Patent Guide

Taking you through the steps of getting a patent from beginning to end.

Patent Guide: Introduction

In this guide you will learn how a concept is taken from idea to patent, and everything between.

We’re using real documents and real example: U.S. Patent 8,128,089 for an automated bingo game based on RFID-tagged balls.

In simple English, this is a patent for bingo balls with a transmitter floating around inside.

Imagine each of the bingo balls above has transmitters floating around inside and you want to patent this concept.

The following pages will give you an example of a typical process, though we should probably remind you that results vary. Feel free to jump to any part of the process, using the navigation menu to your left.

Let’s move on to your first meeting with the attorney.

Patent Guide: First Meeting with Us

Conceiving of Your Technology to be Patented

What’s your idea? What do you want to patent? If you have a concept, you can get a patent – even if you haven’t made it yet. It might be better if you have for obvious reasons, but as you can reasonably make it work by hiring the right people to develop it, we’re ready to get started. An inventor, according to the U.S. Patent Office, is someone who “conceives” of an invention. Actual use of a patent is not required.

What to Bring to Your First Meeting

At the first meeting, you need to communicate your idea to us in a way that we can best understand. We can just have a conversation, which is fine, but depending on what type of concept you have, it might help to bring any of a prototype, sketches, written description, or a combination of such things. We’ll also add to this list – working model, flow charts, business plans, white papers, and wireframe mockups. Again, the goal is simply to best communicate the concept or patentable idea which is in your head, to our heads.

In this patent guide, we’ll take you through our RFID bingo ball patent – think of it as EZ-Pass meets the game of bingo. The inventor, Mr. Erickson, brought us some actual bingo balls with transmitters inside along with a computer software program to read the correct number and print it on a lottery board on the screen of his laptop. You can bet that when we saw it and got to play with it, we had a good understanding of the concept.

How Our Firm Works

At our first meeting, we will get from you what you want to do – what do you want to protect? We will, in turn, respond with what is protectable. We’ll discuss whether your concept falls within the scope of the type of things which are patentable, and if not, what we can do to get it there. We will discuss, if applicable, whether to go for a design patent or utility patent and so on.

We’ll gladly talk to you over the phone and answer your general questions free of charge. Once we get to anything specific, such as making the above legal recommendations, we do ask to be compensated for our time. Further, lawyers take on liability so we’ll need to create an attorney/client relationship, so we charge a nominal fee for a formal consultation which we’ll credit towards your patent application.

Most meetings today are by video though we are alos available for in-person consultations as well, of course.

Let’s move on to research.

Patent Guide: Research and Written Opinion on Patentability

Once we have the consultation, then we’re ready to conduct a “Novelty Search” or “Patentability Search.” The purpose of the search is mainly to determine the following: Is your technology patentable, and if so, how broad? While one isn’t required to conduct a Novelty Search, it is a good idea for reasons listed in this article on Novelty Searches. Searches all tell you what the state of the art is, and may help you further develop your own concept.

Excerpts from an actual Novelty Search, of the type conducted by this law firm, are below.

First we start with a cover sheet with your name and address, and all the usual “thank you”s, then we get into the heart of the matter. Page two typically looks something like this:

THE TECHNOLOGY SEARCHED
A plurality of balls, usable for a ball selector, is also described herein. Each ball of the plurality of balls comprises a generally spherical encasement with a hollow interior, human-readable indicia on said spherical encasement, and a radio frequency identification tag freely movable in its housing within the hollow interior and adapted to transmit data corresponding to the human-readable indicia. The radio frequency identification tag, in embodiments of the disclosed technology, is freely movable within said hollow interior and drops to the gravitational bottom of the hollow interior when the ball is stationary.
Then on page three, we’ll tell you how we searched. Here’s an example:
SEARCH METHOD
The Search was primarily conducted in U.S. Patent Class 379 directed towards telephone communications. More specifically, subclass 201 directed towards special services was searched, including 201.02 (service profile), 201.07 (called party), 201.08 (calling party), and 201.11 (anonymous party). In addition, Boolean searches of issued U.S. Patents were also used, as well as searches of patents cited by those references uncovered.

