What is a utility patent?

A utility patent covers the functional aspects of an invention – how the invention works. The scope of protection is defined in the written claims. The USPTO has provided an extensive guide on the nonprovisional utility application filing process.

Why is a utility patent application so expensive?

In most cases, utility applications are substantially more expensive than design patent applications since a greater amount of work is required to prepare a utility application.  Unlike a design patent application where most of the work is in illustrating design drawings, a utility application requires a significant amount of work in both:

  1. describing the invention; and
  2. claiming the invention.

After the utility application is prepared and filed, there is still a potentially long road ahead in dealing with the Patent Office.

What is involved in the description of the invention?

Describing the invention involves a coordinated effort between the inventor, the patent attorney or agent, and a patent illustrator. Once the invention is sufficiently disclosed and properly understood by the patent practitioner, the patent attorney writing the application will contact a patent illustrator to order certain drawings that help to show key features of the invention.

The Detailed Description of the Preferred Embodiments will be written with reference to the drawings, typically by using callout numbers to refer to the numerals in the drawings pointing to specific parts of the invention.

What is involved in claiming an invention?

Claims can read like a foreign language. Applicants need to understand the difference between independent claims and dependent claims, and make sure the independent claims capture a proper scope of the invention without being too narrow.

What is the patent application process after the initial filing?

After the initial filing, you can expect a long slog in going back and forth with the patent examiner. Most Office Action rejections will cite prior art references found by the examiner which are arguably similar to your claimed invention. Your response to each Office Action will try to convince the examiner why your invention is unique and non-obvious over the cited prior art references.

It can take several years after the initial filing date of a nonprovisional application to get a utility patent granted, and there is no guarantee. The average wait time for this first Office Action from the patent examiner is about 16 months. The average pendency of a utility application is almost three years.

What are the different types of utility patent applications?

There are two types of utility patent applications:

  1. provisional patent applications
  2. non-provisional patent applications.

A non-provisional application must be filed in order to obtain a utility patent. A provisional patent application is a temporary placeholder that can defer the filing of a non-provisional application by 1 year.

How long does a utility patent last?

The term of a utility patent is 20 years from the filing date, assuming maintenance fees are timely paid after the grant of the patent.  Utility applications can take several years to proceed to issuance. Therefore, a very practical consideration in deciding whether to pursue a utility patent application is the life cycle of the product or process at issue.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.