01
Invention Assessment & Patentability
Evaluating invention disclosures against the prior art, so a company knows if an idea is novel and non-obvious enough to pursue and which instrument, patent or trade secret, serves the business better.
Corporate & Business Law
Patent Counseling & Prosecution
Patent strategy for companies and inventors, covering invention assessment, portfolio planning, and post-grant matters, coordinated with registered patent counsel so the protection fits the business it is meant to defend.
The United States gives an inventor twelve months after a public disclosure to file; most of the world gives none. A product shown at a trade show before its priority date is still patentable in the United States and almost nowhere else, so the filing decision belongs on the product calendar.
Drafting an application and arguing it before the examiner is the work of a patent attorney or agent registered to practice before the U.S. Patent and Trademark Office, and we coordinate with registered patent counsel for it. Ours is the strategy around it: whether an invention is worth the disclosure a patent requires or is better kept as a trade secret, what a provisional buys in the twelve months before the non-provisional is due, and which markets justify national-phase entry at the PCT's 30-month deadline.
The term runs twenty years from the earliest non-provisional filing, and maintenance fees fall due at three and a half, seven and a half and eleven and a half years after grant, so an unpruned portfolio pays for claims nobody would assert. We weigh patent spend against the rest of the IP estate.
What we do
Patent counseling across the lifecycle, from the first invention disclosure to post-grant strategy, with registered patent counsel brought in where examination requires it.
02
Portfolio Strategy & Budgeting
Building a patent portfolio with intent, deciding what to file, where, and on what timeline, so the program tracks the company's products and markets rather than accumulating filings for their own sake.
03
Freedom-to-Operate Analysis
Mapping the third-party patents a product or process might infringe before a launch or a financing, so a company can design around obstacles, price the risk, and avoid discovering it in a demand letter.
04
Prosecution Coordination
Directing the drafting and examination workstream alongside registered patent counsel, including claim scope, prior-art responses, and examiner strategy, so the application advances toward claims that are worth holding.
05
Post-Grant & PTAB Matters
Maintenance, continuations, and validity challenges, including inter partes review and other proceedings before the Patent Trial and Appeal Board, coordinated with registered patent counsel and our litigation bench.
06
International Filing Strategy
Structuring cross-border protection through the Patent Cooperation Treaty and country-by-country filings, coordinating with locally admitted patent counsel in the jurisdictions where a company needs rights.
What you should know
The realities that shape a patent strategy before the first filing.
01
Filing is registered work
Preparing and arguing applications before the USPTO is reserved to registered patent attorneys and agents. We coordinate with registered patent counsel for examination and own the strategy that surrounds it.
02
The claims are the asset
A patent protects only what its claims cover. Scope is won or lost in prosecution, and the claims that survive the examiner, rather than the abstract or the drawings, define the right you hold.
03
Timing is unforgiving
An offer to sell the invention starts the one-year clock even if the buyer signed a confidentiality agreement; the sale need not disclose the invention to count as prior art. Pilot customers and distributor term sheets are filing triggers, so the patent decision is made before the first order, not after it.
04
Patenting is a business choice
A patent application publishes eighteen months after its earliest filing date whether or not a patent issues, unless the applicant forgoes foreign filing and requests non-publication. Choosing a patent is choosing disclosure; an invention competitors cannot reverse-engineer may be worth more as a trade secret, which is never published.
05
Patents are territorial
A U.S. patent confers no rights abroad. International protection requires filings country by country or through the Patent Cooperation Treaty, on timelines that have to be planned from the outset.
06
A grant is not the end
A petition for inter partes review must be filed within one year of service of an infringement complaint, and the PTAB may institute on a reasonable likelihood that at least one claim is unpatentable. Patent owners keep a continuation pending so claim scope can still be adjusted after the parent issues.
Anatomy of a claim
How this work runs
From invention disclosure to a claim that holds.
- Stage 01
Disclosure & Decision
The inventor's disclosure is assessed against the prior art and against the business. We ask if the idea is novel and non-obvious enough to pursue, and if a patent is the right instrument or an unfiled trade secret protects it better. The clock matters here, because public disclosure and offers for sale start deadlines that can foreclose the right.
