Practice Areas

Pre-Filing and Post-Issuance Patent Services

At the Law Office of Michael Blaine Brooks, P.C., we offer a variety of pre-filing patent services for clients. Generally, there are two prevailing questions that we are frequently asked regarding our pre-filing patent services.

What Is the Patentability of My Invention?

A granted utility patent gives the owner right to exclude others from making, selling or using your invention (as claimed) or exercising the steps of your process (as claimed). The question of patentability can be refined as question whether the invention claimed is novel and if so, is the invention claimed as not obvious in light of the state of the art. In determining the patentability of your invention, our firm typically engages in a two-stage process: In the first stage, we ascertain whether the claimed elements (e.g., for a device) or the claimed steps (e.g., for a process) are present in a single piece of literature presently published. The database for this search typically includes at least the US patent database and the US pre-grant published patent application database. The "library of references" can be expanded in collaboration with the client and as supported by the client's budget. Often, this first stage is sufficient for the client in that the claims desired for the invention may not be viable given the existing prior art or the client may find that if the claims do indeed appear novel in light of the search results thus far, they are willing to file the application because the US Patent Office will be conducting their own independent prior art search. Occasionally, for those clients practicing in the field of the search, the novelty search may return unexpired patents having claims alarmingly close to that which the client is practicing. (Should such a circumstance arise, we recommend consideration and budgeting for an infringement/noninfringement analysis.) Returning to patentability, in the second stage, it should be mentioned that as of April 30, 2007, the test applied for obviousness changed dramatically due to a US Supreme Court ruling. The previous test, used for more than two decades, had a patent claim only proved obvious if the prior at, the problem's nature, or the knowledge of a person having ordinary skill in the art revealed some motivation or suggestion to combine the prior art teachings (e.g., patents and published literature pertinent to the field). The US Supreme Court found this to be too narrow and presently, the claimed improvement must be more than the predictable use of prior-art elements according to their established functions. To determine whether there was an apparent reason to combine the known elements in the way the patent claims, it will often be necessary to look to the interrelated teachings of multiple patents (and other published material); to the effect of demands known in the design community (e.g., known design drivers) or present in the marketplace (e.g., market forces); and to the background knowledge possessed by a person having ordinary skill in the art. Even with these changes, new and useful functions from prior art elements and/or market success attributable to the claimed invention evidencing a long-felt need solved by the claimed invention both remain at indicators of non-obviousness (i.e., patentability)  After either the novelty assessment stage or the patentability (non-obviousness) stage, we may be asked to write an opinion for the client. It is important to note that the quality of the opinion is largely a function of the scope of the search (which serves as the "library" evidencing the state-of-the-art") and is directly correlated with the client's budget.

The right to exclude others granted with the claimed invention of the patent is not itself a right to practice the invention if doing so infringes the claims of one or more or presently If there is a positive determination regarding the patentability of your patent request, then we often are asked about "rights clearing".

Do I Have the Patent Rights to Make and Use my Invention Once it Issues as a Patent?

It is worth repeating that the patent right to exclude is independent of outright the practice of the invention. To be able state an unfettered freedom to practice the invention with unlikely infringement of one or more patents, the landscape of unexpired patent claims that may bound or overlap with the invention must be address. This, sometimes referred to as "determining the scope of freedom to operate" or "rights clearing" (particular where the function includes obtaining permission from third parties to continue) and this determination of scope is based on an analysis of whether, or the extent of which, you have the right to begin manufacturing or using your invention (whether or not you have an issued patent). The first stage is to describe precisely the device or process the client is making or using or wished to make or use. The next stage is a search for unexpired patents claimed similar elements or steps. Should one or more such unexpired patents be found, then the next stage involves comparing the pertinent claims with the device or process, element-by-element or step-by-step for literal infringement. If literal infringement is not found (and often if literal infringement might be found), then the next stage is allowing terms within the claims their broadest possible meaning including equivalents of the elements or steps - almost to the point of eliminating the limiting effect of the term- so long as the construction is consistent with the prosecution history of the patent in question. If, after the equivalence analysis, the client's product or process in not or would not infringe, then the client has cleared that particular patent and the infringement analysis stages are repeated for the remaining patents in question. Savvy investors and prudent crafters of business plans understandably review novelty and patentability opinions together with freedom-to-operate opinions when planning where to allocate their resources. 

At this point, our clients can make a determination regarding patent prosecution.

If you have pre-patent issues, or require pre-patent services, contact Dr. Michael Brooks, patent attorney and California registered Professional Electric Engineer, and schedule a confidential consultation. Discover how our patent law firm earned its international reputation for excellence. Get the Brooks advantage.

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.