Frequently Asked Questions
U.S. Patent Services and the Patent Process
Browse the sections below to find answers to common questions about Mattis IP, U.S. patent applications, filing strategy, USPTO examination, international representation, fees, and working together. General information only: This FAQ does not create a practitioner-client relationship or replace advice concerning a specific matter.
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Mattis IP PLLC is a Michigan-based patent practice focused on preparing, filing, and prosecuting U.S. patent applications before the United States Patent and Trademark Office (USPTO). The firm serves inventors, startups, established companies, engineering-driven businesses, and foreign patent firms seeking U.S. patent representation.
Mattis IP emphasizes direct communication with the practitioner handling your matter, technical understanding, responsive service, and cost-conscious flat-fee arrangements for many services. The firm’s practice is dedicated to patent matters and is designed to provide practical, high-quality support throughout the patent application process.
A practitioner who understands both engineering and patent law can often identify inventive concepts more efficiently and translate technical details into a well-structured patent application.
Mattis IP is led by a USPTO Registered Patent Agent with more than 15 years of engineering experience in technology-driven industries and more than 10 years of experience preparing and prosecuting U.S. patent applications. This combination helps bridge the gap between engineering and patent law, allowing technical innovations to be described accurately while developing a claim strategy directed toward meaningful patent protection.
Mattis IP provides services related to U.S. patent preparation and prosecution, including drafting patent applications, filing provisional and non-provisional applications, responding to USPTO Office Actions, examiner interviews, continuation practice, appeals before the USPTO when appropriate, and coordination with foreign patent firms and international clients seeking U.S. patent protection.
Mattis IP does not provide services outside the scope of its patent practice. This generally includes trademark registration, copyright matters, litigation, licensing negotiations, freedom-to-operate opinions, validity opinions, and other legal services outside the firm’s patent prosecution practice. When appropriate, clients may be referred to qualified professionals for those matters.
Mattis IP works with startups, established companies, research organizations, independent inventors ,and foreign patent firms requiring U.S. patent representation. Clients may be located anywhere in the world, and matters are routinely handled remotely through email, video conferencing, and other online collaboration tools.
Patentability depends on more than whether an idea is useful or commercially promising. In general, the claimed invention must fall within patent-eligible subject matter and satisfy requirements such as novelty, non-obviousness, and adequate technical disclosure. The analysis is highly dependent on the specific features of the invention and what was already publicly known before the relevant filing date.
During an initial discussion, Mattis IP can learn about the invention, the problem it addresses, how it differs from known approaches, and the client’s business objectives. That discussion may help identify issues that deserve closer attention, but it is not a guarantee that the invention is patentable or that a patent will ultimately be granted. The United States Patent and Trademark Office (USPTO) makes the patentability determination after examining the filed application.
A useful starting package is a clear explanation of the invention, the problem it solves, and the features believed to distinguish it from existing products or methods. Helpful materials may include sketches, diagrams, photographs, technical notes, presentations, test results, product requirements, flowcharts, source materials, or an existing draft. The materials do not need to be polished.
It is also important to identify all individuals who contributed to the inventive concepts and to disclose any relevant dates, including planned launches, demonstrations, sales, publications, conference presentations, crowdfunding campaigns, or earlier patent filings. Known related products, publications, and patents should also be identified. Complete and accurate information allows Mattis IP to understand the technology more efficiently and to discuss an appropriate path forward.
Mattis IP treats information received in connection with evaluating or handling a potential patent matter with appropriate confidentiality. Registered patent practitioners are subject to professional obligations concerning confidential information.
However, sending information through a website form or email does not by itself confirm that Mattis IP has accepted the matter or created a practitioner-client relationship. Representation begins only after conflicts and scope are addressed and the engagement is accepted. Until then, prospective clients should avoid sending unnecessary highly sensitive information and should first provide enough information to identify the parties, the general technology, relevant deadlines, and the assistance requested. Once an engagement is established, secure and practical methods can be used to exchange the detailed technical materials needed for the work.
No. A working prototype is not ordinarily required to file a U.S. patent application. An inventor may file before building the final product, provided the invention has been developed in sufficient detail to be described clearly and completely. The application should explain how the invention is made and used with enough technical detail to support the requested patent protection.
