Early Patent Filing Encouraged by New Patent Law Taking Effect in 2013

In September 2011, the America Invents Act (AIA) was enacted providing the first major change to U.S. Patent Law in 50 years.

A Race to the Patent Office
One of the biggest changes provided by AIA is the conversion of the United States from a first-to-invent system to a first-inventor-to-file system. The new first-inventor-to-file system creates a race to the patent office and rewards the inventor/company that is able to get his or her application filed first.

Under the old patent statute, an inventor who invented first but filed a patent application second could seek to prove up that he/she invented first to win a patent priority contest against a first filer in a procedure called an interference. Under the new patent law, the U.S. will become a first-inventor-to-file country similar to many European countries.

First-Inventor-To-File System
Under the new system, as between two inventors A and B claiming the same invention, if inventor B files a patent application before inventor A on the same invention, inventor B will receive the patent—assuming it otherwise qualified for protection—even if inventor A was the first to invent.

Inventors Only
The law still requires that anyone who files a patent application actually invent the subject matter of the application. The law provides a procedure for the first-to-invent/second-to-file inventor to challenge the application of the first-to-file/second-to-invent applicant on the basis that the first-to-file applicant derived (or “stole”) the invention from the first-to-invent/second-to-file inventor.

Therefore a copier or thief should not be able to obtain a patent, if challenged. However, like with other types of legal disputes, engaging in a dispute with a copier can be time consuming and costly. Therefore avoiding such disputes by winning the race to the patent office is the safest approach.

The first-inventor-to-file provision of the America Invents Act takes effect on March 16, 2013.

Patent Related Documents Explained

When it comes to prosecuting a patent application, it is necessary to file certain documents with the United States Patent and Trademark Office (USPTO) as well as respond to the USPTO’s rejections, questions, objections, and other documents. These documents create a written dialogue typically between our attorney (representing you) and the assigned USPTO Examiner, all part of what is referred to as “patent prosecution.”

This patent prosecution process is potentially confusing, so we thought it would be helpful to explain some of these documents, starting with documents we file on your behalf.

Documents filed by our law firm at the USPTO

Responses from the USPTO

Documents filed by The Erickson Law Group in the United States Patent and Trademark Office

Filed Non-Provisional Specification

The filed Non-Provisional Specification is the text portion of the patent application, as filed in the United States Patent and Trademark Office on the filing date. The Non-Provisional Specification cannot be changed after being filed except for correcting clerical matters, clarifying that which is already sufficiently disclosed in the Non-Provisional Specification, or amending the claims.

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Filed Non-Provisional Drawings

The filed Non-Provisional drawings are the patent application drawings, as filed in the United States Patent and Trademark Office on the filing date. The Non-Provisional drawings cannot be changed after the filing date except for correcting drawing informalities or by submitting formal drawings prepared by a patent draftsman, in neither case can new matter be added to the drawings.

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Declaration and Power of Attorney

The Declaration is a legal document signed by the inventor or inventors that is filed by the Erickson Law Group in the United States Patent and Trademark Office. The Declaration states, among other things, that the inventor or inventors are the original inventors, that the invention has not been on sale for more than a year before the filing date and that the inventor or inventors understand their duty to disclose pertinent prior art (such as prior patents, prior publications, prior known devices, etc.) to the patent office during examination of the application. The Power of Attorney portion of this document gives the Erickson Law Group the authority to act on your behalf in filing and prosecuting the patent application. A Declaration must be filed in every patent application before the patent application can proceed to examination. The Declaration can be filed with the application on the filing date or can be filed within a few months after the filing date with a fee.

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Preliminary Amendment

A Preliminary Amendment is a document that is sometimes filed by the Erickson Law Group in the United States Patent and Trademark Office that makes changes to the Specification, the drawings, or to the claims that are to be effective before the application is examined by the United States Patent and Trademark Office examiner. The Preliminary Amendment is usually filed within a few months of the application filing date to make clerical corrections or to change or add claims.

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Non-publication Request

A Non-Publication Request is a document that is filed by the Erickson Law Group in the United States Patent and Trademark Office with the initial filing of the application that requests the United States Patent and Trademark Office to exempt the patent application from mandatory publication requirement because the applicant has agreed not to file corresponding foreign patent applications. If a Non-Publication Request is not filed, every Non-Provisional patent application will be published on the USPTO website at 18 months after the earliest filing date of the patent application. A non-publication request can be used to keep the contents of the application secret until the application is issued as a patent. This gives the applicant the option to either allow the patent to issue and become published, or to not allow the patent to issue and keep the invention as a trade secret.

