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do I get a better chance of my patent being accepter in the

 
Alex Reese's Avatar
  • Answered by:Alex Reese
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in Intellectual Property Law

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Customer Question

do I get a better chance of my patent being accepter in the USA, if the original patent is done there? or is it the same if I patent in Mexico and then translate and register the patent in the USA?

 

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Country relating to Question: Mexico

Submitted: 307 days and 2 hours ago.
Category: Intellectual Property Law
Value: MX$645
Status: CLOSED

Accepted Answer

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Expert:  Alex Reese replied 307 days and 2 hours ago.


Alex Reese :

hello

Alex Reese :

the same standards apply to both situations

Alex Reese :

so the chances are the same

Customer :

Do I get a better product in the process of refining the writing of the patent if the process is done in english and with a US law firm?

Customer :

What I mean is: I wrote a draft of the patent myself but I need refinement of it because I know nothing of claims; I also have never done this proses (of patenting) before. I would need guidance and, since my primary goal is the US market, I don't know how much guidance and what is the best way to go about it.

Alex Reese :

yes of course, if you are filing a patent in the US it must be prepared by a USPTO registered, U.S. patent attorney

Alex Reese :

you should consult with a U.S. patent attorney or agent, there are many in California for example, as well as Washington DC

Alex Reese :

writing a good patent takes many years of experience and knowledge of patent law

Alex Reese :

...not to mention knowledge of the rules of the USPTO

Customer :

do you know how much this agency would charge (more or less)

Alex Reese :

it depends on the attorney's rates and the complexity of the invention, but a utility patent done by a small law firm or solo attorney will cost at least $4000

Alex Reese :

and that is for relatively low complexity

Customer :

wow

Alex Reese :

most small firms charge around $6500 for a typical patent

Alex Reese :

but it depends on many things

Alex Reese :

but its expensive either wya

Customer :

even if I wrote the patent myself and would just need guidance?

Alex Reese :

the patent attorney will generally either prepare and file your application or not....there really isn't any "guidance" service

Customer :

but I have done most of the work already

Alex Reese :

you might find someone that is will to offer some consulting, but it would still cost a lot of money for them to review your invention and give you advice....but really that sort of thing is not proper

Alex Reese :

if your work is useful then it may allow you to save the attorney some work and negotiate a better price

Alex Reese :

but even if you did a good job desdcribing thte invention, a lot more work is required

Alex Reese :

most likely, what you wrote will have to be rewritted and re-oirganized, and a lot of new material will have to be written

Customer :

how would I go about it? I am a bit afraid that I send the patent to someone I don't know

Alex Reese :

well you could work with a firm in mexico that deals with US attorneys and patnet filings...or just start calling some US patent attornets

Alex Reese :

attorneys

Alex Reese :

you can find many do web searches or on www.lawyers.com

Alex Reese :

"patent agents" and sole practitioners often offer lower rates

Customer :

If it is a rubber patent, do you know if there are experts in this field?

Alex Reese :

patent attorneys have all kinds of backgrounds, so yes there will be some out there

Customer :

But you do think that I need to go through one of this agents?

Alex Reese :

you need to use either a patent agent or a patent attorney

Alex Reese :

either will work

Customer :

what is the difference?

Alex Reese :

patent agents did not go to law school, they are just registered to prosecute patents at the USPTO

Customer :

so maybe the best thing is to go to an agent that is an expert in rubber?

Alex Reese :

that would be fine

Customer :

Do you know any?

Customer :

Do an agent charge less than a law firm? usually

Alex Reese :

agents charge somewhat less usually

Alex Reese :

no I can't recommend anyone specifically

Alex Reese :

do some online searches and speak to some over the phone and by email

Customer :

thanks

Customer :

Can I still ask questions all through this week if I need to?

Alex Reese :

yes but you should submnit a new question

Customer :

ok

Alex Reese :

and don't forget to click ACCEPT on this one

Alex Reese :

best of luck

Expert TypeLawyer
Category: Intellectual Property Law
Pos. Feedback: 98.9 %
Accepts: 2428
Answered: 7/3/2012

Experience: Experienced in intellectual property law

Ask this Expert a Question >
Customer replied 303 days and 19 hours ago.

Alex, Do you think that it is a good idea to file my PCT patent here in Mexico first? Contrary to the USA where it has to be done by a registered lawyer, here, you can do it directly in the government office. I have it drafted enough that I think that I can do it.

I want to work it further with an specialist in the US but, I would have something legal before I start to send through emails my un-filed invention.

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Expert:  Alex Reese replied 303 days and 19 hours ago.

yes, it seems it would be easier for you to file in Mexico first so that is likely the best option for now.

Customer replied 301 days and 3 hours ago.

Alex, what would happen if we change the patent (claims, description, figures etc...) from when I submit the draft in Mexico to when I work it further with an specialist?

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Expert:  Alex Reese replied 301 days ago.

Unless you want to file a separate, new patent, then you really can't change the PCT because it needs to be the same patent application essentially, except for modifications made for differences in patent format/styles for different countries

Customer replied 301 days ago.

I don't know how to write the claims, can I write one core claim in the first draft that I summit and then add more claims once I have worked with a knowledgeable expert?

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Expert:  Alex Reese replied 300 days and 17 hours ago.

Hi, there are some technical problems so I am sending my answer this way...yes, it seems it would be easier for you to file in Mexico first so that is likely the best option for now.

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Expert:  Alex Reese replied 300 days and 15 hours ago.

Changing the claims could be a problem and would likely require it to be a separate patent.

Customer replied 300 days and 3 hours ago.

thanks

 
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