Developing an invention is exciting.
Understanding how to protect it can be far less straightforward.
Understanding how to protect it can be far less straightforward.
First-time inventors often encounter unfamiliar questions: Is the invention potentially patentable? Should a provisional application be filed? What information should be included? Can the invention be discussed publicly? How much protection is practical at the current stage?
Babino Law Group helps inventors, engineers, founders, and emerging technology companies navigate these decisions with clear, technically informed patent counsel.
Led by Intellectual Property Counsel Donell Babino, the firm provides patent strategy, utility patent application drafting, and representation before the United States Patent and Trademark Office. Donell is registered to practice before the USPTO and has particular technical experience involving software, cybersecurity, virtualized computing, cloud systems, and advanced software architectures.
Based in Chicago, Babino Law Group represents patent clients throughout the United States.
More Than a Patent Filing
A patent application is not simply a form describing an idea. It is a technical and legal document that may influence the scope, strength, and commercial value of the resulting patent rights.
Effective patent counsel begins by understanding:
- How the invention works
- What technical problem it addresses
- How it differs from existing approaches
- Which features may be commercially valuable
- What alternative implementations may be developed
- Whether the invention has already been disclosed
- How the filing fits into the inventor’s broader goals
Babino Law Group works collaboratively with clients to identify the substance of an invention and develop a filing strategy suited to its technology, stage of development, available resources, and anticipated use.
Patent Strategy and Counseling
Not every invention requires the same filing approach.
Some clients need protection before a product launch, investor presentation, demonstration, publication, or other disclosure. Others are still developing the concept and need help determining which features deserve protection and when to proceed.
Patent strategy and counseling may include:
- Evaluating potential forms of patent protection
- Identifying protectable technical features
- Reviewing development and disclosure timelines
- Comparing provisional and nonprovisional filing options
- Coordinating patents with trade-secret protection
- Prioritizing filings within a practical budget
- Planning for future versions or improvements
- Developing a broader patent portfolio strategy
The goal is to help the client make informed decisions—not simply to recommend a filing without considering the surrounding business and technical circumstances.
Patentability Searches and Assessments
A patentability assessment can help an inventor understand how an invention may compare with previously disclosed technology.
When appropriate, Babino Law Group may coordinate with qualified third-party search professionals and review the resulting prior art. The firm can then analyze potentially relevant references, discuss the apparent distinctions, and help the client evaluate possible next steps.
A search cannot guarantee that a patent will be granted or identify every relevant reference. However, it may help:
- Clarify the existing technology landscape
- Identify potential obstacles before filing
- Refine the description of the invention
- Focus the application on meaningful technical distinctions
- Support a more informed filing decision
Provisional Patent Applications
A provisional patent application can establish an early U.S. filing date and provide up to 12 months before a corresponding nonprovisional application must generally be filed.
Provisional applications are often considered when an invention is still developing, a disclosure is approaching, or the client needs additional time to evaluate commercialization or funding opportunities.
A provisional application is not examined by the USPTO and does not itself become a patent. Its value depends heavily on whether it adequately describes the invention and supports the subject matter later claimed.
Babino Law Group helps clients prepare substantive provisional applications that document the technology with its future patent strategy in mind.
Nonprovisional Utility Patent Applications
A nonprovisional utility patent application begins the formal examination process before the USPTO.
Babino Law Group prepares utility patent applications involving new and useful systems, processes, machines, products, and technical improvements. The drafting process may include:
- Reviewing invention disclosures and technical materials
- Conducting inventor interviews
- Identifying important inventive concepts
- Exploring variations and alternative implementations
- Preparing the written description
- Developing patent claims
- Coordinating technical drawings
- Filing the application with the USPTO
The firm places particular emphasis on understanding the underlying technology and preparing an application that is technically thorough, legally precise, and aligned with the client’s objectives.
USPTO Patent Prosecution
Filing the application is only the beginning of the patent process.
A USPTO patent examiner may issue an office action raising questions about patent eligibility, novelty, obviousness, clarity, formal requirements, or the scope of the claims.
Babino Law Group represents clients during patent prosecution, including:
- Reviewing and explaining office actions
- Developing response strategies
- Preparing legal and technical arguments
- Amending claims when appropriate
- Conducting examiner interviews
- Addressing procedural requirements
- Advising clients about available options and tradeoffs
Clients receive clear guidance about what the examiner has raised, how the firm recommends responding, and how the response may affect the potential scope of protection.
Continuation and Related Applications
A single patent application may not capture every commercially valuable aspect of a technology.
