What is involved in filing a utility nonprovisional patent application?
When it comes to learning new subjects, I’ve been greatly helped by the insights of professionals who know what they’re doing. I certainly don’t expect to know as much as the pros, but I hope to get at least a handle on the most important things and the right questions to ask. If you’re new to patents, let me provide a patent attorney’s perspective on the nuts and bolts of drafting a utility nonprovisional patent application.
Understanding your invention: What makes it different?
It comes as no surprise that the one who is drafting your patent application should understand how your invention works. So, the first group of questions I would ask basically relates to the whats and hows of your invention. This fact-finding expedition would typically drill down into the nitty-gritty details of an invention. Our firm uses an Invention Disclosure Form to help clients flesh out these details.
Yet, I will want to know more. The key is pinpointing the potentially novel features that set apart the client’s invention from what already exists (aka “prior art”). Patent attorneys want to know where to draw the line between the old and new. A patentability search, also known as a novelty search, can be particularly helpful in this regard.
I will also want to prioritize those unique features based on their significance to the client. For example, if a client cares about only one out of five potentially novel features, then that top feature needs to be prioritized above others when it comes to drafting the claims.
Describing the invention is not the same as claiming the invention
Now let’s focus on what goes in the patent application. This is where understanding the dichotomy between the description of the invention and the claims will be hugely useful. Your patent rights will be defined by the claims, not the description. The purpose of the description is to provide support for the claims. If you are concerned that your description is too detailed or limiting, you may have a misunderstanding of the description. Do not conflate claims with the description.
Patent practitioners typically think of the description portion of the application as comprising the drawings (aka figures) and the Detailed Description of the Preferred Embodiments. This is why the description section of a patent application will often seem to include a bunch of gory details that seem largely insignificant. What the patent attorney is trying to accomplish here is to describe all the features that may possibly be claimed, either now or in the future.
You never know when some small detail which seemed insignificant early on will turn out to be a major distinguishing factor over the prior art. Sometimes, those details can be the absence of something that is typically found in the prior art. By expressly describing even the lack of some otherwise common feature, the description in the application is providing ammunition for the patent attorney to use if and when necessary.
Each patent attorney will have his or her own individual writing styles and preferences. My team and I prefer to start with the claims and work backwards. We find this to be a more disciplined approach as we’re forced to outline the key claim elements. Once the claims are drafted, we write the detailed description to make sure enough support is provided for the presently drafted claims as well as for any new or different claims to be prosecuted after the initial filing.
Claiming the invention
In the claims section of the patent application, you will typically see at least one claim set. A claim set starts with an independent claim followed by dependent claims. Our firm usually aims for three claim sets since the USPTO fees cover three independent claims and 20 total claims. Having an excessive number of claims may irk patent examiners.
Filing the utility nonprovisional patent application
In reviewing drafts of the application, the inventors should keep in mind that the claims are in a temporary state and will likely be amended, perhaps several times, over the course of prosecution. While it’s good to understand and approve of the scope of the claims to be filed, the focus should be on the description. In particular, inventors should make sure that the description is:
- accurate (nothing is described incorrectly); and
- complete (nothing has been left out).
Don’t hesitate to suggest revisions to your patent attorney and to seek feedback on whether your suggested changes make sense. When the final draft of the application is approved, we have the client sign the necessary paperwork, including inventor declarations and, if necessary, a patent assignment to transfer the ownership of the patent application to a company or other entity. While such executed documents are not necessary for the initial filing of the application, you will save late filing fees by having all the signed paperwork upfront.
As soon as the application is filed, the USPTO will instantly provide a filing receipt with the confirmed filing date and an application serial number.
When can you say patent pending?
Assuming that a provisional patent application had not been previously filed, the client may indicate that a product or service discussed in the nonprovisional application is patent pending as soon as the application is filed with the USPTO.
What is the cost of filing a utility nonprovisional patent application?
The cost of the initial filing of a nonprovisional application can vary widely even within the same firm depending upon the complexity of the subject matter and the length of the application. In our firm, we provide flat rate estimates for the initial drafting and filing of non-provisional applications, which can range from $7,000 to over $17,000. You should also factor USPTO filing fees and illustrator fees which can easily add at least another $1,000.
Keep in mind that the initial filing cost does not include responding to Office Action rejections which will inevitably occur.
Does our cost for filing a patent application include a patent search?
No, our initial filing estimates do not include any patent searches. Before filing a utility nonprovisional application, it may be wise to consider a patentability search (aka novelty search), which costs $1,500 per invention and takes about one week.
If you are concerned about whether your product might infringe other patents, you may want to consider a Freedom-To-Operate (FTO) search, also known as an (non)infringement search. Keep in mind that a patent infringement search will cost substantially more than a novelty search.