Practices

Patent Prosecution

Mertzlufft Law works with a variety of clients, ranging from innovative manufacturers to high-tech startups. Our mission is to provide elite, effective, and efficient intellectual property services to firms creating the future. To this effect, we will work with you to develop an optimized intellectual property strategy that fits into your core business strategy.

We help inventors, entrepreneurs, and creators procure, enforce, and defend intellectual property. Josh, our founder, has experience working with startups, small businesses, large companies, independent inventors, and universities on an array of domestic and international intellectual property matters.

Learning Your Business and Your Inventions

“You can’t write a patent application without understanding the invention” is the common refrain heard in a law school patents class. However, we take that further and add that you shouldn’t write a patent application without understanding the business goals of that patent application.

To that effect, the first stages in the process of patent procurement include learning your business, your strategy, your goals for intellectual property protection, and of course, your inventions. This starts in a free introductory call, which can be scheduled by clicking the below button. If afterwards, you engage the firm, you’ll fill out an Invention Disclosure Form and we will want to see the invention in action. This can involve reviewing photos, videos, and if feasible, a visit to your place of business. After getting to know you, your business, and your inventions, we can put pen to paper on a patent application (And, rest assured if a critical filing deadline is imminent, our process can be completed in as quickly as one day).

Schedule a free 20-minute introductory call with an IP attorney.

Are We A Match?

Not all patent attorneys are the same. For instance, you generally want to avoid having a molecular biologist working on a physics-related application, or vice versa. And both Josh and the molecular biologist would thoroughly agree. We believe it’s important for patent attorneys to know their limits—and not mislead clients regarding the same. Based on experience and educational background, our capabilities and experience include procuring patents for clients in a variety of engineering and scientific fields, including:

  • Software Patents
  • Artificial Intelligence (AI) Patents
  • Rocket Science Patents
  • Mechanical Patents
  • Aerospace Patents
  • Nuclear Energy Patents (either physics or physical plant)
  • Energy Production Patents
  • Energy Storage Patents & Battery Technology Patents
  • High-Energy Physics (HEP) Patents
  • Automotive Patents
  • Industrial Patents
  • Design Patents
  • Materials Science Patents
  • Blockchain Patents
  • Cryptocurrency Patents
  • Electrical Patents
  • Optics Patents
  • Nanotechnology Patents
  • Semiconductor Patents
  • Manufacturing Patents

If your invention falls outside of this list, rest assured we can still use our efficient and cost-effective patent procurement processes to assist—we will leverage our expert network to assist with understanding your invention. If you’d like to know more about our capabilities, feel free to set up a free initial consultation by clicking here.

Our Professional Features

We put serious effort into applications, with the goal of effective implementation of our clients’ patent strategies. The Supreme Court once wrote, “[t]he specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy.”1Topliff v. Topliff, 145 U.S. 156, 171 (1892). Where applicable, our patent services include the following features:

Professional Application. A professional-grade patent application is more than a paper detailing an invention—it is a legal instrument designed to implement a patent strategy.

Claim Drafting. Patent claims define the metes and bounds of the invention and form the core of the legal property right a patent is intended to protect.

Drawing Preparation. Patent drawings are a unique form of technical drawing, designed to accompany the application’s specification and claims.

Specification Drafting. Specifications accompany the claims and drawings to provide the disclosure of the invention, and it’s important a specification properly disclose the invention.

Assignment of Invention Rights. Oftentimes, there is a need for an inventor’s rights to be transferred. We include basic assignment agreements where necessary to file.

Information Disclosure Statement. All involved with a patent application owe a duty of disclosure. Preparation of one Information Disclosure Statement ( IDS ) is included in our base price.

Going International? We have experience with the Patent Cooperation Treaty (PCT) international patent application filing system, as well as the Paris Convention and have assisted clients with national prosecution in a variety of countries through local counsel. If you have any foreign patent needs, or are interested in exploring the same, please tell us during your introductory call.

Application Tracking. Once a non-provisional utility or design patent application is filed, we track it through completion and keep you apprised of its progress.

Prosecution Strategy. A prosecution strategy must be designed to implement your patent strategy. We counsel on options, and can help you decide which path to take.

