How To Patent An Idea: What You Need To Know About the Patent Application Process

Focus on what matters most

So much can be said, and has been said, about the patent application process. It can feel overwhelming. To avoid information overload, let’s get back to the most basic things you need to know to file a patent application. I hope this article will not only address your burning questions, but also make you aware of key issues not on your radar.

For those who say you can’t patent an idea, I’m using the term idea loosely. True, your idea needs to be more concrete than just an imaginary concept. How would it actually work? With the help of a patent attorney, can you show it in words and drawings that would sufficiently teach others in this field how to practice your invention?

When do you need to patent an idea?

Patent deadlines are critical. Unlike filing trademark and copyright applications, deadlines for filing patents are much less forgiving. In the US, you have a 1-year grace period from the earliest date of public disclosure or sale. I’ve lost count of how many times potential clients have contacted us about patenting a product they’ve been selling for years.

If you are considering foreign protection, your must hold off on publicly disclosing your invention until after you file your first patent application.

Apply for design or utility patent?

Utility and design applications are not mutually exclusive. While filing for one or the other will make more sense in most cases, there may be times when you should consider both. File a design application when the appearance of your idea is the primary thing you want to protect. File a utility application when the functionality is what you care about most.

Should you do a patentability search?

Notice I said patentability search, which is a specific type of patent search to determine whether your idea is patentable. A favorable search result may mean that your idea has a better chance of getting a patent, but it does not necessarily mean you will be free from infringement. A patented product can still infringe other patents.

A good starting place to do your own search is Google patents. If you find something dead on, you’ll at least save yourself the cost of having a professional prior art search done. If do not find any close prior art references, then consider whether it would be worthwhile to invest in a professional patentability search. Our firm charges a flat rate of $1,500 for a utility patentability search.

Remember that the USPTO places a duty on applicants to a duty to disclose known prior art that is material to the patentability of the applied-for invention. Ignorance can be bliss. You don’t have a duty to search the prior art, but you must tell them what you find if a search is done.

How much to patent an idea?

Patenting isn’t cheap. The type of application – design or utility – will largely determine the cost.

For design patents, expect the initial filing to cost around $1,250 to $1,500. Typically, a design application has a smoother path to an allowance so the total costs will range from $2,000 to $3,000 if there are no rejections.

For utility patents, expect a fight with the USPTO. Initial filing costs for a utility nonprovisional application will range from $7,500 to $18,000. Ongoing costs can easily amount to an additional $6,000 to $20,000.

If you are considering utility patent protection, it would be practical to budget for the initial filing and two Office Actions. Ask us for a quote on what this would look like for your invention.

What information do you need to patent your idea?

Though a prototype is unnecessary, you need to be able to describe your idea with words and any drawings so that others skilled in this field will be able to practice your invention. That means that your idea cannot be a nebulous combination of different components that you do not know how to put together.

For utility patent applications, the tendency for inventors is to go broad by stating that their invention is more than a specific example. It may be feel counterintuitive, but fight that urge. Be as detailed as possible. It will be your patent attorney’s job to write your claims in a way to gain broader protection. You need to be detailed so that your patent attorney has the ammunition to claim certain features if and when necessary to get around the prior art.

You cannot claim what you do not describe. If key details are omitted, you will not be able to amend the claims to recite the undisclosed features.

For a design application, you simply need to provide drawing files (e.g., CAD file) or photographs that show your design. If you’re supplying photographs, make sure to include views from the front, rear, top, bottom, left and right. Bottom views may be omitted if the bottom surface is flat and unornamental.

Should you expect USPTO rejections (Office Actions)?

On average, design applications have an approval rating of well over 80%. So there is a good chance your design patent application may sail through the examination process without any rejections.

On the other hand, utility nonprovisional applications have a 90% chance of at least one Office Action. After a first Office Action response is filed, there is about a 50-50 chance of receiving a second Office Action. If and when you receive a second rejection called a Final Office Action, consider having your patent attorney conduct an Examiner Interview.

It would be reasonable to expect that a granted utility patent can take up to three Office Actions for most examiners.

What about international patents?

Foreign filings can be very expensive to file and prosecute, so you’ll want to use certain cost deferral tactics if possible.

For design patents, the foreign filing deadline is 6 months from the earliest filing date, known as the priority date. This means that foreign design patent applications filed within 6 months of your US filing date will get the benefit of your earlier US filing date.

For utility patents, the foreign filing deadline is 12 months from the priority date. By filing a single international PCT application, you can defer the individual foreign filings by an additional 18 months. So the PCT gives you a total of 30 months from your priority date to file national applications in each desired foreign market.

What should you do after your patent application is allowed?

For design filings, you simply pay the issue fee and wait for the grant.

Utility nonprovisional applications, on the other hand, typically involve more strategy after allowance. Should you file a continuation in case competitors attempt to design around the claims in your parent application? Was there a prior Restriction Requirement that might cause you to consider filing a divisional application?

Need to patent an idea?

Contact US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you add value to your idea by gaining patent protection.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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