A prototype can still be helpful. Building or testing one may reveal alternative designs, practical constraints, additional inventive features, or improvements that should be included in the application. The key question is not whether a physical model exists, but whether the inventor can provide a sufficiently developed and technically meaningful disclosure. A vague goal or desired result, without a workable explanation of how it can be achieved, may not provide an adequate basis for a patent application.
The initial discussion is intended to understand the invention, the people and organizations involved, relevant filing or disclosure history, upcoming deadlines, and the client’s commercial objectives. Mattis IP may ask how the invention works, which features appear most important, what alternatives have been considered, and how the technology differs from known approaches.
The discussion also helps determine whether the requested work fits within Mattis IP’s U.S. patent practice and whether additional information is needed before defining the engagement. When the matter is a suitable fit, the next steps may include confirming the scope of work, identifying the expected client responsibilities, establishing a flat fee or other fee arrangement, and issuing an engagement letter. The initial discussion is not a promise of representation, patentability, or allowance, and no filing deadline should be assumed to be protected until Mattis IP has expressly accepted the engagement.
A U.S. patent is a right granted by the federal government for a qualifying invention. It generally gives the patent owner, for a limited period, the right to exclude others in the United States from making, using, selling, offering to sell, or importing the patented invention. A patent does not automatically give its owner permission to make or sell a product; other patents, regulations, or contractual restrictions may still apply.
In exchange for these potential exclusionary rights, the patent application must describe the invention in sufficient detail. The scope of protection is defined principally by the patent claims, which are examined by the United States Patent and Trademark Office (USPTO).
The United States has three principal types of patents:
- Utility patents protect new and useful processes, machines, articles of manufacture, compositions of matter, and qualifying improvements.
- Design patents protect new, original, and ornamental designs for articles of manufacture.
- Plant patents protect certain new and distinct varieties of plants that are asexually reproduced.
Most of Mattis IP’s work concerns utility patent applications for engineering- and technology-based inventions. The appropriate form of protection depends on what is inventive: how something works, how it is constructed, how it is used, or—in the case of a design patent—how it looks.
A utility patent protects functional and technical aspects of an invention. Examples may include mechanical devices, electrical systems, manufacturing methods, control processes, software-related technologies, chemical compositions, and improvements to existing products or processes.
To obtain a utility patent, an applicant generally files a non-provisional utility patent application that includes a written description, drawings when needed, and claims defining the requested protection. The USPTO examines the application for compliance with legal requirements, including whether the claimed invention is eligible, useful, adequately described, novel, and nonobvious. Filing an application begins the examination process but does not guarantee that a patent will be granted.
A provisional patent application can establish an early U.S. filing date for disclosed subject matter. It is not examined, does not contain claims as a formal requirement, and does not mature into a patent by itself. A corresponding non-provisional application must be filed within 12 months to claim the benefit of the provisional filing date.
A non-provisional patent application is examined by the USPTO and may ultimately issue as a patent. It must satisfy more formal requirements and should include a carefully developed specification, drawings where appropriate, and patent claims. A provisional filing is useful only to the extent that it adequately describes and supports the subject matter later claimed. It should therefore be treated as a substantive patent filing—not merely a brief idea summary.
Inventorship and ownership are different concepts. The actual inventors must be correctly identified in the patent application. Ownership, however, may be transferred by a written assignment—for example, from an inventor to an employer, startup, or other company.
The ownership analysis can depend on employment agreements, assignment documents, company formation records, and other facts. The applicant named in a patent application may be the inventor, an assignee, a person to whom the inventor is obligated to assign, or another party permitted by law. Mattis IP handles patent preparation and prosecution before the USPTO but does not provide general contract or ownership-dispute advice. Separate legal counsel may be appropriate when ownership is unclear or contested.
An inventor is an individual who contributed to the conception of at least one claimed invention. Inventorship is based on the substance of the inventive contribution—not job title, funding, supervision, authorship, or company ownership. A company cannot be an inventor.
The applicant is the person or entity authorized to file and pursue the patent application. An applicant may be the inventor, a company that received an assignment, a party to whom the inventor is obligated to assign, or another qualifying party. The inventor and applicant may therefore be different. Correctly identifying both is important because errors can affect USPTO records, ownership, and the enforceability of resulting rights.