It’s very important to find the class and subclass of the invention, to ensure we’re finding the best references. We also do some keyword searches (“Boolean searches”) and look at references cited by, and citing from patents we uncover. By searching in these three ways, one usually can weed out problems with the U.S. Patent Office classification scheme which is mostly of great help, but not perfect; and, of course, avoid problems where we might use one keyword, while another applicant used very different words to describe the same concept. No search will be perfect, but this will give us a fairly good idea of what to expect during examination of your patent application, and just as important, how to draft your claims to get around the references (“prior art”) that we have uncovered.

We will then provide you with a list of patents found, and send you a PDF copy of each one, along with an analysis, such as follows:

DISCUSSION AND ANALYSIS
As a prelude to the discussion, it is important to remind you what is patentable in the United States. In order to obtain a patent, the invention must be both novel and unobvious. An invention is novel if it has not been publicly disclosed in a single piece of prior art, such as in a patent, printed publication, or product sold on the market. An invention is unobvious if, at the time the invention is made, it is at least not near-immediately apparent to one having ordinary skill in the art.
Moving on to the results of the Search, the most relevant issued U.S. Patents appear to be:
U.S. Patent 7,020,256 assigned to Telcordia Technologies, Inc, teaching a method of obtaining dynamic telephone numbers and mapping such numbers to another telephone number. However, this reference does not disclose receiving an order request by a second party from a first party, or providing at least a part of an order request and the assigned phone number to a third party.
Once we’ve discussed some of the references uncovered, and what is different about your “technology searched” compared to these references, we’re ready for our conclusion:
CONCLUSION
The Search covers issued U.S. patents only, and it has been noted that this invention has not been publicly disclosed. While I have exerted every effort to locate issued U.S. patents and other documents as close in scope to your invention as possible, during examination of a patent application for this invention the U.S. or foreign patent offices may locate further art materially relevant to the examination of your application. Given the often subjective nature of the Patent Office, there is no guarantee that a patent will ultimately be issued.
Having said the above, I anticipate a broad scope of patentability for your invention. Based on the uncovered results, and as is typical in the field of software patents and business methods, the U.S. Patent Office will likely issue an obviousness-type rejection for this patent application which we will have to overcome during prosecution of this application. Your invention appears to contain features which are both new and unobvious compared to the prior art.
After reviewing the enclosed patents and the Search Report, please contact me to discuss the results of this Search and the filing of a utility application at the U.S. Patent Office.

In short, typically the U.S. Patent Office issues at least one rejection (in 80%+ of all cases filed), but we’ll let you know if we think you have a shot at overcoming the rejection.

Now let’s move on to IV. The Parts of your Patent Application.

Let’s move on to the next section.

Here are the key parts of a patent application with brief examples:

Title – A brief, specific name for the invention
Example: “RFID-Enabled Bingo Ball System for Automated Game Management”

Field of the Disclosure – Identifies the technical area
Example: “This disclosure relates to gaming equipment, and more particularly to bingo ball systems with integrated identification and tracking capabilities.”

Background – Discusses existing technology and limitations thereof (without a) disparaging others, b) giving away what our invention is)
Example: “Traditional bingo games rely on manual reading of called balls, which can lead to errors, disputes, and slow gameplay. Existing electronic bingo systems lack physical ball components, reducing player engagement and trust in game authenticity.”

Summary – Concise overview of the invention written in plain english
Example: “A bingo ball system includes balls with embedded RFID transmitters that automatically communicate ball identification when drawn. An RFID reader detects each ball, instantly displays the number on monitors, and records the draw sequence, combining traditional physical gameplay with automated accuracy and verification.”

Brief Description of Drawings – Numbered list of figures
Example: “FIG. 1 is a cross-sectional view of a bingo ball with embedded RFID transmitter. FIG. 2 shows the complete system including ball cage, RFID reader, and display monitor.”

