April 28, 2025 • 17 mins
Patent timelines are a source of frustration for many inventors who continuously ask, "Why is this taking so long?" In this revealing conversation, IP attorney Mario Milano pulls back the curtain on the reality of patent prosecution—the notorious "hurry up and wait" process that typically spans two years from filing to issuance.
The journey begins with application preparation, a relatively quick 4-6 week process. Then comes the long wait: 18 months (despite USPTO's 14-month guideline) before receiving that first office action. Mario explains the critical differences between provisional and non-provisional applications, and why missing a response deadline can derail your entire patent strategy. For busy entrepreneurs juggling multiple priorities, these oversight risks make professional management particularly valuable.
We explore the nuances of patent ownership—a consideration often overlooked by startups but scrutinized by investors who typically want IP rights assigned to companies rather than individuals. Mario shares practical wisdom about when to expedite examination through special petitions (when competitors are encroaching) versus when standard timelines actually benefit you (when your product is still evolving). The complexity multiplies when managing multiple patents across various products and international jurisdictions, creating a coordination challenge only sophisticated systems can handle.
The episode concludes with an enlightening "Is It Patentable?" segment examining pliers designs, demonstrating the crucial distinction between functional features (generally not protectable with design patents) and ornamental features (potentially protectable).
Whether you're a solo inventor with your first patent application or a growing company managing an extensive portfolio, understanding these timelines and strategic considerations will help you approach the patent process with realistic expectations and a solid plan. Subscribe to Secure Your Creations for more insights that help you maximize protection for your innovations.
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Episode Transcript
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Speaker 1 (00:00):
You're listening to Secure your Creations Podcast,
where innovation meets legalprotection.
Hosted by IP attorney MarioMilano, this show cuts through
the legal noise and offers realinsights to protect your patents
, trademarks, copyrights andtrade secrets.
Whether you're an inventor,entrepreneur or business leader,
we help protect what you'vebuilt, capitalize on your
(00:23):
creations and stay one stepahead of the competition.
Welcome to Secure yourCreations podcast.
Let's get started.
Speaker 2 (00:32):
And welcome to the Secure your Creations podcast
with Mario Milano.
Good morning, Mario.
How are you today?
Speaker 3 (00:38):
I'm good, Craig.
How are you doing?
Speaker 2 (00:40):
Not too bad.
We're going to talk about asubject today that I know that I
deal with.
I know that you deal with interms of hurry up and wait right
.
I think that clients are in aposition, when it comes to
patents, that they want it now,they want it now, they want it
now.
Why is it taking so long?
Why can't we do it?
We're all in a hurry to go, butthat's just not realistic, is
it?
Speaker 3 (01:00):
No, unfortunately it's not.
Speaker 2 (01:01):
Yeah, the patents involve a lot of waiting.
Yeah, so one of our talk abouttoday in terms of the patent
timeline is let's be realisticin terms of the time it takes.
When we talked about it before,you said it's about a two year
window.
Tell me a little bit more aboutthat.
Speaker 3 (01:17):
Yeah, two years.
It feels like it's about thetime frame that it's taking
right now.
And that's for a utility patentand a design patent is is about
the same.
Design patents can be a littlebit less.
But the waiting part of it iswe prepare the application.
Typically, when an inventorcomes to us, we do a search, we
prepare the application.
(01:37):
All that is done in about fourto six weeks.
I'd say it's about normal.
Then we submit the patentapplication to the US Patent
Trademark Office.
From the day that we file theapplication until we hear from
the patent office for the firsttime, it's supposed to be 14
months is the USPTO guideline.
Typically it takes a little bitlonger than that.
(01:58):
About 18 months is what we see.
So during that 18-month periodwe're just waiting for the
patent office to get back to usand examine the application and
let us know if it's patentableor not.
Speaker 2 (02:10):
And so, just to be clear, is there a difference
between the patent applicationand a provisional patent?
Can you describe if there's adifference at all?
Speaker 3 (02:18):
Sure, yeah.
So for the provisionalapplication that doesn't
actually get examined by the USPatent Office, for the
provisional application thatdoesn't actually get examined by
the US Patent Office, theyreview it for formalities, but
they don't undertake asubstantive examination like
they do for a non-provisionalapplication.
