How do we prepare and file a utility nonprovisional patent application?

This FAQ will help you understand how we file a utility patent application. We’ll discuss what goes in the initial preparation and drafting of a utility nonprovisional patent application.

Should you keep your invention confidential?

If possible, keep your invention confidential until after your patent application is filed. This gives you the flexibility to pursue foreign patents. It also reduces the risk of someone beating you to the Patent Office under the first-to-file rule.

If you’ve already publicly disclosed your invention, you can still apply for a US patent as long as your US application is filed within one year of your earliest date of public disclosure.

Patentability search before filing a utility patent application?

Before investing in a utility nonprovisional patent application, you should consider having a patentability search done to find out what the prior art already covers. Seeing prior art patents will also give you a roadmap for your claims when you file your utility patent application.

Writing the Patent Application Part 1 – Understanding How Your Invention Is 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.

Writing the Patent Application Part 2: Describing vs. 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. 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.

Reviewing and Revising Drafts

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:

  1. accurate (nothing is described incorrectly); and
  2. 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.

Filing the Nonprovisional Application

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 non-provisional 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 $8,500 to over $15,000. You should also factor USPTO filing fees and illustrator fees which can easily add at least another $1,000.

Email vlin@icaplaw.com anytime or call (949) 223-9623 to find out how we can help.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com