Detailed Description of the Embodiments – Comprehensive explanation of the invention
Example: “Referring to FIG. 1, bingo ball 100 comprises outer shell 102 and RFID transmitter 104 embedded within cavity 106. Transmitter 104 includes antenna coil 108 and microchip 110 programmed with unique ball identifier. Shell 102 is formed of two hemispheres joined at seam 112, with transmitter 104 positioned at center for balanced weight distribution…”

Claims – A run-on sentence which is has what a person must do to infringe upon your patent.
Example: “1. A bingo ball comprising: a spherical outer shell; an RFID transmitter embedded within said shell, said transmitter configured to wirelessly transmit a unique identifier corresponding to a bingo number marked on said shell.”

Abstract – Single paragraph summary Example, 150 words or less, to help others find your patent:
Example: “Bingo balls include embedded RFID transmitters that automatically identify each drawn ball to an RFID reader system. The system instantly displays called numbers, maintains draw sequence records, and enables game verification while preserving traditional physical ball selection, thereby combining gameplay authenticity with automated accuracy and dispute prevention.”

Patent Guide: Information Disclosure Statement

Under U.S. patent law, inventors and their representatives have a duty to disclose to the Patent Office all information they know that is “material” to the patentability of their invention. This means any relevant prior references (e.g. publications, other patents, or facts that might affect whether their invention is truly new and non-obvious) must be submitted to the patent office.

Obtaining a patent is not meant to be adversarial – you bring to the table what you know, the examiner searches and provides what he/she knows – and we work together to determine what can be patented. Hiding information can lead to the patent being canceled or worse.

The disclosure requirement is enforced through a formal process where applicants typically submit an “Information Disclosure Statement” (IDS) listing relevant prior art references. Applicants must disclose information they’re aware of that a reasonable examiner would consider important in deciding whether to grant the patent. This doesn’t mean applicants must search for content beyond what they already know, though if you know about it, you must disclose.

Patent Guide: Restriction Requirement

Restriction requirements are where you are claiming two different inventions in the same application. For example, if your claim 1 is for “method of creating ball lightning” and your claim 2 is for “eating with a spork,” no reasonable examiner at the U.S. Patent Office is going to examine both those claims. They’ll give you a “restriction requirement,” often for simply claiming a method and device in the same applicaton.

We then rebut this with arguments to try to get all the claims examined – many restriction requirements issued are subpar though keeping the examiner happy is often wiser than going over their head by filing a petition to have their work reviewed.

Typically, we have to file the application again as a “continuation” to get the other claims examined if the examiner will not rejoin the claims.

Patent Guide: Office Actions (examination of your application)

An Office Action is the first substantive examination of the claims of your patent application. Most Office Actions have rejections – which are supposed to point out with particularity the reasons for rejection.

Then you negotiate with the examiner.

Skipping to the rejection portion, here’s a small excerpt of the rejection we received for our RFID Bingo Ball patent:

At this point, the way our law firm generally works, we’ll break the response up into three stages:

1) In depth review of all references cited – we will provide you with a break down with four parts:

a) each phrase of each claim on a separate page,

b) copy/paste examiner’s argument,

c) copy/paste each citation from the examiner (they sometimes fudge or fail to find a reason to reject a particular part of your claim),

d) . . . and once we have a complete and detailed view, we provide our analysis with why we disagree with the Examiner, agree, or propose a claim amendment.

2) Examiner Interview – various websites have culled the public records from the U.S. Patent Office and provided statistics for each examiner. If you get an examiner with a 10% allowance rate (some have 0%) you know what you’re up against. Others have 99% allowance rates (really). When the stats show that an examiner interview will increase the chances of success, we do so. Today, these interviews are usually by video and creates a personal connection with the examiner and we hear each other out.

3) Written Response – This is where we take everything from above in “1” and “2” and put it down in legal and scientific arguments on paper. Here’s an example, excerpted from our response to the above – e.g. “Claim 1 has requires an RFID ball. The Office Action cites patent x,xxx,xxx, paragraph [23] which states, ‘RFID chew toy’ which is not a ball. Therefore, claim 1 is allowable.”