So the provisional is reallyjust a placeholder.
The 18-month timeline that wejust talked about, that's for a
(02:41):
non-provisional application.
For the provisional, you couldadd 12 months to that, because
we would file the provisional,wait up to 12 months to convert
it to a non-provisional, andwhen the non-provisional
application is filed, that'swhen that timeline starts.
Speaker 2 (02:55):
Great.
And so, in terms of the patentoffice, the USPTO examiner,
what's the role in this wholetwo-year potential application
process?
Speaker 3 (03:06):
Yeah, so they have their docket that they have of
other applications right,they're examining multiple
applications.
So they're working throughtheir docket on applications
that were previously submittedand waiting in the order that
they were received and so whenyour application comes up then
they'll start looking at yourapplication and they're examined
(03:30):
in the order that they'rereceived.
You can speed up the process alittle bit by paying the
government fee and filing apetition to make it special, and
then it will get examinedfaster.
But you know that adds to thefees that are associated with
filing a patent application so Ihave here, in terms of a note,
(03:51):
a patent office action.
Speaker 2 (03:52):
Is that some?
What is that?
Speaker 3 (03:54):
yeah, so an office action?
Uh is typical that to receivefor a patent application, I mean
the.
You know you hope to file yourpatent application and it's
allowable right away.
But if you do that, sometimes Ifind that your patent claims
would be overly narrow if yougot the patent application
allowed on the first pass.
So we try to draft claims thatare broad enough, that have good
(04:20):
broad claim to actually havesome commercial value, and
sometimes when you do that, yourapplication will get rejected.
Uh, and when that happens, whenthe application gets rejected,
the us patent trademark officewill issue an office action.
That's what we typicallyreceive around the 18 month mark
.
The office action will say um,you know that your patent
application is not allowable andhere's the reasons.
(04:42):
Typically we see that they'rerejected over other patents or
patent applications that werefiled previously, and so then
what we do is we read the otherapplications, we look at our own
application and then we amendthe claims to get around those
other patents, and so ideallythere will be one, maybe two
rounds of back and forth withthe patent office and then the
(05:04):
application will be allowed.
Speaker 2 (05:06):
So I think this goes back to another episode that we
had in terms of doing ityourself versus having an agent
like yourself take care of it.
You know, if you get an officeaction, you know how would you
consult your clients in terms ofthat office action.
How is your role in that placeso valuable?
Speaker 3 (05:23):
How is your role in that place so valuable?
Yeah, so you know some of thevalue is just from the fact that
we have software that willnotify us when there is a
development application like anauthorization.
So the US Patent and TrademarkOffice emails me.
I have docketing software thatwill email me and, you know,
automatically populate the datesas far as when responses are,
(05:47):
and so if you were to try thaton your own, you know it's easy
to overlook an email, or maybeit accidentally goes into your
spam folder, you don't realizethat the office action was
issued and you know there aretimelines associated with the
office action.
You typically have three monthsto respond.
If you don't respond, then yourapplication will end up going
abandoned.
Speaker 2 (06:07):
So I can imagine, you know, just being on the client
side of things, you know we allget tons of emails every day
junk emails or regular emailsand it gets lost, hokey smokes.
That could push back the wholeprocess, right yeah absolutely.
Speaker 3 (06:22):
You know your application can go abandoned if
you wait too long to respond,whether you are aware that there
was a deadline in place or not.
If you miss the deadline forresponding, your application can
go abandoned.
Sometimes you can revive it ifit was unintentional that the
application went abandoned.
But you're talking more feesand that will delay the process,
(06:44):
because when the applicationwent abandoned, nobody's looking
at the application or anything.
You have to get it back up andrunning, get it back in front of
the examiner, which all justfurther delays when your patent
will ultimately issue.
Wow.
Speaker 2 (06:56):
So, in other words, do it right the first time.
We're going to stick to thattheme.
Yes, yes, right.
You only want to do it once.
You want to go through thattwo-year window.
The less stress that you giveyourself and have someone like
Mario take care of it, theeasier the process goes for you.
So we're going to touch uponanother subject here that I know
that you spoke about the otherday is who owns the patent
(07:20):
process from the person whoapplies.