- Stage 02
Drafting & Filing
Claims are drafted with registered patent counsel to cover what competitors would build as well as what the inventor made. A provisional or non-provisional is filed to fix the priority date, and a PCT decision is made for the jurisdictions where rights will matter.
- Stage 03
Examination & Argument
The examiner rejects and counsel answers. Office actions, prior-art distinctions, and claim amendments are traded until claims are allowed or abandoned, and every narrowing amendment is weighed against the enforcement and licensing value of what survives.
- Stage 04
Grant, Maintenance, Defense
Issuance opens the long game of maintenance fees, continuation filings to keep claim scope adaptable, and readiness for inter partes review at the PTAB. From here the portfolio is managed as an asset that an acquirer, licensee, or challenger will one day test.
You do not own the invention. You own the claims that survived the examiner.
12 months
the grace period after an inventor's own public disclosure before U.S. patent rights are barred
Frequently asked
Common questions on patent counseling and prosecution.
What is patent prosecution?
Patent prosecution is the process of obtaining a patent. It means preparing and filing an application, then responding to the examiner's rejections and objections at the patent office until the claims are allowed or the application is abandoned. It pairs technical drafting with legal argument, and the scope of the claims that survive prosecution is what ultimately defines the protection a patent provides.
Does Hart David Carson LLP draft and file patent applications directly?
Drafting and filing patent applications and arguing them before the examiner is the work of a patent attorney or agent registered to practice before the U.S. Patent and Trademark Office. We coordinate with registered patent counsel for that examination work and own the strategy around it, meaning invention assessment, portfolio planning, budgeting, and how the patent program fits the company's commercial and competitive goals.
How does a patent strategy fit into a company's broader IP plan?
A patent trades disclosure for a twenty-year right to exclude. A trade secret trades the right to exclude for secrecy that can last indefinitely but ends the day a competitor reverse-engineers the product or an employee walks out with it, and since 2016 the Defend Trade Secrets Act gives a federal claim when that happens. The test for each invention is practical: if the product reveals how it works, patent it; if it does not and the company can keep it secret, consider not filing. Trademarks protect the name the product is sold under and copyright protects the code and content around it, so the budget is allocated across all of them against what a competitor, an acquirer or a court would test first.
What is a freedom-to-operate analysis?
Freedom-to-operate analysis examines whether bringing a product or process to market would infringe patents held by others. It is distinct from patentability, which asks if your own invention can be patented. Mapping the third-party patents early, before a launch or a financing, lets a company design around obstacles and price the risk on its own timetable.
What happens after a patent is granted?
A granted patent has to be maintained with periodic fees, and it can be challenged through inter partes review and other post-grant proceedings before the Patent Trial and Appeal Board, where validity is contested. We advise on portfolio maintenance and on these matters before the PTAB, coordinating with registered patent counsel and our litigation team where a dispute moves toward proceedings or court.
Do patents protect an invention outside the United States?
No. A patent is territorial, and a U.S. patent confers no rights abroad. Companies that need international protection pursue filings country by country or through the Patent Cooperation Treaty, on timelines that have to be planned early. We help structure an international filing strategy and coordinate with locally admitted patent counsel in the relevant jurisdictions.
Related
Adjacent intellectual property and licensing practices.
Trademark, Copyright & Advertising
Brand and content protection, with trademark clearance and registration, copyright strategy, and advertising compliance for the marks and creative work that carry a company's reputation.
Explore →Intellectual Property Due Diligence
IP diligence for financings, acquisitions, and licensing deals, verifying ownership, scope, and encumbrances so the assets behind a transaction are what they are represented to be.
Explore →Intellectual Property, Licensing & Trademark
The full IP practice, which identifies, protects, and monetizes patents, trademarks, copyrights, and trade secrets, and handles the licensing that turns them into revenue.
Explore →Reviewed by Jonathan D. Herpy, Sr., Senior Partner · Last updated October 2026 · Educational overview · Not legal advice