Patent Guide: Pre-Appeal Briefs and Appeals

If your patent application is twice rejected, it is marked “final” (with exceptions).

Here are four choices for you:

1) Give up.

2) Pay more money to the patent office for two more chances.

3) Narrow your claims and ask for them to be re-examined again.

4) Appeal.

We’re going to discuss a little about option 3, here. We save these for when the examiner is coo-coo and we are sure we are going to win. One pays a small additional fee to the U.S. Patent Office and typically starts with a “Pre-Appeal” brief. This is a five page document, maximum, where one lays out why the Examiner is wrong. A committee of four people reviews the pre-appeal brief: the Examiner, the Examiner’s supervisor, a specialist in the technology area, and a fourth, usually from the quality control department.

To give an example of when to appeal, in one case handled by this firm, the Examiner was citing a reference which we invented after that of our client. We had proven that to the Examiner, he agreed, and continued to reject.

We called him and got nowhere.

We called his supervisor and got nowhere.

So . . . we appealed.

Here’s an excerpt from our appeal, for your pleasure:

The Final Office Action states, the evidence and affidavits submitted by the applicant show that the invention was made prior to August 31, 2009, since the rejection is made under 102(e), the prior art has a right of priority that reaches back to the provisional application no. 61/190586, filed on August 29, 2008. . . . This issue has been addressed in In re Giacomini, appeal no. 2009-1400 (decided July 7, 2010), the decision stating that the provisional application must provide written description support for the claimed invention. Here, the Office Action gives no analysis whatsoever . . . in a manner sufficient to satisfy 35 U.S.C. § 112, first paragraph and/or reaching back to the filing date of the provisional. Rather, the Final Office Action simply includes a naked assertion that the provisional application is prior art, with no further explanation or citation to the actual disclosure of the provisional application. The Office Action almost entirely refers to Figure 2 when there isn’t even a corresponding figure (or any figures) in the provisional. Applicant notes that the Patent Office has the burden to analyze the priority document and show support for the rejection, and this has not been done. For this reason alone, the rejection under 102 should be reversed.

Patent Guide: Allowance of your Application

We did it! Take a look:

Now we pay another fee . . . and you get a patent!

For utility patent applications, they are enforceable for 20 years from the date of earliest filing date in the patent chain (we’ll leave it at that for now). This length of patent can also extend past the 20 years if there is too much delay in examination on the part of the patent office.

For design patent applications, they last 15 years from the date of issuance.

For utlity patents – further fees must be paid to keep the patents in force. The idea behind this – other than money for the government – is that the patent holder will pay to keep exclusive rights and if it isn’t worth the cost, then let it go out to the public to use the technology.

Patent Guide: Foreign Filing

When you file a patent application in the United States, you have one year from your U.S. filing date to file in other countries while still keeping your original filing date. This one-year period is provided under the Paris Convention and the Patent Cooperation Treaty (PCT).

1. Paris Convention Route

Under the Paris Convention, you can file directly in each foreign country where you want protection within 12 months of your U.S. filing date.
Each country’s patent office will examine your application separately, based on its own laws and procedures.
This option may make sense if you know exactly which countries you want to file in and prefer to proceed directly.

2. Patent Cooperation Treaty (PCT) Route

Alternatively, you can file a PCT international application within that same 12-month period.
The PCT does not itself grant an international patent, but it gives you a single filing that reserves your right to pursue patents in over 150 member countries.
The PCT process includes:
- An international search and written opinion assessing potential patentability.
- An optional preliminary examination to further clarify patentability.
- Later, you “enter the national phase” in individual countries (usually 30 or 31 months from your original U.S. filing date), where each office examines your application

3. Patent Prosecution Highway (PPH)

The Patent Prosecution Highway is a cooperation program among many patent offices.
If one participating office (e.g., the USPTO) finds at least one claim to be allowable, you can request accelerated examination of the corresponding application in another participating country.
This can significantly speed up the examination process and reduce costs, since the second office may rely on the earlier office’s work.