Yes. A patent application may name multiple joint inventors when each person contributed to the conception of at least one claimed invention. The inventors do not need to contribute equally, work at the same time or location, or contribute to every claim.
A person is not an inventor merely because that person followed instructions, performed routine testing, managed a project, funded the work, or recognized the value of the invention. Conversely, a contributor should not be omitted simply because the contribution was limited to one claimed feature. Inventorship should be evaluated against the claims and revisited if the claims materially change during prosecution.
Because the United States generally follows a first-inventor-to-file system, filing early can be important. A practical filing point is often reached when the invention is developed well enough to be described clearly and in sufficient technical detail.
Waiting too long may create risks. Another party may file first, or the inventor may publicly disclose, offer for sale, sell, demonstrate, or publish the invention before an application is filed. On the other hand, filing before the invention is adequately developed can result in an application that does not fully support later claims or important variations.
The timing decision should therefore balance urgency against technical completeness. Mattis IP can work with inventors and engineering teams to identify the concepts that are ready for filing and determine whether a provisional or non-provisional application better fits the circumstances.
Public disclosure before filing can seriously affect patent rights. Examples may include publishing an article, posting technical information online, presenting the invention at a conference or trade show, offering it for sale, selling it, or using it publicly.
U.S. law may provide a limited one-year grace period for certain inventor-originated disclosures, but relying on that grace period can create uncertainty and may not preserve rights outside the United States. Many foreign jurisdictions generally require filing before public disclosure. A disclosure may also give competitors useful information or create disputes about what was disclosed and when.
The safer approach is normally to file an adequately supported patent application before any nonconfidential disclosure. If a disclosure has already occurred, Mattis IP should be informed promptly of its exact content, date, audience, and circumstances so that the potential consequences and available filing options can be evaluated.
A provisional application can be useful when an early U.S. filing date is important but additional development, testing, funding, or business evaluation is expected. It can establish a potential priority date and allow use of the term “Patent Pending” while the applicant prepares for a corresponding non-provisional filing.
A provisional application is not examined and does not itself become a patent. To preserve its potential benefit, a corresponding non-provisional application generally must be filed within 12 months. Just as importantly, the later application receives the provisional filing date only for subject matter that the provisional application adequately describes and supports.
For that reason, a provisional application should not be treated as an informal placeholder. It should explain the invention in sufficient detail and include relevant alternatives, drawings, and technical features. In some circumstances, proceeding directly with a non-provisional application may be more efficient. Mattis IP can help determine which route better supports the client’s objectives.
Often, yes—but international filing decisions are deadline-sensitive. A U.S. filing may serve as the first application from which priority is claimed in later foreign applications. For utility inventions, foreign or international applications are commonly filed within 12 months of the first qualifying application. Design applications generally have a shorter priority period.
Two commonly used approaches are direct filings in selected countries under the Paris Convention and filing an international application under the Patent Cooperation Treaty (PCT). A PCT application does not create a worldwide patent, but it can preserve the opportunity to pursue protection in participating jurisdictions and defer many national filing decisions.
Foreign filing laws, security-review requirements, ownership issues, and commercial priorities may affect the strategy. Mattis IP can coordinate U.S. patent work and international filing workflows with foreign patent firms or other qualified professionals. Clients considering foreign protection should raise that objective at the beginning of the engagement rather than waiting until a deadline approaches.
Yes. U.S. citizenship, residency, or a U.S. business location is not generally required to apply for and own a U.S. patent. Foreign inventors, companies, universities, and other organizations may seek U.S. patent protection, provided the applicable filing, inventorship, ownership, and USPTO requirements are satisfied.
For proceedings before the USPTO, a foreign applicant may work with a U.S.-registered patent practitioner. Mattis IP works remotely with clients worldwide and can communicate directly with inventors, engineering teams, in-house counsel, and foreign patent firms. Documents and technical materials can generally be exchanged electronically, and meetings can be conducted by video conference.
International matters may also involve priority claims, translations, assignments, powers of attorney, foreign filing restrictions, and coordination with counsel in other jurisdictions. Addressing these issues early helps establish an orderly U.S. filing process and reduces the risk of missed formalities or deadlines.
