Patent Services Overview
We counsel clients in all aspects of patent matters, from product development
through the full life cycle of a product. We participate in ideation sessions,
conduct product clearance studies, assist in developing design-around solutions,
develop global patent filing strategies, prepare and prosecute patent applications,
coordinate foreign filings, assert and defend against patent infringement claims,
and manage patent portfolios.
Experience
We have over 30 years of experience preparing and prosecuting patent applications
in mechanical and electro-mechanical arts, as well as software and business methods.
We have experience working with a wide range of technologies, including:
- Automotive technologies, including interior component parts, frames, axles, drive shafts, transmissions, braking systems, and occupant safety systems
- Building materials, including insulation, roofing systems, composite solutions, and asphalt products
- Manufacturing processes, machines, and tools
- Metal-cutting products, including drills, drill inserts, and saws
- Medical products, including wheelchairs, walking aids, beds, respiratory products, and daily living aids
- Recreational sporting goods
- Other mechanical, electro-mechanical, software, and business method technologies
Product Development
We work with clients during product development to help identify inventions and
develop strategies for protecting them. Early involvement often helps clients
recognize potentially patentable subject matter before products are finalized.
During product development we assist clients by:
- Participating in ideation and brainstorming sessions
- Working with inventors, engineering directors, product developers, and manufacturers
- Recording inventions and preparing invention disclosures
- Assisting in scoring inventions based on feasibility, offensive and defensive value, and patent eligibility
- Developing strategies for protecting inventions
Product Clearance
We conduct and/or order product clearance research to help clients assess patent risk
before bringing products to market. We also assist clients in developing design-around
solutions where appropriate.
Our product clearance services include:
- Product clearance research
- Non-infringement studies
- Invalidity studies
- Clearance opinions
- Non-infringement opinions
- Invalidity opinions
- Design-around analysis
- Patent watch services to monitor competitor patents
Product clearance should also consider trade dress, which under the Lanham Act
may provide protection for the design of a product if the design is a non-functional
aspect of the product. Such protection may be available if the design acquires
secondary meaning, meaning that the public has come to associate the design of
the product with its source. To establish trade dress infringement, the owner
of the design must show a likelihood of confusion.
Patentability Studies
We conduct and/or order novelty searches and patentability studies to help clients
evaluate whether patent protection may be available in the United States and abroad.
Patentability studies may include:
- A careful review of patents in the most relevant subclasses
- A targeted keyword search strategy
- Interviews with one or more examiners to confirm the field of search, where appropriate
- Identification of patentable subject matter
- Identification of statutory bars that may prohibit patent protection in the United States and abroad
We provide patentability opinions, which often include one or more exemplary independent
claims to aid clients in understanding the scope of protection that may be available in
view of the search results and the current state of the art.
Utility Patent Protection
Generally speaking, utility patents protect the structural and functional aspects of
inventions. We counsel clients about the various types of utility patent applications
that may be filed and prepare, file, and prosecute utility patent applications for a
broad range of technologies.
Our utility patent services include:
- Advising clients on utility patent filing strategies
- Preparing utility patent applications
- Filing patent applications with the USPTO
- Prosecuting applications through examination
- Responding to rejections with amendments and arguments
- Conducting examiner interviews where useful to resolve rejections
- Keeping clients informed about application status and value throughout prosecution
Our patent applications are drafted to pursue the broadest scope of protection to which
our clients are entitled. During prosecution, we assist clients in assessing the value
of allowed subject matter, since an application that can easily be designed around may
have limited value. It is therefore important to understand the value of allowed claims
before paying an issue fee.
Design Patent Protection
Design patent applications protect the ornamental appearance, rather than the functional
aspects, of inventions. Although design patents are narrower in scope than utility patents,
they provide a valuable form of protection apart from utility patent rights.
Our design patent services include:
- Evaluating the point of novelty in a design
- Excluding unnecessary features that could unduly limit claim scope
- Preparing and filing design patent applications
- Working with experienced patent draftsmen to prepare USPTO-acceptable drawings
Poor drawings may result in fatal rejections and a loss of patent rights. We therefore
work with patent draftsmen who have a strong track record of providing drawings acceptable
to the USPTO. A well-prepared design application may often be completed efficiently and,
if allowed, may mature into a patent in about eight months.
Post Issuance
We are experienced in post-issuance proceedings, including reissue and reexamination matters.
Post-issuance services may include:
- Reissue applications filed within two years of issue to broaden unduly narrowed claims
- Reissue applications filed after two years to correct defects, without broadening claim scope
- Reexamination applications to challenge the validity of issued patents
We assist clients in evaluating whether these procedures may help protect or challenge
patent rights in appropriate circumstances.
Foreign Filings
Patent protection is territorial. U.S. patent protection does not extend beyond U.S. borders.
If protection outside the United States is desired, applicants must seek foreign patent protection.
We assist clients in developing foreign filing strategies by considering:
- Where products are sold
- Where products are manufactured
- Priority deadlines based on earlier filed applications
- Coordination with foreign associates for filings abroad
We maintain records of U.S. filings and apprise clients of foreign filing deadlines well in
advance in order to maintain priority in earlier filed applications. We also maintain a network
of foreign associates through which we coordinate foreign patent filings and stand ready to file
foreign-origin applications in the United States.
International PCT Applications
We counsel clients in making international filing decisions and prepare and file international
applications under the Patent Cooperation Treaty (PCT).
Our international PCT services include:
- Preparing and filing international PCT applications
- Docketing applications for national stage entry
- Keeping clients informed of national stage filing deadlines
- Filing and prosecuting national stage applications
- Coordinating national stage filings and prosecution abroad
Portfolio Management
We participate in strategic development and management meetings with directors, officers,
and general counsel to discuss patent portfolios and develop strategies for building and
maintaining those portfolios over time.
Our portfolio management services include:
- Identifying offensive patents associated with products
- Identifying defensive patents
- Developing strategies for building and maintaining patent portfolios
- Counseling clients about maintaining patents throughout product life cycles
- Assisting clients in budgeting for their patent portfolio
Hitaffer, PLLC works with inventors, entrepreneurs, and businesses to protect valuable
innovations through strategic patent protection, patent prosecution, and long-term
portfolio management.