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Utility, Design & Provisional Patent Applications
Drafting robust 35 U.S.C. 111(b) provisional priority filings, 35 U.S.C. 111(a) non-provisional utility applications, and 35 U.S.C. 171 design patents built around commercial value.
Experienced Patent Counsel for Inventions, Portfolios & Commercialization.
Backed by significant experience guiding inventors, engineering teams, and operating companies through utility and design patents, freedom-to-operate clearances, USPTO prosecution, licensing, and federal patent enforcement.
Utility Patents, Design Patents & Tech Commercialization ยท Lead Counsel: Reese Serra (P74482), Matt Wozniak, JD / CPA, Brian D. Harrison
Practice FocusPatent Law & Prosecution
Lead AttorneysReese Serra (P74482) & Matt Wozniak, JD / CPA & Brian D. Harrison
Controlling LawPatent Act (35 U.S.C. 101-103, 112 & 271)
Headquarters125 E. 3rd St, Suite 100, Rochester, MI
Why does experienced patent counsel matter from initial conception through commercialization?
Under the America Invents Act's first-inventor-to-file system (35 U.S.C. 102), a single trade show demonstration, investor pitch deck, public beta, or unguarded sale can permanently forfeit domestic or foreign patent rights. Drawing on significant experience across mechanical, automotive, industrial manufacturing, medical device, hardware, and enterprise software innovations, we structure early disclosure controls, rigorous specifications, and multi-tiered claim sets designed to withstand USPTO examination and real-world competitor design-arounds.
Effective patent representation goes far beyond obtaining a framed certificate. We evaluate claim scope against actual commercial revenue streams, build continuation strategies that evolve alongside product updates, align inventor assignments and M&A security filings under 35 U.S.C. 261, and coordinate Freedom-to-Operate opinions so clients can scale production with confidence.
Core legal counsel for patent law & prosecution.
Drafting precision, JD/CPA tax coordination, corporate entity alignment, and courtroom enforcement from our downtown Rochester team.
Discuss a Patent Filing →
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Patentability, Freedom-to-Operate & USPTO Prosecution
Prior art patentability evaluations, pre-launch FTO clearance opinions, Section 101/102/103/112 Office Action advocacy, Examiner Interviews, and continuation strategy.
03
Patent Licensing, Tech Transfer & Infringement Litigation
Field-of-use and exclusive royalty agreements, Joint Development Agreements, M&A patent diligence, and federal patent infringement enforcement or defense.
Significant Patent Experience Across Michigan's Core Engineering & Growth Sectors
Michigan founders, Tier-1 and Tier-2 automotive suppliers, specialty tool-and-die manufacturers, automation engineers, and technology companies rely on intellectual property that directly protects tooling investments, engineering hours, and market share. Our practice brings significant hands-on patent experience across complex mechanical assemblies, electromechanical controls, consumer and industrial hardware, medical products, and computer-implemented systems.
Because our patent, corporate, tax (JD/CPA), and trial lawyers work under one roof in Rochester, patent strategy is never siloed from corporate structuring, R&D tax treatment, joint venture agreements, or future company exit diligence.
- Engineering-literate claim drafting aimed at capturing functional workarounds, system interactions, and method steps rather than easily bypassed physical details.
- Coordinated patentability timing before trade shows, RFP submissions, tooling fabrication, or outside equity rounds under 35 U.S.C. 102 grace-period constraints.
- Portfolio management aligning U.S. national filings with Patent Cooperation Treaty (PCT) international priority deadlines and enterprise valuation goals.
Provisional, Non-Provisional Utility & Ornamental Design Patent Strategy
Many startups lose critical priority dates because an informal provisional application omitted alternative embodiments, key structural relationships, or flow diagrams required for 35 U.S.C. 112 written-description support.
We approach every provisional filing with the specification rigor of a formal utility application, then bridge seamlessly into non-provisional prosecution with tiered independent, dependent, apparatus, system, and method claims, paired where appropriate with targeted ornamental design patents under 35 U.S.C. 171 to cover distinctive industrial aesthetics.
- 35 U.S.C. 111(b) Provisional Patent Applications drafted with comprehensive enablement, alternative embodiments, and engineered claim scaffolding.
- 35 U.S.C. 111(a) Non-Provisional Utility Patents covering machines, articles of manufacture, compositions, industrial processes, and software architectures.
- 35 U.S.C. 171 Design Patents protecting unique product shapes, automotive trim geometry, packaging profiles, and graphical user interfaces.
Prior Art Landscapes, Freedom-to-Operate (FTO) Clearances & Office Action Advocacy
Receiving a USPTO Non-Final or Final Office Action is a normal step in high-value patent prosecution, not a dead end. Strong advocacy requires pinning down exact claim-chart distinctions over cited references rather than unnecessarily narrowing independent claims.
Before clients invest in tooling, mold fabrication, or national product rollouts, we conduct focused Freedom-to-Operate (FTO) and non-infringement/invalidity reviews targeting competitor active patents, identifying safe design-around modifications or licensing strategies early.
- Overcoming 35 U.S.C. 101 Alice/Mayo subject-matter eligibility, 35 U.S.C. 102 anticipation, 35 U.S.C. 103 KSR obviousness, and Section 112 rejections.
- Structured USPTO Examiner Interviews to align technical terminology and accelerate allowance while maintaining broad commercial scope.
- Continuation and divisional application strategy keeping pending family members alive so claims can adapt to later competitor launches.
Patent Licensing, Joint Development, M&A Diligence & Federal Enforcement
Patents deliver measurable return when backed by clean assignments, enforceable commercial agreements, and trial readiness. Our attorneys draft exclusive and non-exclusive field-of-use licenses, OEM manufacturing supply terms allocating background and foreground inventions, and M&A IP representations and warranties.
When a competitor copies protected technology or asserts an overbroad patent against your business, our trial team coordinates demand analysis, PTAB inter partes review (IPR) defense considerations, and federal patent litigation in the Eastern District of Michigan and federal courts nationwide.
- Clean USPTO assignment recordation under 35 U.S.C. 261 ensuring zero ownership cloud across co-inventors, founders, or acquired subsidiaries.
- Joint Development Agreements (JDAs) and customer SOWs clearly delineating preexisting background IP from newly created foreground inventions and improvements.
- Patent infringement assessment, notice letters, licensing negotiations, and federal court enforcement or invalidity defense.
Selected Matters & Capabilities
Provisional & Non-Provisional Utility Filings
Detailed technical specifications, engineering figures, and multi-claim protection tailored for mechanical, hardware, manufacturing, and software inventions.
Ornamental & Industrial Design Patents
35 U.S.C. 171 design patent protection securing distinctive physical silhouettes, industrial housings, consumer hardware, and product appearance.
Patentability Searches & FTO Opinions
Pre-filing prior art analysis and Freedom-to-Operate clearances evaluating infringement exposure before costly tooling or commercial launch.
USPTO Office Actions, Interviews & Continuations
Strategic examiner interviews, legal and technical claim responses, and continuation/divisional filings preserving durable portfolio breadth.
Patent Licensing, JDAs & M&A IP Diligence
Royalty-bearing patent licenses, technology transfer agreements, joint development IP allocation, and clean-title audits for acquisitions.
Federal Patent Litigation & Injunctive Relief
Asserting patent rights against unauthorized competitors and defending businesses against infringement claims, including PTAB review coordination.
Controlling Federal patent statutes & rules.
Every specification, claim amendment, inventor assignment, and FTO clearance is grounded in Title 35 statutory requirements, USPTO MPEP procedure, and Federal Circuit precedent.
Federal Patent Authority 01
Patent-Eligible Subject Matter (35 U.S.C. 101): Governing statutory categories of process, machine, manufacture, or composition of matter, including software-related Step 2A/2B eligibility.