Depending on the circumstances, continuation, divisional, or continuation-in-part applications may be used to pursue additional subject matter, respond to USPTO restrictions, address later developments, or build a coordinated family of patent applications.
Babino Law Group helps clients evaluate whether related filings support their broader portfolio and product-development strategy.
Patent Portfolio Management
As an inventor or company develops additional features, products, or technical improvements, patent decisions can become increasingly interconnected.
Patent portfolio counseling may include:
- Reviewing existing applications and patents
- Identifying gaps in protection
- Prioritizing new filings
- Coordinating related patent families
- Tracking prosecution and filing deadlines
- Evaluating continuation opportunities
- Aligning patent activity with product development
- Managing protection within an established budget
This service can be particularly valuable for startups and engineering teams that need ongoing patent guidance without a full-time in-house patent attorney.
patent landscape studies
A patent landscape study examines patent activity within a defined technical area.
Depending on the scope, a landscape analysis may help a client:
- Understand patenting trends
- Identify active companies or competitors
- Review common technical approaches
- Discover areas of crowded patent activity
- Identify potential areas for further innovation
- Support research, product, or portfolio planning
Patent landscape work is informational and strategic. It is distinct from a formal legal opinion regarding infringement or freedom to operate.
Freedom-to-Operate Analysis
A freedom-to-operate analysis evaluates whether commercializing a particular product, process, or feature may present concerns under relevant, enforceable patent claims.
This analysis is generally more focused than a patentability search. Patentability asks whether an invention may qualify for a patent. Freedom to operate examines whether practicing the technology could potentially implicate the patent rights of others.
Babino Law Group can assist with targeted freedom-to-operate analysis and related product-clearance counseling based on the defined technology, relevant markets, and scope of the engagement.
Non-Infringement Opinions
A non-infringement opinion evaluates whether a proposed or existing product or process appears to fall outside the claims of an identified patent.
These matters require careful comparison between the patent claims and the technical operation of the product or system. Babino Law Group can assist with technically informed claim analysis and written opinions when appropriate.
No opinion can eliminate all risk, and the scope and reliability of the analysis depend on the information provided and the specific patents evaluated.
International and PCT Filing Coordination
Patent rights are territorial. A U.S. patent generally does not provide protection in other countries.
For clients considering international protection, Babino Law Group can help evaluate timing and filing options, coordinate Patent Cooperation Treaty applications, and work with qualified foreign patent counsel when national or regional filings are pursued.
International patent protection can be expensive, so filing decisions should be aligned with the client’s likely markets, manufacturing plans, competitors, licensing objectives, and available resources.
Patent Counsel for Complex Technology
Babino Law Group has particular experience working with inventions involving:
- Software and computer-implemented processes
- Cybersecurity and threat-detection systems
- Hypervisor-based security technologies
- Virtual machines and virtualized computing
- Cloud and distributed systems
- Computer networking
- Database and data-processing technologies
- Artificial intelligence and machine learning
- Advanced software architectures
- Internet and emerging technologies
Other utility patent matters may be considered based on the nature of the invention.
A Patent Process Designed for First-Time Inventors
You do not need to understand patent terminology before contacting the firm.
Babino Law Group explains the process in practical language, helps identify the information needed, and works directly with the inventor to understand the technology.
Depending on the engagement, the firm may offer flat-fee or phased-fee arrangements to provide greater clarity around legal costs. Available arrangements depend on the complexity, scope, and stage of the matter.
Frequently Asked Questions
Do I need a finished prototype before filing?
Not necessarily. A working prototype is not always required, but the invention must be developed well enough to explain how it can be made and used. The appropriate timing depends on the technology and available technical detail.
Should I file a provisional application first?
A provisional application can be useful in some situations, but it is not automatically the best choice for every inventor. The decision should reflect the maturity of the invention, anticipated disclosures, budget, and filing strategy.
Can I discuss my invention before filing?
Public disclosure can affect patent rights, particularly outside the United States. It is generally wise to seek legal guidance before publishing, presenting, selling, demonstrating, or otherwise publicly disclosing an invention.
Does a patentability search guarantee that I can obtain a patent?
No. A search cannot identify every relevant reference or guarantee how the USPTO will evaluate an application. It can, however, provide useful information for assessing potential distinctions and developing a filing strategy.
How long does the patent process take?
The timing varies considerably based on the technology, USPTO workload, examiner, application strategy, and issues raised during prosecution. The firm can explain the expected stages and discuss available options based on the particular application.