What Inventors Really Need to Know Before Filing
If you’re considering a utility patent, the biggest mistake is not spending too much. It is filing without a strategy.
Without the right strategy, you will likely end up with inferior patents, if any. You might even leave money on the table in terms of forsaking patent rights you should have obtained.
This might come as a shocker, but a utility patent does not give you the right to make your product. Instead, it gives you the right to stop others from using your invention. Once filed, you start a patent-pending process towards obtaining exclusive rights. The goal is to obtain patents that drive sales and/or add value.
Need to file a utility patent? Contact US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to get a flat rate quote for filing your utility patent application.
What a Utility Patent Application Actually Does
A nonprovisional utility patent application is the formal filing examined by the USPTO and capable of becoming a granted utility patent.
Unlike provisional patent applications, a nonprovisional application:
- is examined by the USPTO;
- must be in proper format;
- must sufficiently disclose your invention in written descriptions and, in most cases, drawings;
- must contain claims;
- defines the legal boundaries of your invention (i.e., what you want to block others from doing);
- can mature into an issued patent.
If granted, a utility patent provides the owner with an exclusionary right – the right to exclude others from making, selling, using or advertising the patented product. A patent, however, does not give the owner the right to make the patented product.
So it is possible to own a patent and still infringe someone else’s patent.
Utility Patent Timelines and Probability of Success
Once your utility nonprovisional patent application is filed, you have started the examination process. It will likely be a long process filled with rejections.
What is the Average Wait Time for the First Examiner Review?
The average wait time for the initial review of a utility nonprovisional patent application has been over 22 months.
If you want to speed up the review, consider a Track One request which has an additional cost and must be submitted with the initial filing of your nonprovisional utility application. A granted Track One request will result in a first examiner review within a couple of months.
If an inventor is 65 years old or older, a request to speed up the examination can be filed without any USPTO fees.
What Is the Probability of Getting a Utility Patent?
Almost 90% of utility nonprovisional patent applications will receive at least one rejection. Therefore, your probability of getting a utility patent will depend on several factors:
- your perseverance in responding to Office Action rejections (you may receive multiple Office Actions);
- the scope of your claims
Approximately 56% of granted utility patents received up to four Office Actions while 44% of utility patents received more than four Office Actions.
Your probability of success will also depend upon the scope of your independent claims. An independent claim that has a broader scope (fewer features) will face a higher probability of rejection than one with a narrower scope (more features). For example, an independent claim that recites features A and B will have a higher probability of rejection than an independent claim that recites A, B and C.
Again, a wise strategy is crucial. A claim that recites AB is broader than a claim comprising ABC. What claims will you need to drive sales and add value to your business? Can you live with an ABC claim? Should you file child patent apps to pursue more claims?
This is where we shine. We help clients get patent claims that make a meaningful impact on sales and the value of the business.
Utility Patent Process (Step-by-Step)
Let me give you a patent attorney’s perspective on drafting a utility patent application. Let’s demystify the utility patent process and delve into what it takes to get a solid utility patent that drives sales and adds value.
Step 1: Understand Your Invention
Before drafting begins, we want to know the core unique features of your invention. This fact-finding expedition would typically drill down into the nitty-gritty details of those unique features that you care about most. To flesh out the points of novelty in your concept, our firm may send you an Invention Disclosure Form. Background information can be helpful in explaining what has been done in the past.
After reviewing your invention disclosure, we may have technical questions. The key is to pinpoint the novel features that would potentially distinguish your 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 helpful in this regard.
Not all novel features are equally important. With your input, we prioritize unique features based on their significance. For example, if only two out of five potentially novel features are very important, then those top features need to be prioritized above others when it comes to drafting the claims.
Step 2: Draft Your Utility Nonprovisional Patent Application
Now let’s focus on what goes in a utility patent application. A huge difference exists between the description and the claims. 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 about the description being too detailed, you may be focusing on the wrong thing and misunderstanding the purpose of the description. Do not conflate claims with the description.
How We Describe Your Innovation (not the same as claiming it)
The description section of a patent application will often seem to include a bunch of gory details that seem largely insignificant. Our goal here is to describe all the features that may possibly be claimed, either now or in the future.
You never know when certain small details, which earlier seemed insignificant, 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 provides ammunition for the patent attorney to use if and when necessary.
How We Write Patent Claims
You will see at least one claim set. A claim set starts with an independent claim followed by dependent claims. Make sure you understand the difference between independent and dependent claims.
Our firm usually aims for up to 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.
Step 3: Review, Revise and Finalize
In reviewing drafts of the application, the inventors should keep in mind that the claims are in a state of flux. They 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 potentially novel has been left out).
Don’t hesitate to suggest revisions to your patent attorney. 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 a patent assignment to transfer the ownership of the patent application to a company if necessary.
Step 4: File with USPTO – Patent Pending
Once the final draft is approved, we electronically file your nonprovisional patent application with the USPTO. The USPTO instantly provides us with a Filing Receipt including the confirmed filing date and an application serial number.
If you wish to expedite your utility patent application, a Track One request must be submitted with the initial filing of your nonprovisional patent application. Additional fees are required. A granted Track One request will result in an examiner review within a couple of months as opposed to two or more years.
As soon as your patent application is filed, you may indicate that a product or service discussed in a patent application is patent pending as soon as the application is filed with the USPTO.
Once patent-pending, you can explore various ways to raise funding and monetize your invention.
How long does it take to draft and file a utility nonprovisional patent application?
Steps 1-4 above take approximately one month from the date we receive your invention disclosures.
For urgent patent filings, we might be able to expedite the drafting and filing of your utility patent application depending upon our bandwidth. Feel free to contact us if you need to file a patent application promptly.
Step 5: Respond to Examiner Rejections (Office Actions)
As stated above, about 90% of utility patent applications will receive at least one rejection in a letter called an Office Action.
Unless a Track One request is submitted with your initial filing, expect to wait about two years for the first Office Action.
It is not uncommon to respond to multiple Office Actions. A little more than half of granted utility patents have received up to 4 Office Actions.
Step 6: Patent Issuance and Maintenance
If allowed, your utility patent will be issued after paying the issue fee.
Before the patent is issued, consider the strategy of filing a continuation application.
While utility patents are technically not renewed, but maintained, we know what clients mean when they say patent renewals. Basically, patent maintenance fees are due on the 3.5, 7.5 and 11.5 anniversaries.
Utility patents generally expire 20 years from the filing date, but certain nuances can cause the term of a particular utility patent to vary.
What Is the Cost to File a Utility Nonprovisional Patent Application?
The cost of the initial filing of a nonprovisional utility application can vary widely even within the same firm depending upon the complexity of the subject matter and the length of the application.
Our firm offers flat rate fees for filing utility nonprovisional patent applications, which start at $6,800.
While our initial filing estimates do not include patent searches, you can order a novelty search (patentability search) with one of our trusted vendors. Patent search results typically take about one week.
Our initial filing cost does not include responses to Office Action rejections, but we can provide flat rate estimates for such tasks as well. For a more detailed breakdown of initial filing costs, see this post on the cost of filing a nonprovisional patent application.
Total costs, including Office Action responses, can range from $10,000 to $30,000 for most utility patent filings.
Does a Granted Utility Patent Give You the Right to Make Your Product?
A common misconception is that obtaining a utility patent means the owner can make the patented product. This is incorrect. An issued patent provides the owner with the right to exclude others from using the patented invention. It is still possible for a patent owner to infringe other patents.
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 a patent infringement search. Keep in mind that a patent infringement search will cost substantially more than a novelty search.
Next Steps
Email patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to discuss how we can help you file your patent application.