A strong patent application does more than describe the preferred version of an invention. It should explain the invention clearly, identify the technical problem being addressed, describe how the invention works, and disclose meaningful alternatives and variations. The application should also provide enough technical detail to support claims of appropriate scope and to reduce the risk that important features are left unsupported.
The written description, claims, and drawings should work together as one coordinated disclosure. The application should be technically accurate, internally consistent, and drafted with future examination in mind.
No drafting approach can guarantee allowance or a particular scope of protection. However, careful preparation at the outset can create a stronger foundation for examination before the USPTO and for later continuation practice when appropriate.
Patent claims are the numbered statements at the end of a patent application that define the subject matter for which protection is requested. The detailed description and drawings explain the invention, but the claims establish the legal boundaries that the USPTO examines and that may ultimately define the scope of an issued patent.
Independent claims generally set out the broader combination of features considered necessary to define an invention. Effective claim drafting requires both technical understanding and familiarity with USPTO practice.
Claims may change during examination in response to prior art, clarity issues, or other objections raised by the examiner. For that reason, the original application should contain sufficient detail to support different claim approaches without introducing new matter later.
Patent drawings often communicate structure, relationships, operating sequences, and alternative arrangements more efficiently than text alone. For mechanical and electrical inventions, drawings may be central to understanding how components interact. For software-related or process inventions, flowcharts, system diagrams, and functional block diagrams may help explain the operation of the invention.
The drawings should be consistent with the written description and should show the features needed to understand and support the claimed subject matter. They do not need to resemble marketing illustrations. Their purpose is to provide a clear technical disclosure that complies with applicable USPTO requirements.
Mattis IP can help determine which views or diagrams are appropriate and can coordinate preparation of formal patent drawings when needed. Clients may also provide sketches, CAD images, photographs, presentations, or other materials as a starting point. Those materials are reviewed and adapted as appropriate for the patent application.
Client participation is essential because inventors and technical teams know the technology, its development history, and its practical advantages. The process usually begins with written materials and a discussion of the invention, including how it works, what alternatives were considered, and which features may distinguish it from existing approaches.
Mattis IP then develops the application and may request additional technical information where the disclosure needs clarification or expansion. Clients typically review a draft before filing to confirm technical accuracy, terminology, inventor information, and whether important alternatives have been included. Final filing decisions, including the content of the application and claims, are made in consultation with the client after the draft has been reviewed.
Yes. Mattis IP can review and revise an existing draft when the work falls within the firm’s U.S. patent practice. The draft may have been prepared by an inventor, an engineering team, a foreign patent firm, or another practitioner. Depending on the condition of the document, the work may involve reorganizing the specification, correcting terminology, strengthening technical support, revising claims, aligning the drawings and description, or adapting a foreign application for U.S. filing requirements.
Review or revision cannot guarantee that the application will be allowed or that the USPTO will accept a particular claim scope. The objective is to prepare the strongest practical filing based on the information available and the client’s filing strategy.
After filing, the USPTO reviews the application for formal requirements and assigns it to an examining group based on the technology. A patent examiner then evaluates the claims and supporting disclosure under applicable patent laws and rules. The examiner may search earlier patents, published applications, and other references and may issue an Office Action explaining any objections, rejections, or formal requirements.
Examination is an interactive process. Depending on the issues raised, the applicant may respond with legal and technical arguments, claim amendments, supporting explanations, or a combination of these approaches. An examiner interview may also be useful to clarify the invention, discuss cited references, or explore possible claim amendments. The process may involve more than one Office Action before the application is allowed, abandoned, continued in another application, or taken to appeal.
An Office Action is an official written communication from a USPTO patent examiner. It may identify formal matters that need correction, object to portions of the application, or reject one or more claims. Common claim rejections may involve prior art, clarity, written-description or enablement requirements, subject-matter eligibility, or claim form.
An Office Action is not necessarily a final determination that the invention cannot be patented. It identifies the examiner’s current position and gives the applicant an opportunity to respond within a specified period. Because deadlines and extension fees may apply, the document should be reviewed promptly. A useful response must address each outstanding issue and should be developed with the overall protection strategy in mind, rather than treating each rejection as an isolated drafting problem.