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Filed Design Patent Specification

The filed design patent Specification is the text portion of the patent application, as filed in the United States Patent and Trademark Office on the filing date. The design patent Specification describes the drawing figures and typically can be changed for matters of form or language after filing at the United States Patent and Trademark Office as long as the changes are for correcting grammar, clerical matters or clarifying that which is already sufficiently disclosed in the design patent Specification.

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Filed Design Patent drawings

The filed design patent drawings are the design patent drawings as filed in the United States Patent and Trademark Office on the filing date. The design patent drawings cannot be changed at this point except for correcting drawing informalities or submitting formalized drawings prepared by a patent draftsman.

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Filed Provisional Specification

The filed Provisional Specification is the text portion of the patent application, as filed in the United States Patent and Trademark Office on the filing date. The Provisional Specification cannot be changed at this point except for correcting clerical matters, or clarifying that which is already sufficiently disclosed in the Provisional Specification. However, since Provisional applications are not examined by the United States Patent and Trademark Office, the need of making changes in the Provisional Specification generally does not occur.

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Filed Provisional Drawings

The filed Provisional drawings are the patent application drawings as filed in the United States Patent and Trademark Office on the filing date. The Provisional drawings cannot be changed after the filing date except for correcting drawing informalities or submitting formalized drawings prepared by a patent draftsman. However, since Provisional applications are not examined by the United States Patent and Trademark Office, the need of making changes in the Provisional drawings generally does not occur.

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Filed Provisional Cover Sheet

The Provisional application cover sheet sets forth inventor and application information required by the United States Patent and Trademark Office. If any of the information on the Provisional cover sheet is incorrect, a revised cover sheet can be submitted to the United States Patent and Trademark Office to correct the error.

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Amendment in Response to a First Office Action

In response to a first (non-final) Office Action (report from the USPTO Examiner) on the patentability of the application claims from the United States Patent and Trademark Office examiner, the Erickson Law Group has prepared and filed an Amendment to the application. A typical Amendment may make changes to the detailed description in the Specification, make changes to the drawings, and most often make changes to the claims. The changes to the claims are important in that it is the scope of the claims which represent the value of the patent. the Erickson Law Group makes changes to the claims which we feel are necessary to overcome rejections made by the United States Patent and Trademark Office examiner. Sometimes the changes are made to clarify the claims and other times changes are made to the claims to distinguish the claims from one or more prior art references cited by the examiner. The United States Patent and Trademark Office examiner will consider this Amendment and in a few months issue a Final Office Action or a Notice of Allowance. A Notice of Allowance is good news that means the examiner has agreed to allow the patent application to issue as a patent.

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Amendment After Final

In response to a Final Office Action by the United States patent examiner on the patentability of the application claims, the Erickson Law Group has prepared, and filed, an Amendment After Final. A typical Amendment After Final may make changes to the detailed description in the Specification, make changes to the drawings, and make changes to the claims. The changes to the claims are important in that it is the claims which represent the value of the patent. the Erickson Law Group makes changes to the claims which we feel are necessary to overcome rejections made by the United States Patent and Trademark Office examiner. Sometimes the changes are made to clarify the claims and other times changes are made to the claims to distinguish the claims from one or more prior art references. The United States Patent and Trademark Office examiner will consider this Amendment and in a few months issue an Advisory Action or a Notice of Allowance. The Advisory Action typically means that the examiner continues to reject the claims and requires that the applicant must either file an appeal to the Board of Patent Appeals or file a Request for Continued Examination. Either option requires fees paid to the United States Patent and Trademark Office. A Notice of Allowance is good news that means the examiner has agreed to allow the patent application to issue as a patent.

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Assignment

An Assignment is a transfer of ownership of patent rights from the assignor to the assignee. The assignor is typically the inventor or inventors and the assignee is typically the company that employs the inventor or inventors. To prevent fraudulent transfers of patent rights, the United States Patent and Trademark Office maintains a recordation system where Assignments are recorded and accessible to the public so that the true owner of a patent can easily be determined. the Erickson Law Group submits Assignments to the United States Patent and Trademark Office within a few months of the application filing date.