Tell me more about that.
Who owns that process?
Speaker 3 (07:26):
Yeah, so initially the rights are with the inventor
.
They're the ones who came upwith the idea, so the rights to
the invention belongs to them.
Now, typically when I'm workingwith companies and they have
either employees or contractorsthat they use for generating
these ideas for theirintellectual property, the
(07:47):
employment agreements or thecontractor agreement obligates
the inventors to assign theirrights over to the company.
So when it's a larger company,then those agreements are
already in place.
It gets tricky when you have asolo inventor or a founder of a
company who's coming up with theideas and sometimes they want
(08:08):
to keep the rights in their namerather than assigning it to the
company.
You know, ultimately that is upto the founder the way that
they want to do it, but I knowthat investors typically want to
see that the company owns theintellectual property.
You never know when somebody isgoing to walk away from the
company or get a new job oranything like that.
(08:29):
So investors typically want tosee that if they're putting
money into the company, thecompany owns that key
intellectual property.
Speaker 2 (08:36):
That makes a lot of sense.
That makes a lot of sense.
And while we're on the processof talking about investors, I
know that that's a lot ofpressure, a lot of time on the
inventors back about.
The investors are like let'sget it, how can we move this
faster?
Speaker 3 (08:55):
I know you talked earlier in terms of getting the
path.
There is a process to make thepatent a little bit faster.
Can you speak to that fact?
Sure, yeah.
So you can file the petition tomake it special, you pay the
associated fee with that andthen the US Patent and Trademark
Office is then supposed to haveit get to either a second
office action or allow thepatent within 12 months.
So you can certainly speed itup significantly because now,
(09:20):
instead of waiting the 18 monthsto get the first correspondence
, we typically see it at aboutsix to eight months is when we
get the first correspondencefrom the patent office.
So it can certainly help speedthings up.
Some situations where I see thatare if a company has their
products already on the marketand they identify somebody who
is infringing their intellectualproperty or they think, wow,
(09:43):
that design, they're eithercopying it exactly or they're so
close that we think we can getpatents that will cover them and
be able to force the otherpeople out of the market.
That's a situation where itprobably makes sense to file on
an expedited basis.
Other times, you know companies, they're just entering the
market with their products andthey you know there might be
(10:05):
some changes along the way asthey introduce the product to
the market, sometimes theyrealize, oh, we could approve it
like this or like that.
So in that situation itprobably makes sense to just
allow the patent to go along thenormal timeline, because as you
change your product we canusually adjust the patent
application in order to coverthe new design without having to
(10:28):
refile a whole new application.
Speaker 2 (10:30):
So I know that when we spoke about that briefly
before the show, you werereferencing in terms of the
number of adjustments you canmake prior to the USPTO seeing,
it is a valuable tool to be ableto use.
Can you tell the audience alittle bit about that?
Speaker 3 (10:45):
Yeah, absolutely.
I mean you prepare this patentapplication with the original
commercial product in mind, butthen when you release it, you
know sometimes there are changesand so we can adjust the claims
of the patent to make sure thatthey are applicable to the new
commercial embodiment.
If we go, you know, if we fileto speed up the process and then
(11:09):
the patent office startslooking at the application
before we make any changes, Thenour hands are kind of tied.
The number of changes that wecan make are smaller.
But if the application is justwaiting for the examiner to look
at it, we can typically amendthe claims as necessary without
a problem.
Speaker 2 (11:27):
Okay, so there's a lot of tools in your tool bag
that you can use there to try toto get this across for everyone
.
That's important for people toknow.
Yeah, absolutely so.
The question I want you to, orthe question that kind of give
me a visual or give me an ideaof maybe a client that you've
worked with who has severalpatents at one time.
So imagine having to manageseveral patents you know we were
(11:47):
just talking maybe an inventorwith one patent, but imagine
these bigger corporations thathave several patents and you've
got to be able to monitor theirtimeline.
Do you have an example or astory of something of that
fashion?
Speaker 3 (11:58):
Yeah, yeah.
So some clients will havemultiple portfolios or multiple
patent families in theirportfolio and so they'll have,
you know, product A, product B,product C.