Yes. Mattis IP prepares and files responses to USPTO Office Actions in utility patent applications. The work may include analyzing the examiner’s cited references and reasoning, reviewing the application and prosecution history, discussing technical distinctions with the inventors, developing arguments, and proposing claim amendments when appropriate.
The objective is not merely to obtain any allowable claim. The response strategy should also consider the commercial and technical value of the claim scope, the support available in the application, and the possible effects of amendments and statements made during prosecution. Mattis IP may also conduct examiner interviews when they are likely to clarify the issues, improve communication with the examiner, or advance the application toward resolution.
Yes. Mattis IP may take over the prosecution of an existing U.S. patent application, including an application originally prepared or handled by another practitioner. Before accepting the matter, Mattis IP generally reviews the application, claims, prosecution history, current deadlines, ownership or applicant information, and any outstanding USPTO communications.
A change in representation may require appropriate USPTO filings, such as a new power of attorney or correspondence information. The feasibility and scope of the engagement depend on the application’s status and the time available before any deadline. Early contact is therefore important, particularly when an Office Action response, appeal deadline, issue fee, or abandonment-related deadline is approaching.
Yes. When appropriate, Mattis IP may prepare and pursue an appeal from an examiner’s rejection to the USPTO Patent Trial and Appeal Board (PTAB). An appeal is generally considered after the claims have been rejected more than once and the applicant believes the examiner’s position should be reviewed by the Board.
An appeal commonly involves filing a notice of appeal and an appeal brief that identifies the disputed rejections and explains why they should be reversed. The examiner may reconsider the case or issue an examiner’s answer, and the appeal may ultimately be reviewed by a panel of administrative patent judges. Appeal is not the best course in every case; amendment, continued examination, a continuation application, or another prosecution strategy may be more appropriate depending on the facts. Mattis IP evaluates these options with the client before proceeding.
No. Filing establishes a pending application, but it does not guarantee allowance or issuance of a patent. The USPTO independently determines whether the claimed invention satisfies the applicable legal requirements. The result may depend on the prior art located during examination, the quality and scope of the original disclosure, the claims presented, and the arguments or amendments made during prosecution.
Mattis IP works to prepare and prosecute applications carefully and to distinguish the claimed subject matter to the best of its ability. Nevertheless, no practitioner can guarantee that particular claims will be allowed, that a patent will issue, or that any issued patent will have a particular commercial value or enforceable scope.
Yes. Mattis IP works directly with foreign inventors, startups, established companies, research organizations, and engineering teams seeking U.S. patent protection. Meetings, document review, and day-to-day communications can generally be handled through email, video conferencing, and secure electronic collaboration.
Mattis IP can assist with preparing and filing a new U.S. application, entering the U.S. national stage of a Patent Cooperation Treaty (PCT) application, filing a U.S. application that claims priority to an earlier foreign application, and prosecuting an existing U.S. application before the USPTO. The appropriate filing route depends on the existing application history, priority dates, disclosure history, and the client’s broader international strategy.
Yes. Mattis IP serves as U.S. patent counsel for foreign patent firms and practitioners that need a registered U.S. Patent Agent to handle matters before the USPTO. The engagement may involve filing a U.S. counterpart application, adapting a foreign or PCT application to U.S. practice, preparing claim amendments, responding to Office Actions, conducting examiner interviews, or pursuing an appeal when appropriate.
The working arrangement can be tailored to the referring firm’s preferences. Mattis IP may communicate primarily with the foreign associate, work jointly with the foreign associate and the client, or provide focused U.S. prosecution support while the foreign firm remains the principal client contact.
Yes. Mattis IP can coordinate with local patent counsel, in-house patent professionals, engineering teams, and business decision-makers. This coordination can help maintain consistency among related applications while accounting for differences between U.S. patent practice and the requirements of other jurisdictions.
For example, the U.S. application may require revisions to claim format, terminology, support for amendments, dependency structure, or the presentation of alternative embodiments. Mattis IP can identify U.S.-specific issues and discuss them with the client’s existing advisers, e.g., in-house attorney in Germany, before filing or during prosecution. Strategic decisions remain tailored to the particular matter and the client’s objectives.