Office Action Responses. Over 80% of applications—including those ultimately allowed—receive at least one rejection.2Over 80% of allowed applications received at least one. See https://bigpatentdata.com/2019/05/how-often-do-patent-applications-get-rejected/. We advise on, prepare, and file responses to such Office Actions.

Examiner Interviews. In some instances, it is helpful to conduct an interview with the patent examiner to better understand an Office Action or advance a case.

PTAB Appeals. When an impasse in prosecution is reached, it may become necessary to file an appeal to the Patent Trial & Appeal Board ( PTAB ).

. . . and more!

No Metered Communication

Communication is critical when it comes to developing and executing intellectual property strategies, whether procurement or litigation. It’s important that there is a wide-open line of communication between a client and a patent attorney, and that this line of communication is used. However, the common law firm model of billing for every minute of communication militates against this principle.

Rather than joining so many other firms that consider every client phone call or email response an opportunity for profit, we broke this mold. Mertzlufft Law works hard to continuously improve efficiency of our processes. This is why we are able to proudly say we do not bill time for most phone calls and email responses. This means that you should never to see an unexpected bill from us for time spent on a call or email exchange between you and us.

How Much Does a Patent Cost?

From invention disclosure to patent issuance, you should expect to pay from $7,500 to $15,000 in government and legal fees over a two- to three-year period, with about 50% of that cost being up front (this up-front cost is the “cost to file”). Certain fields (e.g., mechanical & industrial processes) fall toward the lower end and others (e.g., software & chemical) fall toward the higher end.

Patent Legal Fees

We offer patent procurement services on a flat fee model, since most of our clients prefer to know costs in advance. We schedule out costs in advance, and can work with you to create a custom billing model that fits your business, ranging from true flat fees to installment fees (and some of our clients do still require hourly billing).

Lowering Up-Front Costs

Oftentimes, a startup needs to “test the waters,” but cannot afford—or doesn’t yet want to commit to—the process of obtaining a full utility patent. For these needs, a Provisional Patent Application can be filed at a lower cost than a full utility patent and with no continuing costs.

What is a provisional patent?

A provisional patent application can be the basis of filing a full utility patent application within a year of filing the provisional application, wins the race to the Patent Office, enables public disclosures, and provides the ability to mark and label the invention as “patent pending” for up to one year.

Questions?

If you have questions about an invention or an idea, let’s schedule a free consultation:

Schedule a free 20-minute introductory call with an IP attorney.

IP Portfolio Management

Mertzlufft Law’s capabilities include counseling, prosecution, and litigation services with respect to a variety of forms of intellectual property. As part of forming and executing an intellectual property strategy, Mertzlufft Law regularly assists clients with various aspects of creation and management of intellectual property portfolios. Our offering of portfolio management services includes:

  • Intellectual Property Audits;
  • Intellectual Property Procurement;
  • Portfolio Management;
  • Portfolio Reporting;
  • Custom Portfolio Development and Management Strategies;
  • Docket Monitoring;
  • Marketplace Monitoring;
  • Infringement Strategy and Action;
  • Competitor Monitoring; and
  • Much More.

Trade Secrets

Mertzlufft Law’s capabilities include counseling and litigation services with respect to trade secrets under U.S. and New York Trade Secret laws. Whether you are seeking to:

  • Protect a business asset (e.g., an invention, process, equipment design, secret recipe, etc…);
  • License a trade secret;
  • Transfer ownership of a trade secret;
  • Enforce a trade secret; or
  • Defend against an allegation of infringement.

Litigation

Mertzlufft Law’s patent litigation capabilities include counseling, strategy, and litigation services with respect to patents under U.S. Patent Law. Our services offered include:

  • Patent infringement enforcement;
  • Patent infringement defense;
  • Patent invalidity actions;
  • Inter Partes Review actions with the USPTO Patent Trial and Appeal Board (PTAB);
  • Ex parte Reexamination proceedings;
  • Post-Grant Review actions with the USPTO PTAB;
  • Non-infringement opinions;
  • Invalidity opinions;
  • Freedom-to-operate opinions;
  • Patentability searches; and
  • Much more.

Please request a free consultation by clicking here, or call +1 (716) 202-0495 to discuss your case!

Our mission is to provide elite, effective, and efficient intellectual property services to firms creating the future.