Each of those products hastheir own patent application and
then it's at various stages.
So maybe we file one patentapplication for product A in the
(12:20):
US and then, as we're goingalong, we identify a competitor
that's getting close to theirpatents.
So then we file a secondapplication directed to product
A in the US, and so now you havetwo patents in the US, two
patent applications pending inthe US, and trying to monitor
all the dates that areassociated with that, along with
all the dates for products B.
For the patent applications forproducts B and C, it can start
(12:43):
to get pretty tricky becausethey're going to be at various
stages.
You have different timelinesfor responding to office actions
.
Then if the companies also filethese patent applications
internationally, that's going toadd however many applications
you have in the US If you file acorresponding number in other
countries.
Each country is going to haveits own timeline for any office
(13:06):
actions that issue and whenthings need to be filed.
So it can quickly snowball fromjust trying to track one or two
applications all the way upinto dozens of applications that
are pending at the same time.
Speaker 2 (13:18):
And I think that's again for everyone listening.
That's the value of usingMilano IP.
They have the processes and thestructures in place to allow
that process to be smooth andeasy.
Business owners know patent or,I'm sorry, inventors already
know they're incredibly busywith 400 other tasks.
Why take this on yourself aswell, right?
So tell me a little bit aboutMilano IP in reference to your
(13:41):
patents and your services, mario, before we get into our next
segment.
Speaker 3 (13:46):
Yeah, so this is something that we're regularly
versed in.
We're always on the US Patentand Trademark Office website
checking our docket, making surethat we have control of all the
patent applications that wehave going.
We have software systems inplace that automatically update
that as well, and we also haveuh you know regularly work with
associates in other countries sothat if you do want to file
(14:08):
your patents uh internationally,we can take care of that as
well.
Then you have a single point ofcontact here at Milano IP that
will oversee the applicationsworldwide.
Speaker 2 (14:21):
And so now we're going to transition into the fun
part of this segment as well isa segment we call is it
patentable.
So if you guys are on LinkedInwhich you should be you need to
connect with Mario Milano orMilano IP, because he constantly
has good little sections inthere about things in terms of
(14:42):
is it patentable, or thingsthat's happening in the
patenting process, and so whatwe're going to do today is we're
going to talk about a productthat's very close to what we all
have used in some way, shape orform, even at a young age, is a
pair of pliers, so I'm going tobring it up here.
In some way, shape or form,even at a young age, is a pair
of pliers, so I'm going to bringit up here and there they are.
Speaker 3 (15:04):
So I guess the question here is uh, is it
patentable?
Yeah, and so this one I posteduh in regards to design patents.
Now, design patents are thereto protect the ornamental
features of something ratherthan the functional aspects.
And so on the left hand side wesee, you know, a generic set of
pliers, each curve and uh, inthe design is pretty much driven
by function.
You know, it applies leverage,it gives you a pivot point and
(15:28):
makes it more ergonomic.
The jaws are designed to makesure that it can grip onto
something nice and tight, and sothose features would not really
be protectable with a designpatent because they're driven by
function.
Whereas on the right-hand sidewe see that we have that
squiggly line there, and so thatlooks more like an ornamental
(15:49):
feature.
Right, it might not have afunction in there, maybe it's a
ridge that would improve thegrip.
But even if it is, you know,the design of it is what would
be patentable there, becauseeven if it does have some
functional aspects, but there isan ornamental aspect to it as
well, then that's typicallypatentable.
So in this situation I wouldsay the one on the left for a
(16:13):
design patent would beconsidered functional and would
not be patentable.
But on the right hand side thatsquiggly line would be an
ornamental feature and thereforewould be protectable with a
design patent.
Speaker 2 (16:25):
Very good.
So now you guys know it ispatentable or it is not,
depending on what features youadd to it.
So what I want everybody toknow is that you can always
watch this show on MilanoIPcom.
We have the audio version andthe video version.
You can listen to it on any ofthe major podcast platforms.
You can watch it on YouTube.
So we are going to continue tobring the audience information
(16:49):
in terms of patents, trademarks,trade secrets and more, and
it's important that you guyssubscribe, like and comment.
