[Patent attorney engineer]

Call us today to protect your invention

Home > Counseling > Technical counsel

Technical Counsel to Strenghten Your Invention

Patents: How To Start

Many people ask us: What to do first, technical development or patent filing?

The answer is clear: First a patent application must be submitted in order to have an earlier filing date, so you have a better chance to get a patent.
If someone else files an application before you - the product you have developed won't help you much.

Furthermore, product development of is more expensive and takes longer, than filing a patent application.

But there are exceptions, for example if there are doubts on the technical implementation, if the technical description is insufficient; in this case, ways for implementing the invention should be investigated, to set up a sound foundation for the patent application. A technical investigation may involve developing a breadboard as a feasibility study, or performing a theoretical analysis. In this case, the patent application should be filed after addressing the technical issues.

An essential requirement for getting a patent granted is an adequate technical description. This is the agreement between the state and the inventor: the inventor reveals his secret, and in return is granted a monopoly limited period. Lacking a proper disclosure of the invention, the inventor does not deserve a patent.

Usefulness Requirements in the United States

The American patent law is more strict in re usefulness: it's not enough that the invention be useful, rather the applicant has the duty to disclose the best implementation of the invention. Noncompliance with this requirement caused patents to be canceled, after grant.

This happened, for example, when the products offered for sale were a better implementation of the invention, than the patent protecting these products.
We can advise you on the technical issues as well as the legal issues related to patentability.

Usefulness- Requirement for Patent Grant

According to patent laws, a patent will be granted only if the application contains a description detailed enough for a person skilled in the art to implement it without undue experimentation.

Accordingly, the patents examiner may refuse a patent application if it seems that it is lacking in this aspect.

A would-be-infringer investigates the technical description to detect a vulnerability which may be exploited to bypass the patent or to demand its cancellation.

Therefore, before initiating an infringement suit, the wise patent owner will review his patent and reinforce it if required, so the patent has a better chance of surviving a legal fight. Improvements before the Patent Office are so much more easier to implement, than protecting a patent in Court.

Sometimes a patent application may include some unclear substantive issues. If the examiner is not convinced, the examination may take a very long time indeed.


New book on patents and innovation

The book discloses how you can profit from your ideas.
How to evaluate your idea, how to protect and commercialize it.

The new book is available online at Amazon stores




Technical and Engineering Counsel
by an electronics engineer with R&D experience in industry

Accelerated Examination
Why it's better to get a registered patent earlier

Patents and Applications Revival
Your patent become abandoned? It may be possible to save it.

Second Opinion
Is the examination floundering? Are you otherwise dissatisfied? You might wish to consider another approach or strategy



United States


PCT Application

Europe EPO




Service Marks

Innovative methods

Patents Game
The most effective way of learning is by experience. This fascinating game will teach you about patenting, while saving you precious time and money

How to achieve protection stronger than patent, using two or more IP instruments simultaneously

How to compare large and complex patents? How to efficiently draft the claims? Our novel method assists the patent attorney

Contact Us

Terms of Use
for using this website

Patents Portfolio Management
How to get more from your patents and applications, to minimize conflicts and achieve synergy


Eng. Marc Zuta, Patent attorney

Tel. 03-9226767 | Fax 03-9192287 | Mobile: 0522-720039

marc@patent4u.co.il | www.patent4u.co.il | Skype: patent4u