Under USPTO rules effective July 20, 2026, a patent applicant or patent owner whose domicile is outside the United States or its territories generally must be represented before the USPTO by a registered patent practitioner. A registered practitioner may be a U.S. Patent Attorney or a U.S. Patent Agent in good standing before the USPTO.
Mattis IP is led by a USPTO Registered Patent Agent and can represent qualifying foreign applicants in patent matters before the USPTO. Because deadlines and representation requirements can be consequential, foreign applicants should arrange U.S. representation early.
The process normally begins with a review of the relevant documents and deadlines. Depending on the matter, these may include a foreign priority application, PCT publication, international search report, written opinion, existing claims, drawings, prior USPTO correspondence, and instructions from foreign counsel.
After the scope of work is defined, Mattis IP provides an engagement agreement and, for many services, a flat-fee proposal. Drafts and recommended filing or prosecution strategies are then shared electronically for review. Communications can be handled directly with the client, through foreign counsel, or through a coordinated combination of both. Mattis IP aims to provide clear U.S.-practice guidance, responsive communication, and efficient handling across time zones.
Mattis IP provides flat-fee arrangements for many defined patent services. A flat fee gives the client a clear understanding of the professional fee for the agreed scope of work before the engagement begins. The scope, assumptions, included revisions, and any items that would require additional authorization are identified in the engagement agreement or fee proposal.
Some matters cannot be priced reliably until the relevant application, Office Action, prior work, or technical materials have been reviewed. Matters involving an uncertain or changing scope may instead be quoted in stages or handled under another agreed fee arrangement. USPTO filing fees, drawing charges, translation costs, and other third-party expenses are generally separate from professional fees unless expressly included.
Yes. Flat fees are available for many services, including defined application-preparation and patent-prosecution tasks. The precise fee depends on factors such as the complexity of the technology, the quality and completeness of the materials provided, the number and type of claims, the procedural posture of the application, and the amount of work required.
Flat-fee pricing is intended to provide predictability without sacrificing the technical and legal attention required for the matter. Before work begins, Mattis IP defines the scope of the engagement so the client can understand what is included and when additional work would require a separate agreement or fee.
Mattis IP is structured as a focused patent practice. Clients work directly with the USPTO Registered Patent Agent responsible for the matter rather than having the work move through multiple levels of a larger organization. This can support clearer communication, faster technical understanding, and greater continuity from drafting through examination.
The Founder combines more than 15 years of engineering experience with more than 10 years of U.S. patent-practice experience. That combination can be particularly valuable for engineering-driven inventions because the same practitioner can engage with the technology, identify relevant distinctions, and apply patent-prosecution considerations throughout the work.
Affordability is also an important part of the Mattis IP model. Its lean structure and flat-fee options are designed to offer a cost-conscious alternative to many traditional law firms while maintaining direct practitioner involvement and individualized attention. No particular result, allowance, or total cost can be guaranteed.
Once the proposed work and any relevant deadlines have been reviewed, Mattis IP provides an engagement agreement describing the scope of representation, fees, payment terms, and principal assumptions. Representation begins only after the required engagement steps have been completed and the firm has confirmed acceptance of the matter.
The next steps depend on the assignment. For a new patent application, the process may include collecting technical materials, discussing the invention, identifying important variations, preparing a draft, and obtaining inventor or client feedback before filing. For an existing application, Mattis IP may first review the application history, pending claims, cited references, deadlines, and prior correspondence before recommending a response or prosecution strategy.
Clients should not rely on an inquiry, website submission, or preliminary discussion as confirmation that Mattis IP represents them or is responsible for a filing deadline.
You may contact Mattis IP through the contact form provided on the Mattis IP website. A useful initial message identifies the general nature of the technology, the type of assistance requested, whether an application has already been filed, and any known filing or USPTO deadline. Confidential or highly sensitive technical details shall not be included in the first message.
Mattis IP will determine whether the requested work is within the firm’s patent-practice focus and whether additional information is needed to evaluate the matter. Before accepting an engagement, the firm may need the names of relevant parties for a conflict review and copies of pertinent patent documents. Sending information does not by itself create a practitioner-client relationship.
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