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Certificate of Correction

When the Erickson Law Group receives an issued patent we proofread the patent and if any significant printing errors are found we prepare and submit a Certificate of Correction to the United States Patent and Trademark Office. The Certificate of Correction is associated with the patent at the United States Patent and Trademark Office so that the correction becomes publicly known.

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Information Disclosure Statement

Each inventor and anyone involved in the preparation or prosecution of a patent application, including patent attorneys are under a duty to disclose pertinent, known prior art to the patent examiner who is examining the patent application. Failure to fulfill this duty can result in an unenforceable patent. To fulfill this duty, if pertinent prior art references are known, an Information Disclosure Statement is prepared by the Erickson Law Group and filed in the United States Patent and Trademark Office.

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Petition for Extension of Time

Each Office Action that is sent by the United States Patent and Trademark Office includes a time period for reply by the applicant. Depending on the type of Office Action, these time periods are typically one month, two months or three months. However, if the applicant needs additional time to respond, extensions of time are available for a fee. However, the total period of time to respond cannot be extended past six months from the date of the Office Action.

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Petition for Revival of Application

When a patent application becomes abandoned for failure to respond within the time limit set by the United States Patent and Trademark Office there are procedures to have the application revived or reinstated if a petition is filed with the appropriate fee.

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Replacement Drawings

If the United States Patent and Trademark Office objects to the drawings as filed in the patent application because of the drafting quality of the drawings, replacement drawings must be filed. This often occurs when, in order to save costs, informal drawings or attorney sketches are filed with the initial filing of the patent application. The United States Patent and Trademark Office allows for the applicant to file replacement drawings as long as the drawings substantially are the same as the informal drawings, only of a higher drafting quality.

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Requests for Continued Examination

Every patent application is first examined substantively in a Non-Final Office Action from the United States Patent and Trademark Office examiner. The applicant is given at least one opportunity to amend the claims and resubmit the claims in an Amendment and the United States Patent and Trademark Office examiner must examine the amended claims and either allow the claims or issue a Final Office Action. The applicant can respond with an Amendment After Final to the Final Office Action but the patent office examiner is not required to issue a further Office Action. The examiner can issue a cursory Advisory Action that states that considering the Amendment After Final would cause the examiner to conduct a further search and spend time further considering the claims, so the Amendment will not be “entered” (officially considered) by the examiner. One method of paying for the examiner to consider the Amendment After Final is to file a Request for Continued Examination with the associated fee. The examiner must then consider the latest Amendment and issue a new Non-Final Office Action. In other words, by filing a Request for Continued Examination and paying the fee, the applicant is entitled to have the Amendment After Final considered as well as one subsequent Amendment considered. In other words, by filing a Request for Continued Examination and paying the fee, the applicant is given two more tries to obtain allowance of the claims.

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Terminal Disclaimer

Patent application claims can be rejected over a prior-filed application or prior patent that is owned by the same person or company. This is called a “double patenting” rejection. To overcome such a rejection, the United States Patent and Trademark Office sometimes allows the owner of the patent to file a “Terminal Disclaimer” with a fee which requires that the owner agree in writing that the later filed application will become expired on the same date that the earlier filed application or patent expires and also requires that the owner maintain common ownership of both the later filed application and the earlier application or patent. The terminal disclaimer is prepared by the Erickson Law Group and filed with a response to the Office Action that sets forth the rejection.

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Transmittal Formal Drawings

If the United States Patent and Trademark Office allows an application to issue as a patent but objects to the quality of the drawings that were originally filed in the application, the United States Patent and Trademark Office may require that formal drawings be submitted at the time that the issue fee is paid. Typically, our firm handles the preparation of the formal drawings through an outside draftsman and transmits the formal drawings to the United States Patent and Trademark Office.

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Issue Fee Transmittal

At some point after a patent application is filed, hopefully, the United States Patent and Trademark Office will allow the application to issue as a patent. Before the application issues as a patent, a patent issue fee must be paid within three months after the United States Patent and Trademark Office notifies the applicant that the application is allowed. Once the Issue Fee is paid a patent should be printed and issued within 1 to 3 months.

