Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

Non-Provisional Patent Applications

Non-provisional patent applications are "formal" applications.  They are examined for patentability and become patents if granted.

To qualify for a patent, an invention must be:

  1. useful
  2. novel
  3. not-obvious

In addition the application must be definite, enable one of ordinary skill in the art to make, and include what the applicant thinks is the best mode.

Searches can be used to predict what will happen within the patent office.

Almost every patent application includes a round of arguments with the Examiner.  Rejections are reported in an "office action".

If the Examiner cannot be persuaded to allow an application, the Examiner's rejection can be appealed to the Board of Patent Appeals and Interferences.

The most critical section of a non-provisional patent application is the claims.  Claims are used to determine what is actually protected by a patent.  A good attorney writes claims that broadly describe the invention but that do not encompass the prior art.  Writing quality claims directly affects whether a patent will be rejected or allowed and whether the resulting patent has any commercial value.