What is a utility nonprovisional patent application?

Unlike design patents, utility patents protect functionality. To get a utility patent, you have to file a utility nonprovisional patent application and ultimately get it allowed. What makes the utility patent process unique and a bit more complicated is the option of filing a preliminary placeholder application called a provisional patent application (PPA). So you basically have two types of utility patent filings: provisional and nonprovisional. A utility nonprovisional patent application is what you would file to patent the functionality of your concept (how it works) as opposed to its appearance (how it looks).

Do-It-Yourself Utility Patent: Should you perform surgery on yourself?

Prosecuting a utility nonprovisional patent application is almost like performing surgery (though surgery is undoubtedly much more complicated). When potential clients ask me if they should file the nonprovisional themselves, I usually reply by asking how they would feel if they had to do their own root canal with guidance from an endodontist.

Perhaps you can save some money but you would likely mess up quite badly. And cleaning up your mess might take more time and money than if you had the procedure done properly from the beginning.

So what can go wrong with filing your utility nonprovisional application? Well, quite a lot. And some of those errors can be fatal.

For example, suppose your specification is deficient in disclosing key features which you now need to claim in order to overcome prior art rejections. You can add those features by filing a CIP, but your new features will now get a later date. That later date can be a disadvantage because it opens up more potential prior art references that can be used to reject your patent application.

Clearly, my biased opinion is that inventors should not draft and file their nonprovisional applications on their own. So the question then becomes: How should you have a patent attorney file your nonprovisional application?

A Strong Nonprovisional Patent Application Requires Sufficient Details

It’s all about the content. A robust nonprovisional patent application should sufficiently cover all the key features you may want to claim, either now or later. That means you want to have a sufficiently detailed written description that adequately explains those features and, in most cases, drawings that show such features.

If you are reviewing a draft patent application yet to be filed, think through the alternatives and variations that others might try in an attempt to arrive at your invention or its results. See if any such alternatives should be included in the specification.

How to Tell If Your Patent Claims Are Good

Patent claims read like a foreign language. So how do you know whether your claims are well drafted? First, understand the difference between independent and dependent claims. Second, see if your independent claim covers at least one novel feature that you think is not in the prior art. Third, see if your dependent claims add meaningful limitations or specificities to what is covered in the independent claim.

If your US nonprovisional filing is based on a foreign application either through the Paris Convention or PCT, consider amending the claims to remove multiple dependencies and excess claims. This can save a significant amount of USPTO government fees.

If you need to enter the US national phase based on your PCT, see our tips on how to get the initial filing right.

Will your nonprovisional application be based on a provisional?

Plan ahead so that you avoid waiting until the last minute to file your nonprovisional due at the 12-month deadline. Consider whether any new details need to be added to the nonprovisional? If so, give your patent attorney sufficient lead time to have new drawings and written descriptions prepared.

Since a provisional does not require any claims, your patent attorney may need to spend a good chunk of time carefully drafting the claims for your nonprovisional.

Need to file a utility nonprovisional patent application?

Contact US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you file a US utility nonprovisional patent application and obtain utility patent protection that fits with your business objectives.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com