• Drafting Patent Applications
  • Why Prior Art Searching is Important
  • Patent Agent or Patent Attorney?
  • Supplemental Patent Support
Drafting Patent Applications

Not only are there different types of patent applications, but there are different procedures used to obtain a patents. For example, it may be useful to file a provisional patent application, then an international PCT application and then file a U.S. application as a national stage application. Phostech believes that each path for obtaining a patent and the content of the patent application must be coordinated diligently with the client in order to obtain the maximum strategic value.

Equally important to the content of a patent application are the details, statements, or opinions that should not go into a patent application. In order to save on costs, companies often have engineers write the patent specification, believing it only to be a technical document. This often leads to unintentional major problems which can render a patent invalid. The information in a patent and how it is presented are crucial for obtaining the broadest patent protection on strong patents proven to be valid. In addition to understanding the rules for the patent application process and prosecution with the patent office, understanding the more recent patent cases and rulings can be critical to writing a good patent application that saves time, money, and enables the granting of a strong, effective patent.

Phostech's patent drafting services provides the benefits of:

  • Ensuring that the patent application aligns with the client's patent strategy
  • (reducing back-and-forth iterations)
  • A faster application process through direct, comprehensive interaction with the client
  • Easier and quicker transfer of the inventive concept due to a broad understanding of various technology areas
  • Providing a single source of contact for drafting the application and the drawings
  • Providing further opportunity for follow-on applications leveraging the earlier filing dates

Phostech has experience working with companies outside the United States who have sought patent protection for foreign-based inventions and intellectual property.

Phostech's ability to write, file, and manage all of the components of patent applications including the claims, specification, and the legal drawings increases the speed of the drafting of the application and reduces the overall cost. Phostech's complete patent management services complement the patent drafting and patent strategy services, and enable productive and cost effective intellectual property solutions for patent portfolios.

Prior Art Searching and Why it is Important

Many large IP law firms advise against doing prior art searches for patent applications. Their reasoning typically revolves around the small possibility of increased lawsuit damages in the future if it was known that a company knew of another company's patent and willfully infringed upon it. However, the likelihood of this occuring is very, very slim (in 2009, less than 4 lawsuits were filed for every 10,000 patents filed (USPTO Source 1)), and it is often better to know about a potential patent threat sooner rather than later so that issues can be avoided. If the prior art is not searched, many more applications are filed by the firm, but many of them will be ruled unpatentable because of the prior art or the claims will be extremely narrow and ineffective for the company. Each one of the applications is a significant cost to the client. Time and effort are often better spent searching and reviewing the prior art and aligning the claims against the art and with the patent strategy of the client before filing the patent application.

Unfortunately, clients of large law firms do not often realize the benefits that can be provided by prior art searches for their patent applications. For example, the U.S. Patent and Trademark Office data below shows the percentage of patents granted for two types of patent applications:

  FY 2007 FY 2008 FY 2009
(*as of 2/5/09)
Utility applications filed 439,578 466,258 457,966
Utility patents issued 160,306 154,699 165,212
Utility patents: percentage of patents issued relative to those filed 36.5% 33.2% 36.1%
Accelerated examinations : % allowed
(require prior art searching)
73.2% 68.2% 80.3%*

(USPTO Source 1, Source 2))

Regular utility patent applications have about a 35% success rate of being granted into a patent. Accelerated examination patent applications, which require a prior art searches to be submitted with the application, have a success rate of over 80% granted. Furthermore, by filing the application as an accelerated application, the average time to patent allowance can be reduced from an average of over 34 months for utility patent applications to less than 1 year for accelerated patent applications (USPTO Source 1, Source 2). Companies that perform prior art searches before filing the application will generally obtain stronger and more effective patents.

Other benefits of prior art searching include:

  • Increased likelihood of the application being granted into a patent
  • Faster time to allowance (<1 year for accelerated examinations)
  • Patent application and claims can be constructed to avoid prior art material
  • Fewer applications will need to be filed
  • Stronger patent portfolio
  • Reduced total costs
  • Better alignment of patents with patent strategy
  • Discovery of new technologies, methods of manufacture, and markets/opportunities
  • Identification of new competitors and potential licensees

Phostech uses advanced search techniques to find the closest related prior art to enable informed decisions that result in high quality patents.

What is the Difference Between a Patent Agent and a Patent Attorney?

A patent agent and a patent attorney are both registered to practice before the United States Patent and Trademark Office. They are able to file patent applications and prosecute patent applications with the USPTO to obtain patents for thier clients. They are required to have engineering degrees or equivalent backgrounds and must pass a background check and an examination proving their competancy in understanding the rules of the patent office. Patent agents and patent lawyers have ethical obligations to clients and can be barred from practicing before the patent office for violations. The primary difference between them is a patent agent is not able to practice law, represent others in court, or give legal opinions. However, since less than 1% of all patent cases go to court, many companies have opted to work with patent agents instead of patent lawyers in order to reduce costs and enable more value through increased interaction with their patent strategy. While a non-registered individual may file and prosecute a patent application for his/her own invention with the USPTO, this is highly unrecommended, as the procedural steps and legal issues are very complicated, and one miss-step can result in an invalid patent. The primary differences between a patent agent and a patent attorney are illustrated in the table below:

Patent Attorney Patent Agent
File an application
Yes Yes
Prosecute an application
Yes Yes
File an international PCT application
Yes Yes
Ethical obligations to the client
Yes Yes
Issue legal opinions
Yes No
Prepare, file, and prosecute trademark and service mark registration applications
Yes No
Represent the client in a patent infringement case
Yes No
Hourly rates & minimum billing increments
High Low


Futher information on the differences between a patent agent and patent attorney can be found at the US Patent and Trademark Office.

Phostech provides complete patent drafting and prosecution services as well as comprehensive patent strategy services which together provide extremely high value patent solutions to meet the client's goals.


Supplemental Patent Support

Some companies prefer to retain outside counsel to prosecute or litigate their patent applications. Phostech can provide a tremendous value to these companies by providing custom levels of support or supplemental support for their attorneys. Phostech provides customizable services such as: