Utility or design patent?

In order to know how to get a patent, first determine the type of IP you need. Do you need a utility or design patent, or both? A simple way to tell is to focus on the unique features, and ask whether they are primarily functional or visual.

If you have a cool looking device that does not do anything new, for example, a design patent application may be appropriate. On the other hand, filing a utility patent application would make sense if your new features are functional in nature.

Understand the distinction between these types of filings upfront, and your decision making will go more smoothly.

Get a patentability search?

While a patentability search makes sense in certain situations, there are times when it may be wiser to save your money and time. Here are scenarios where a novelty search may help:

Patentability searches might not be as useful for more complicated inventions (e.g., software apps) where the risk of an obviousness rejection is higher.

Also, a normal design patent application without a Rocket Docket request might not justify a search since the average design approval rate is over 86%.

How do you get a utility patent?

If you have determined that a utility filing is the way to go, then recognize that the utility patent process patent will be more difficult and more expensive. Expect a long process filled with a high risk of rejections.

Consider filing a provisional (PPA) to defer costs, but beware of the risks.

Once you have built up the conviction and budget for filing a nonprovisional application, expect to pay at least $8,500 for a well-drafted nonprovisional application. Can you find cheaper patent drafting services? Of course. But, the key here is a good utility patent application. If you are going to invest in a multi-year process to obtain a utility patent that may give competitive moat, don’t take shortcuts. Otherwise, you can end up waiting two years to receive your first rejection – which will be inevitable – and find out it’s too late to go back and bolster your application.

Here is a rough timeline of the utility nonprovisional application process:

  • patentability search: approx. 1 week
  • draft and file nonprovisional application: 2-4 weeks
  • wait for initial review by examiner: approx. 1.5 years and 90% chance of a first rejection (Office Action)
  • respond to at least one Office Action: 3-6 months
  • talk to examiner if you receive a second Office Action and then file written response: variable
  • if approved, obtain a Notice of Allowance: grant takes about 4-6 weeks from payment of issue fee

You can see how the utility application process can easily take $20K or more, and 2-5 years without a guarantee of success.

How do you get a patent on a design?

Compared to utility applications, the design application process is substantially cheaper, shorter and easier. How easy? Approximately 7 out of 8 design applications will be allowed. That’s certainly great news for design applicants.

Expect about $1,250 to $1,500 to file a design application if you are a micro entity or small entity (e.g., company with fewer than 500 employees). The average wait time for a design application is roughly 16-17 months with an 86% chance of approval.

The most important part of a design patent application is the drawings which must show required views of the front, rear, top, bottom, left and right. So you’ll need to provide sufficient visual images from various angles or electronic drawing files to enable the illustrator to prepare the required black-and-white line drawings.

Did you know that you can use design drawings to show alternate positions of a product? For example, if a certain component is movable, you can use multiple design drawings to show such movement:

design patent drawing - alternate positions
1st position – https://www.uspto.gov/patents/basics/types-patent-applications/design-patent-application-guide
design patent drawings showing movement or alternate positions
2nd position – https://www.uspto.gov/patents/basics/types-patent-applications/design-patent-application-guide

Without Rocket Docket, here is a rough timeline of the design application process:

  • draft drawings and file design application: 1-2 weeks
  • wait for initial review by examiner: average 16-17 months and 86% chance of approval
  • obtain a Notice of Allowance and pay issue: approx. 4-6 weeks to grant

If there are no rejections, the entire design application process may take about $2-3K and 18 to 24 months.

Have more questions on how to get a patent?

Reach out to US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help protect your concept.

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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