Patent Analysis and Counseling

Patent Analysis and Counseling

Navigating the patent landscape to reach your goals.


Analyzing Patents and Strategic Counseling

Navigating the patent landscape to reach your goals, whether as part of designing and developing your products and services, entering into a licensing, joint venture, acquisition or investment transaction, or preparing to enforce your rights or defend your business, Haner & Kuo endeavors to provide its clients with the information and analysis to make informed decisions to advance and protect their competitive position.


What can be patented?

Any New & Useful:

  • Process
  • Machine
  • Manufacture
  • Composition of Matter

But not:

  • Laws of Nature
    • e.g., E=mc2, relationship of drug metabolite to its therapeutic effect
  • Natural Phenomena
    • e.g., naturally occurring DNA sequence
  • Abstract Ideas
    • e.g., method of hedging risk, method and computer system for intermediated settlement

Protecting your patent rights

Now: First Inventor to File is entitled to receive a patent. Before 2013, inventor not required to be the first to file to receive a patent.

Filing a provisional application addresses the follow two points:

  1. Document Your Invention
    • If you can prove you first invented the claimed invention, you may be able to prevent another person from taking your invention and getting a patent before you do
    • Write down what you do as you do it
  2. File Your Patent Application Before You:
    • Publicly describe your invention
    • Use your invention in public
    • Sell, offer to sell, or advertise your invention
    • Otherwise make your invention available to the public

Provisional Patent Application

BENEFITS:

  • Less work to prepare than non-provisional patent application
    • No formal requirements
    • Must describe invention and how to make and use it
  • Lower fees
    • $260/130/65 for large-entity/small-entity/micro-entity applicant
    • Compared to $1,600/800/400 total for non-provisional application
  • Secures “effective filing date” for invention
  • May use “Patent Pending” on products

IMPORTANT CAVEATS:

  • Does not provide legally enforceable patent rights
  • MUST be followed up with non-provisional (full-blown) patent application within one-year, OR risk losing your patent rights