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.

Why is a utility patent application so expensive?

Utility patent applications are typically more expensive than design patent applications since a substantially greater amount of work is required to prepare a utility application.  Unlike a design patent application where most of the work is performed in providing acceptable design drawings, a utility patent application requires a significant amount of work in:

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

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?

Utility patent 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 of a utility patent application, you can expect a long slog in going back and forth with the patent examiner. Most of the Office Action rejections will relate to the prior art found by the examiner, and your Office Action responses will try to show the examiner why your invention is unique and non-obvious over the cited prior art references.

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 patent 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.