If you hear anything that youhave a question about, by all
means go to LinkedIn, comment onMario's company page and we'll
be able to bring it to the showand ask is it patentable?
Mario, do you have any closingwords before we head out?
Speaker 3 (17:12):
You know always good to hear those questions from the
audience.
We like to hear about what's onthe audience's mind, so please
keep them coming.
Speaker 2 (17:21):
You heard it here first I'm Craig Andrews, that's
Mario Milano, and we will talkto you guys next time.
Bye-bye now.
Speaker 1 (17:30):
Thanks for tuning in to the Secure your Creations
podcast.
Make sure to subscribe andfollow on YouTube and your
favorite podcast app so younever miss an episode.
Leave a comment, like or review.
We'd love to hear your thoughtsor answer any questions.
For more expert legal advice,visit wwwmilanoipcom.
Until next time, is itpatentable?
You're listening to Secure your Creations Podcast,
where innovation meets legalprotection.
Hosted by IP attorney MarioMilano, this show cuts through
the legal noise and offers realinsights to protect your patents
, trademarks, copyrights andtrade secrets.
Whether you're an inventor,entrepreneur or business leader,
we help protect what you'vebuilt, capitalize on your
(00:23):
creations and stay one stepahead of the competition.
Welcome to Secure yourCreations podcast.
Let's get started.
Speaker 2 (00:32):
And welcome to the Secure your Creations podcast
with Mario Milano.
Good morning, Mario.
How are you today?
Speaker 3 (00:38):
I'm good, Craig.
How are you doing?
Speaker 2 (00:40):
Not too bad.
We're going to talk about asubject today that I know that I
deal with.
I know that you deal with interms of hurry up and wait right
.
I think that clients are in aposition, when it comes to
patents, that they want it now,they want it now, they want it
now.
Why is it taking so long?
Why can't we do it?
We're all in a hurry to go, butthat's just not realistic, is
it?
Speaker 3 (01:00):
No, unfortunately it's not.
Speaker 2 (01:01):
Yeah, the patents involve a lot of waiting.
Yeah, so one of our talk abouttoday in terms of the patent
timeline is let's be realisticin terms of the time it takes.
When we talked about it before,you said it's about a two year
window.
Tell me a little bit more aboutthat.
Speaker 3 (01:17):
Yeah, two years.
It feels like it's about thetime frame that it's taking
right now.
And that's for a utility patentand a design patent is is about
the same.
Design patents can be a littlebit less.
But the waiting part of it iswe prepare the application.
Typically, when an inventorcomes to us, we do a search, we
prepare the application.
(01:37):
All that is done in about fourto six weeks.
I'd say it's about normal.
Then we submit the patentapplication to the US Patent
Trademark Office.
From the day that we file theapplication until we hear from
the patent office for the firsttime, it's supposed to be 14
months is the USPTO guideline.
Typically it takes a little bitlonger than that.
(01:58):
About 18 months is what we see.
So during that 18-month periodwe're just waiting for the
patent office to get back to usand examine the application and
let us know if it's patentableor not.
Speaker 2 (02:10):
And so, just to be clear, is there a difference
between the patent applicationand a provisional patent?
Can you describe if there's adifference at all?
Speaker 3 (02:18):
Sure, yeah.
So for the provisionalapplication that doesn't
actually get examined by the USPatent Office, for the
provisional application thatdoesn't actually get examined by
the US Patent Office, theyreview it for formalities, but
they don't undertake asubstantive examination like
they do for a non-provisionalapplication.
So the provisional is reallyjust a placeholder.
The 18-month timeline that wejust talked about, that's for a
(02:41):
non-provisional application.
For the provisional, you couldadd 12 months to that, because
we would file the provisional,wait up to 12 months to convert
it to a non-provisional, andwhen the non-provisional
application is filed, that'swhen that timeline starts.
Speaker 2 (02:55):
Great.
And so, in terms of the patentoffice, the USPTO examiner,
what's the role in this wholetwo-year potential application
process?
Speaker 3 (03:06):
Yeah, so they have their docket that they have of
other applications right,they're examining multiple
applications.
So they're working throughtheir docket on applications
that were previously submittedand waiting in the order that
they were received and so whenyour application comes up then
they'll start looking at yourapplication and they're examined
(03:30):
in the order that they'rereceived.
