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?
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