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Response To File Missing Parts

There are times when a patent application must be filed in an expedited manner or before the filing fees have been pre-paid by the applicant. In such cases it is typical for our firm to file the patent application without the signed Declaration and without paying the filing fee for the application. Even though these parts are missing, the application is still granted a filing date and a Notice is sent by the United States Patent and Trademark Office to the applicant’s attorney to supply the missing parts.

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Responses from the United States Patent and Trademark Office

Filing Receipt

A filing receipt is an official acknowledgment that the United States Patent and Trademark Office has received the patent application. The receipt includes identifying information such as the application serial number, the filing date, the inventor’s name, and the title of the invention. The filing receipt is usually included with a foreign filing license which gives the patent applicant permission to file the application in a foreign country.

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Updated Filing Receipt

An updated filing receipt is an official acknowledgment that the United States Patent and Trademark Office has received the patent application. The updated filing receipt includes identifying information such as the application serial number, the filing date, the inventor’s name, and the title of the invention. If the original application did not include a signed Declaration, after the signed Declaration is submitted, the updated filing receipt will have all of the proper inventor’s names listed.

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Notice of Missing Parts of Non-Provisional Patent Application

If the initially filed Non-Provisional patent application was filed without the filing fee or the signed Declaration, the United States Patent and Trademark Office will issue a Notice to File Missing Parts to the applicant’s attorney. This Notice indicates the total amount of fees due including the surcharge required for filing the missing parts. Our firm will prepare the Declaration for signature by the inventor(s) and submit the missing parts.

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Notice of Missing Parts of Provisional Application

If the initially filed Provisional patent application was filed without the filing fee, the United States Patent and Trademark Office will issue a Notice to File Missing Parts to the applicant’s attorney. This Notice indicates the total amount of fees due including the surcharge required for filing the missing parts.

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Notice to File Corrected Application Papers

If the initially filed patent application was defective in some manner such as failure to submit required information on a cover sheet or failure to supply sufficiently clear patent drawings, a Notice to File Corrected Application Papers will be issued by the United States Patent and Trademark Office. The applicant is given a period of time to supply replacement application papers.

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Notice of Omitted Items In a Provisional Patent Application

If a Provisional patent application indicates that certain pages are included but such pages are not included, the US patent office will issue a Notice of omitted items. The applicant is given a period of time to prove that such items were indeed submitted according to United States Patent and Trademark Office rules.

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Notice of Publication of the Application

Every Non-Provisional utility patent application is published 18 months after the earliest filing date of the application. Publication means that the application is available to the public on the United States Patent and Trademark Office website. The publication date may be an important date under some circumstances such as if an applicant needed to file a foreign patent application before the US application was published.

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Restriction Requirement

There are many times when the set of claims of a patent application include more than a single invention. For example, for cost savings, multiple inventions may be filed in the same application where the inventions are somewhat related. The United States Patent and Trademark Office examiner may refuse to do multiple patent searches for a single patent application. The examiner will then restrict the application to a single invention and require the applicant to choose which claims to prosecute in the application. The applicant is typically given one month to make his or her election. The claims that the applicant does not choose are called non-elected claims. The applicant is free to file one or more divisional applications on any non-elected claims and is given priority back to the original filing date.

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Ex Parte Quayle Action

Sometimes, in a first Office Action, the United States Patent and Trademark Office examiner decides that the claims are allowable except for some Specification or claim language that needs to be clarified. The examiner decides that examination of the application is closed because the examiner has allowed the claims and he issues what is referred to as an “Ex Parte Quayle” action. The applicant is typically given two months to make these corrections in a response to the Ex Parte Quayle Action.

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Non-Final Office Action

Typically a first Office Action is referred to as a “Non-Final Office Action.” In most first Office Actions at least some claims are rejected. The applicant must respond to the examiner’s rejection of the claims, and file an Amendment and make arguments to overcome the examiner’s rejections. The applicant is usually given a three-month period of time to respond to the Non-Final Office Action.
Because the Office Action is a Non-Final Office Action, the examiner must consider the applicant’s Amendments to the claims, do a further prior art search if required, and issue a further Office Action with a detailed examination of the amended claims.