You can speed up the process alittle bit by paying the
government fee and filing apetition to make it special, and
then it will get examinedfaster.
But you know that adds to thefees that are associated with
filing a patent application so Ihave here, in terms of a note,
(03:51):
a patent office action.
Speaker 2 (03:52):
Is that some?
What is that?
Speaker 3 (03:54):
yeah, so an office action?
Uh is typical that to receivefor a patent application, I mean
the.
You know you hope to file yourpatent application and it's
allowable right away.
But if you do that, sometimes Ifind that your patent claims
would be overly narrow if yougot the patent application
allowed on the first pass.
So we try to draft claims thatare broad enough, that have good
(04:20):
broad claim to actually havesome commercial value, and
sometimes when you do that, yourapplication will get rejected.
Uh, and when that happens, whenthe application gets rejected,
the us patent trademark officewill issue an office action.
That's what we typicallyreceive around the 18 month mark
.
The office action will say um,you know that your patent
application is not allowable andhere's the reasons.
(04:42):
Typically we see that they'rerejected over other patents or
patent applications that werefiled previously, and so then
what we do is we read the otherapplications, we look at our own
application and then we amendthe claims to get around those
other patents, and so ideallythere will be one, maybe two
rounds of back and forth withthe patent office and then the
(05:04):
application will be allowed.
Speaker 2 (05:06):
So I think this goes back to another episode that we
had in terms of doing ityourself versus having an agent
like yourself take care of it.
You know, if you get an officeaction, you know how would you
consult your clients in terms ofthat office action.
How is your role in that placeso valuable?
Speaker 3 (05:23):
How is your role in that place so valuable?
Yeah, so you know some of thevalue is just from the fact that
we have software that willnotify us when there is a
development application like anauthorization.
So the US Patent and TrademarkOffice emails me.
I have docketing software thatwill email me and, you know,
automatically populate the datesas far as when responses are,
(05:47):
and so if you were to try thaton your own, you know it's easy
to overlook an email, or maybeit accidentally goes into your
spam folder, you don't realizethat the office action was
issued and you know there aretimelines associated with the
office action.
You typically have three monthsto respond.
If you don't respond, then yourapplication will end up going
abandoned.
Speaker 2 (06:07):
So I can imagine, you know, just being on the client
side of things, you know we allget tons of emails every day
junk emails or regular emailsand it gets lost, hokey smokes.
That could push back the wholeprocess, right yeah absolutely.
Speaker 3 (06:22):
You know your application can go abandoned if
you wait too long to respond,whether you are aware that there
was a deadline in place or not.
If you miss the deadline forresponding, your application can
go abandoned.
Sometimes you can revive it ifit was unintentional that the
application went abandoned.
But you're talking more feesand that will delay the process,
(06:44):
because when the applicationwent abandoned, nobody's looking
at the application or anything.
You have to get it back up andrunning, get it back in front of
the examiner, which all justfurther delays when your patent
will ultimately issue.
Wow.
Speaker 2 (06:56):
So, in other words, do it right the first time.
We're going to stick to thattheme.
Yes, yes, right.
You only want to do it once.
You want to go through thattwo-year window.
The less stress that you giveyourself and have someone like
Mario take care of it, theeasier the process goes for you.
So we're going to touch uponanother subject here that I know
that you spoke about the otherday is who owns the patent
(07:20):
process from the person whoapplies.
Tell me more about that.
Who owns that process?
Speaker 3 (07:26):
Yeah, so initially the rights are with the inventor
.
They're the ones who came upwith the idea, so the rights to
the invention belongs to them.
Now, typically when I'm workingwith companies and they have
either employees or contractorsthat they use for generating
these ideas for theirintellectual property, the
(07:47):
employment agreements or thecontractor agreement obligates
the inventors to assign theirrights over to the company.
So when it's a larger company,then those agreements are
already in place.
It gets tricky when you have asolo inventor or a founder of a
company who's coming up with theideas and sometimes they want
(08:08):
to keep the rights in their namerather than assigning it to the
company.
You know, ultimately that is upto the founder the way that
they want to do it, but I knowthat investors typically want to
see that the company owns theintellectual property.
