including Vancouver and Camas, Washington, and Portland, Oregon) with a variety of patent issues, including: utility patent prosecution, pre-patent services, patent infringement issues, and patent litigation support. If you need a patent lawyer, you need us.