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Notice of Non-compliant Amendment

If an applicant responds to a Non-Final Office Action or a Final Office Action with an Amendment that fails to address one of the examiner’s objections or rejections or is submitted in an improper form, the examiner may issue a Notice of Noncompliant Amendment. In some situations the examiner may give the applicant an additional month to make corrections. In other situations, the examiner may not give additional time and the applicant must pay a fee to extend the time period for the original response to file a corrected Amendment.

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Final Office Action

Once the applicant has responded to a Non-Final Office Action, the examiner must consider the applicant’s amended claims and arguments and issue a detailed examination of the amended claims. When the examiner makes his or her detailed examination he can issue a Final Office Action. A Final Office Action is not really final. The term “final” means that if the applicant files an Amendment After Final, the examiner will read the Amendment After Final but may or may not enter (officially consider) the Amendment After Final. If the examiner deems that the Amendment After Final would require a new search or raises new issues the examiner can refuse to enter (officially consider) the Amendments After Final. The examiner then will issue an Advisory Action refusing to enter the Amendment. At this point the applicant can either file a Request for Continued Examination to force the examiner to consider the Amendment After Final as a non-final Amendment, or can appeal the final rejection to the Board of Patent Appeals.

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Notice of Allowance

If the patent examiner determines after a search and examination of the claims originally filed, or claims amended during prosecution, that the claims are patentable over his or her search of prior art, the examiner will issue a Notice of Allowance. This is good news. The Notice of Allowance is sometimes included with a Notice of Allowability which states the reasons why the examiner has determined that the claims are allowable. The applicant is given three months from the Notice of Allowance to pay an issue fee in order for the patent to issue from the application.

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Advisory Action

If an applicant files an Amendment After Final in response to a final rejection by the examiner, the patent examiner will read the Amendment After Final and if it raises new issues or will require a further search, the patent examiner can refuse to “enter” (officially consider) the Amendment After Final. Also, if the Amendment After Final does not raise new issues but , according to the examiner, the Amendment still does not put the application in condition for allowance, the examiner can still reject the claims but officially enter the Amendment for purposes of appeal by the applicant. In either case the examiner issues an Advisory Action stating his or her position on the Amendment After Final. The Advisory Action does not reset the time for reply to the Final Office Action which remains the date of mailing of the Final Office Action. An Advisory Action requires some response such as: filing an appeal, filing an RCE, or filing a Continuation Application. If no response is filed, the application will become abandoned.

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Issue Notification

After the applicant has been notified of the allowance of his or her application, and after the applicant has paid the issue fee, the application is processed at the patent office for printing as a published patent. Within a few weeks before the issue date of the patent, the patent office sends an issue notification to the applicant informing the applicant of the patent number and of the upcoming issue date. This date may be important for applicants who wish to file another application (a “Continuation Application”) on another aspect of the same invention, before the earlier application issues as a patent which cuts off the possibility of filing such a Continuation Application.

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Maintenance Fee Receipt

Issued U.S. patents have required maintenance fees due at 3.5, 7.5 and. 11.5 years after issuance of the patent. When the maintenance fee is paid, the patent office issues an electronic receipt. If a maintenance fee is not paid the patent will lapse.

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Acknowledgement Receipt

Whenever a document or fee is electronically submitted to the United States Patent and Trademark Office, the United States Patent and Trademark Office generates an electronic receipt which acknowledges the submission of the document or fee.

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Filing Receipt

A filing receipt is an official acknowledgment that the United States Patent and Trademark Office has received the patent application. The receipt includes identifying information such as the application serial number, the filing date, the inventor’s name, and the title of the invention. The filing receipt is usually included with a foreign filing license which gives the patent applicant permission to file the application in a foreign country.

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Updated Filing Receipt

An updated filing receipt is an official acknowledgment that the United States Patent and Trademark Office has received the patent application. The updated filing receipt includes identifying information such as the application serial number, the filing date, the inventor’s name, and the title of the invention. If the original application did not include a signed Declaration, after the signed Declaration is submitted, the updated filing receipt will have all of the proper inventor’s names listed.

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Patents

Do you have an idea for a device, product, machine, computer program, or process? A patent gives the inventor the right to exclude others from making, using, offering for sale, or selling that invention for a set period of time. We can help you determine whether obtaining patent protection is the appropriate vehicle to protect your idea.

There are three types of patents:

  • Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof
  • Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture
  • Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant

Read more about patents and our patent services here.