You never know when somebody isgoing to walk away from the
company or get a new job oranything like that.
(08:29):
So investors typically want tosee that if they're putting
money into the company, thecompany owns that key
intellectual property.
Speaker 2 (08:36):
That makes a lot of sense.
That makes a lot of sense.
And while we're on the processof talking about investors, I
know that that's a lot ofpressure, a lot of time on the
inventors back about.
The investors are like let'sget it, how can we move this
faster?
Speaker 3 (08:55):
I know you talked earlier in terms of getting the
path.
There is a process to make thepatent a little bit faster.
Can you speak to that fact?
Sure, yeah.
So you can file the petition tomake it special, you pay the
associated fee with that andthen the US Patent and Trademark
Office is then supposed to haveit get to either a second
office action or allow thepatent within 12 months.
So you can certainly speed itup significantly because now,
(09:20):
instead of waiting the 18 monthsto get the first correspondence
, we typically see it at aboutsix to eight months is when we
get the first correspondencefrom the patent office.
So it can certainly help speedthings up.
Some situations where I see thatare if a company has their
products already on the marketand they identify somebody who
is infringing their intellectualproperty or they think, wow,
(09:43):
that design, they're eithercopying it exactly or they're so
close that we think we can getpatents that will cover them and
be able to force the otherpeople out of the market.
That's a situation where itprobably makes sense to file on
an expedited basis.
Other times, you know companies, they're just entering the
market with their products andthey you know there might be
(10:05):
some changes along the way asthey introduce the product to
the market, sometimes theyrealize, oh, we could approve it
like this or like that.
So in that situation itprobably makes sense to just
allow the patent to go along thenormal timeline, because as you
change your product we canusually adjust the patent
application in order to coverthe new design without having to
(10:28):
refile a whole new application.
Speaker 2 (10:30):
So I know that when we spoke about that briefly
before the show, you werereferencing in terms of the
number of adjustments you canmake prior to the USPTO seeing,
it is a valuable tool to be ableto use.
Can you tell the audience alittle bit about that?
Speaker 3 (10:45):
Yeah, absolutely.
I mean you prepare this patentapplication with the original
commercial product in mind, butthen when you release it, you
know sometimes there are changesand so we can adjust the claims
of the patent to make sure thatthey are applicable to the new
commercial embodiment.
If we go, you know, if we fileto speed up the process and then
(11:09):
the patent office startslooking at the application
before we make any changes, Thenour hands are kind of tied.
The number of changes that wecan make are smaller.
But if the application is justwaiting for the examiner to look
at it, we can typically amendthe claims as necessary without
a problem.
Speaker 2 (11:27):
Okay, so there's a lot of tools in your tool bag
that you can use there to try toto get this across for everyone
.
That's important for people toknow.
Yeah, absolutely so.
The question I want you to, orthe question that kind of give
me a visual or give me an ideaof maybe a client that you've
worked with who has severalpatents at one time.
So imagine having to manageseveral patents you know we were
(11:47):
just talking maybe an inventorwith one patent, but imagine
these bigger corporations thathave several patents and you've
got to be able to monitor theirtimeline.
Do you have an example or astory of something of that
fashion?
Speaker 3 (11:58):
Yeah, yeah.
So some clients will havemultiple portfolios or multiple
patent families in theirportfolio and so they'll have,
you know, product A, product B,product C.
Each of those products hastheir own patent application and
then it's at various stages.
So maybe we file one patentapplication for product A in the
(12:20):
US and then, as we're goingalong, we identify a competitor
that's getting close to theirpatents.
So then we file a secondapplication directed to product
A in the US, and so now you havetwo patents in the US, two
patent applications pending inthe US, and trying to monitor
all the dates that areassociated with that, along with
all the dates for products B.
For the patent applications forproducts B and C, it can start
(12:43):
to get pretty tricky becausethey're going to be at various
stages.
You have different timelinesfor responding to office actions
.
Then if the companies also filethese patent applications
internationally, that's going toadd however many applications
you have in the US If you file acorresponding number in other
countries.
Each country is going to haveits own timeline for any office
(13:06):
actions that issue and whenthings need to be filed.
