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From the inventor perspective that has an patenet attorney team developing a patent, I am trying to put together a plan comprising a list of deliverables (to be produce by patent attorneys), each with an estimated date. Although I have project management experience, I do not have patent application experience (first attempt at a patent).

Deliverables are workproducts and artifacts produced by stakeholders.

Questions

  • Is there a good list of Non Provisional Patent Application artifacts / deliverables?
  • How can I gauge progress with a looming deadline (April 2019)?

I have found the USPTO Patent Application Checklist, however, I think I should be focused on the claims and how they are progressing between now and the final draft?

  • what do you mean by deliverables, does that mean claims. – RishiM_IPR Jan 3 at 16:15
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    Maybe ask the attorney for a plan? I find the most effective project managers ask the people who have the expertise for input. – Eric Shain Jan 3 at 17:07
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I assume you are trying to develop an PMP tracker for your patent application.

On First note let me say Patent Grant time line is a dynamic and varies (i.e., the goal date would change every time you receive a Non-final office action/ Amendment submitted) though the statutory target for grant of patent is three years from the receipt of Application, but most of the patents are not granted within the time line.

As far as my experience with patent application please make sure that you don't cause delays from you end.

Eg: An office action may give you 30 days or 3 months for you to file a response, keep the target time for your attorney to file the response within the time line, so that you dont pay additional fee in form of late fee and at the same time as there was no delay from your end the days lost in processing application may be extended under 35 USC 154 if the patent is not granted within three years.

Take inputs from your patent attorney about the stages and their expected time line vs statutory timelines.

  • Where you say “you don’t keep delays from you end” do you mean “you don’t cause delays from your end”? – Eric Shain Jan 4 at 13:16
  • Yes, as those delays from our end would affect the total extension days – RishiM_IPR Jan 4 at 13:33
  • Perhaps you could edit your answer as your current wording is unclear. – Eric Shain Jan 4 at 14:36
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I would talk to your patent attorney. You establishing a set of deadlines or deliverables that might be outside their normal process might be off putting to them. In the course of producing a patent application you should be shown a draft version before they finalize it so you can make sure they have the technical details right. You should also be brought into a discussion about why you want a patent. Just to have a patent; to prevent competitors copying specific aspects of your invention; to have a bargaining tool when you get in a fight with some other company?

  • Agreed, I do not know what the deliverables would be nor would I want to irritate counsel. Because I do not have the experience (do not know the list of deliverables), this inquiry is to try to gain a sense of what I should be looking for and questions I should ask when discussing with the patent attorney. – gatorback Feb 4 at 13:23

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