Patent Services

Tolar Harrigan & Morris LLC provides a vast, comprehensive array of patent-related services, including drafting, filing, and prosecuting patent applications, performing patentabilty searches, rendering written legal patentability opinions, engaging in aggressive patent infringement litigation and handling matters before the Patent Trial and Appeal Board. We also negotiate and draft licensing agreements on behalf of our clients.

To be patentable, an invention must be new or “novel,” and “non-obvious.” An invention is not “novel” if it was described in any printed publication, such as magazine articles, a patent or published patent application, publicly available or used, or was described in an issued patent or published patent application filed by another before an inventor files a patent application (“first-to-file” rule). An exception to the foregoing applies for the applicant’s own publications or public-use activity whereby he or she must file a patent application within one year of the earliest public use or publication date. Therefore, because of the “first-to- file” rule and that an inventor’s own disclosures or activities can invalidate all patent rights, promptly filing a patent application as soon as possible is extremely critical, particularly if an invention was recently publicized or offered for sale. Obviousness determinations are more complex but typically any changes in the size, shape or material of construction of an existing product are considered obvious modifications and therefore unpatentable.

Tolar Harrigan & Morris LLC can assist an inventor with searching the available files at the U.S. Patent & Trademark Office to determine if an invention is “novel” and “unobvious.” Generally, it is highly recommended that a patent search be performed prior to filing a patent application. Although you are under no obligation to conduct a search, a properly performed patent search can minimize the effort, time and expense associated with prosecuting a patent application if the invention is ultimately not patentable. Please note however that an examiner at the U.S. Patent & Trademark Office will perform a search once an application is filed irrespective of whether the inventor performed one.

There are three types of patent applications: (1) Utility Patents, (2) Design Patents, and (3) Plant Patents. Utility patents are the most common and apply to any new or improved process, machine, article of manufacture, or compositions of matter. Design Patents afford protection for new, original and ornamental designs for articles of manufacture. An example would be a chair that is shaped like a football helmet. Plant patents generally protect any distinct and new variety of plant.

Sometimes filing a provisional patent application is an attractive option for certain inventors depending upon the circumstances. A provisional patent application is less expensive than a regular utility patent application and therefore minimizes the initial investment necessary to secure an effective filing date for an invention. A provisional patent application is effective for one year during which time a regular utility application must be filed. If a utility application claiming priority from the provisional patent application is not filed within one year, the provisional patent application expires. Filing a provisional patent application allows an inventor to advertise and publicly assert that the invention is “patent pending.“ Therefore, a provisional patent application can initially provide a less expensive means of promoting an invention under “patent pending” status to assess marketability. However, since a provisional patent application can never mature into a patent, filing a provisional patent application ultimately increases an inventor’s overall expenses since two applications must be filed in order to secure patent protection. Though initially less expensive and formal than a utility application, a provisional patent application must comply with the same rules that apply to a utility application with respect to describing the invention in detail; an inadequate disclosure in a provisional patent application can yield disastrous results, including not securing an effective filing date for the invention. The attorneys at Tolar Harrigan & Morris LLC work diligently with their clients to assure that provisional patent applications comply with all disclosure rules and that the application adequately protects and secures an inventor’s effective filing date.

The attorneys at Tolar Harrigan & Morris LLC each have vast litigation experience in various patent-related matters including enforcing and defending patents against infringers in U.S. District Courts, defending patents and appealing patent rejections before the Patent Trial and Appeal Board, and litigating assignment and licensing disputes.