So it can quickly snowball fromjust trying to track one or two
applications all the way upinto dozens of applications that
are pending at the same time.
Speaker 2 (13:18):
And I think that's again for everyone listening.
That's the value of usingMilano IP.
They have the processes and thestructures in place to allow
that process to be smooth andeasy.
Business owners know patent or,I'm sorry, inventors already
know they're incredibly busywith 400 other tasks.
Why take this on yourself aswell, right?
So tell me a little bit aboutMilano IP in reference to your
(13:41):
patents and your services, mario, before we get into our next
segment.
Speaker 3 (13:46):
Yeah, so this is something that we're regularly
versed in.
We're always on the US Patentand Trademark Office website
checking our docket, making surethat we have control of all the
patent applications that wehave going.
We have software systems inplace that automatically update
that as well, and we also haveuh you know regularly work with
associates in other countries sothat if you do want to file
(14:08):
your patents uh internationally,we can take care of that as
well.
Then you have a single point ofcontact here at Milano IP that
will oversee the applicationsworldwide.
Speaker 2 (14:21):
And so now we're going to transition into the fun
part of this segment as well isa segment we call is it
patentable.
So if you guys are on LinkedInwhich you should be you need to
connect with Mario Milano orMilano IP, because he constantly
has good little sections inthere about things in terms of
(14:42):
is it patentable, or thingsthat's happening in the
patenting process, and so whatwe're going to do today is we're
going to talk about a productthat's very close to what we all
have used in some way, shape orform, even at a young age, is a
pair of pliers, so I'm going tobring it up here.
In some way, shape or form,even at a young age, is a pair
of pliers, so I'm going to bringit up here and there they are.
Speaker 3 (15:04):
So I guess the question here is uh, is it
patentable?
Yeah, and so this one I posteduh in regards to design patents.
Now, design patents are thereto protect the ornamental
features of something ratherthan the functional aspects.
And so on the left hand side wesee, you know, a generic set of
pliers, each curve and uh, inthe design is pretty much driven
by function.
You know, it applies leverage,it gives you a pivot point and
(15:28):
makes it more ergonomic.
The jaws are designed to makesure that it can grip onto
something nice and tight, and sothose features would not really
be protectable with a designpatent because they're driven by
function.
Whereas on the right-hand sidewe see that we have that
squiggly line there, and so thatlooks more like an ornamental
(15:49):
feature.
Right, it might not have afunction in there, maybe it's a
ridge that would improve thegrip.
But even if it is, you know,the design of it is what would
be patentable there, becauseeven if it does have some
functional aspects, but there isan ornamental aspect to it as
well, then that's typicallypatentable.
So in this situation I wouldsay the one on the left for a
(16:13):
design patent would beconsidered functional and would
not be patentable.
But on the right hand side thatsquiggly line would be an
ornamental feature and thereforewould be protectable with a
design patent.
Speaker 2 (16:25):
Very good.
So now you guys know it ispatentable or it is not,
depending on what features youadd to it.
So what I want everybody toknow is that you can always
watch this show on MilanoIPcom.
We have the audio version andthe video version.
You can listen to it on any ofthe major podcast platforms.
You can watch it on YouTube.
So we are going to continue tobring the audience information
(16:49):
in terms of patents, trademarks,trade secrets and more, and
it's important that you guyssubscribe, like and comment.
If you hear anything that youhave a question about, by all
means go to LinkedIn, comment onMario's company page and we'll
be able to bring it to the showand ask is it patentable?
Mario, do you have any closingwords before we head out?
Speaker 3 (17:12):
You know always good to hear those questions from the
audience.
We like to hear about what's onthe audience's mind, so please
keep them coming.
Speaker 2 (17:21):
You heard it here first I'm Craig Andrews, that's
Mario Milano, and we will talkto you guys next time.
Bye-bye now.
Speaker 1 (17:30):
Thanks for tuning in to the Secure your Creations
podcast.
Make sure to subscribe andfollow on YouTube and your
favorite podcast app so younever miss an episode.
Leave a comment, like or review.
We'd love to hear your thoughtsor answer any questions.
For more expert legal advice,visit wwwmilanoipcom.
Until next time, is itpatentable?
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