The Patent Application Process

SHERMAN IP’s philosophy is that the hallmark of a true “expert” is someone who can easily explain to the uninitiated what is going on and what to expect in a process. The patent application process is complex and can be made much easier, less confusing, and more economical if everyone has an overview of what to expect.

The SHERMAN IP Invention Review and the Invention Disclosure Form :

When new or existing clients come to us with inventions, products or ideas that they’d like to patent, we start with a client consultation or interview to discuss the development.

For this consultation, clients are asked to prepare a SHERMAN IP Invention Disclosure Form that provides a description of the invention and variously may include drawings, back-up documentation, the client’s research, or any other materials that help to understand the development and how it is differentiated from what came before.

View and download the SHERMAN IP Invention Disclosure Form here

You should know that the law provides a continuing obligation on you to disclose to the patent Examiner any known Prior Art or information that you know about which affects the validity and scope of the claims in your patent. SHERMAN IP attorneys and staff are experienced at helping you to provide this information to the United States Patent Office and in taking this information into account in processing your patent application. You should attach any known Prior Art (e.g., existing concepts, publications, patents, products, etc.) or the results of any searches and discuss any relevant information in the SHERMAN IP Invention Disclosure Form and immediately advise us if any new information comes up.

A SHERMAN IP attorney reviews the information in the SHERMAN IP Invention Disclosure Form, will ask questions about the disclosure and documents provided in the SHERMAN IP Invention Disclosure Form and invite the inventor to provide additional information where appropriate.

One of the points of inquiry here will be about any disclosures or sales involving the development. These publication events may serve to limit or even prevent a patent from being obtained. If they are planned for the future, these publication events will dictate the timing for the patent application filing in order to preserve your rights to patent your development.

A Patent Search:

Although not a requirement of the patent application process, SHERMAN IP strongly recommends that a novelty or patentability search be conducted to determine the general scope of the prior art which exists prior to proceeding with drafting and filing a patent application. A patentability search is a general overview of the available prior art conducted in an economic fashion to get a sense of whether your idea is novel. It will not uncover every piece of prior art available nor is it a guarantee of patentability. It is just a survey, but it is worthwhile to get an understanding of what you can expect the scope of your patent claims will look like.

Most inventors will have conducted an internet and/or other search to determine their own expectation that their idea will be patentable and SHERMAN IP highly encourages you to do so for your invention as well. Regardless of the results of your search, SHERMAN IP has additional resources at its disposal that you may not. SHERMAN IP resources include the patent office records that the Patent Examiners will be searching when they review your patent application, as well as many patent Examiners themselves. SHERMAN IP applies specialized search strategies to uncover the most relevant prior art.

Again, while the patentability search is an additional cost at the beginning of the process, it can help create a general understanding of the scope of protection that may be available and help the client make a determination if it is worthwhile to proceed. While the patentability search is not fool proof, it is a recommended and worthwhile exercise. From the SHERMAN IP Invention Disclosure Form, and our general understanding of your invention, we can develop a budget for a patentability search to economically meet your needs.