Federal Patent Authority 02
Novelty & Non-Obviousness under the AIA (35 U.S.C. 102 & 103): Controlling first-inventor-to-file priority rules, one-year U.S. inventor grace period limits, public disclosure bars, and prior-art combinations.
Federal Patent Authority 03
Specification, Enablement & Definiteness (35 U.S.C. 112): Requiring clear written description, enablement across full claim scope without undue experimentation, and definite claim boundaries.
Federal Patent Authority 04
Design Patent Protection (35 U.S.C. 171): Protecting new, original, and ornamental designs for articles of manufacture for a 15-year term from grant without ongoing maintenance fees.
Federal Patent Authority 05
Patent Ownership & Assignment Recording (35 U.S.C. 261): Governing written conveyances, co-inventor rights, bona fide purchaser priority, and timely USPTO assignment recording within three months.
Federal Patent Authority 06
Infringement Liability & Damages Remedies (35 U.S.C. 271 & 281 to 285): Establishing direct, induced, and contributory infringement, reasonable royalty or lost-profit damages, injunctions, and treble damages for willful infringement.
Principal counsel at the table.
Work directly with senior Michigan attorneys who unite private-client estate architecture, CPA tax fluency, commercial real estate closings, and trial advocacy.
Founding Attorney & Managing Member ยท Bar P74482Reese SerraSenior Litigation & Trial CounselBrian D. HarrisonAttorney & Certified Public Accountant (JD / CPA)Matt Wozniak
Need Coordinated Trademarks, Copyrights & Trade Secrets Alongside Patents?
Visit our Intellectual Property Law hub to see how we pair USPTO patent prosecution with federal brand registration, software copyright protection, and trade secret agreements.
Frequently asked questions: Patent Law & Prosecution
Clear answers to the statutory, tax, and practical questions Michigan families and business owners ask most often.
Does The Private Firm have experience with complex patent matters and commercial portfolios?
Yes. We bring significant experience advising operating companies, manufacturers, founders, and inventors across the full patent lifecycle, from initial invention capture, provisional and non-provisional filings, and USPTO Office Action advocacy through FTO clearances, licensing, M&A IP diligence, and federal dispute resolution.
When should an inventor or company file a provisional patent application versus waiting for a full utility filing?
Because the United States operates under a first-inventor-to-file system, a thoroughly drafted provisional application (35 U.S.C. 111(b)) can lock in an official USPTO priority date immediately before investor pitches, supplier quotes, beta tests, or trade shows, while giving 12 months to refine prototypes and file the formal non-provisional utility application.
What happens if our product was already shown publicly or sold in the past year?
Under 35 U.S.C. 102(b)(1), the United States provides a strict one-year grace period from an inventor's own public disclosure, offer for sale, or commercial use. However, most major foreign jurisdictions impose absolute novelty rules with zero grace period, so filing before any public disclosure is always strongly preferred.
How is a Freedom-to-Operate (FTO) search different from a patentability search?
A patentability search looks at global prior art (including expired patents and academic papers) to determine whether your invention can be patented. A Freedom-to-Operate search looks specifically at active, unexpired issued patents in your target market jurisdictions to verify whether making, using, or selling your product could infringe another party's enforceable claims.
Can a company protect both the engineering function and the visual look of a physical product?
Yes. Businesses frequently pair a utility patent (covering how a mechanism or assembly operates) with a 35 U.S.C. 171 design patent (covering the product's distinctive ornamental appearance) and trade dress/trademark protection for layered, long-term competitive defense.
Why is an early written invention assignment from founders and engineers critical?
Under U.S. patent law, patent rights vest initially in the individual human inventors unless transferred by a clear, present written assignment recorded at the USPTO under 35 U.S.C. 261. Missing assignments from an early engineer, contractor, or co-founder can block financing or stall an acquisition.