What is the utility patent process?
The utility patent process is typically a long arduous journey. We’ll try to simplify the patent application process by dividing up the main stages. It may help to think of the life cycle of a utility patent application as having a beginning, middle and end:
- Beginning: Initial filing of nonprovisional patent application (approx. 1-2 months);
- Middle: Prosecution of patent application (approx. 1-5 years); and
- End: Grant or abandonment of application.
Beginning of utility patent process: Initial filing of nonprovisional application
Utility patent protection starts with the initial filing of a nonprovisional patent application. While a provisional application may be filed to reserve an earlier filing date, it serves only as a temporary placeholder. Unless and until the applicant files a nonprovisional application, the provisional application will go nowhere.
Cost of drafting a nonprovisional application
Initial filing costs range widely and depend largely upon the complexity of the invention and the number of examples (aka “embodiments” in legalese). For simpler inventions with one to three embodiments, initial filing costs may range from $7-11K. Inventions of medium complexity may range from $11-17K, while highly complex inventions may exceed $17K.
Keep in mind these estimates cover only the initial filing. As discussed below, the middle stage of the application process will incur additional costs.
How long does it take to file a nonprovisional application?
In most cases, it can take 1-2 months to prepare and file a nonprovisional application. At our firm, the drafting process starts by reviewing invention disclosures from the client. A patentability search would take about one week.
Middle stage of utility patent process: Responding to Office Actions (rejections)
The middle stage of the patent life cycle consists of going back and forth with the USPTO. This is a years-long process that will ultimately make or break your patent.
The USPTO patent examiner focuses on the claims located towards the end of the written specification. Those claims define the scope of utility patent protection sought by the applicant.
After the initial filing of a nonprovisional application, expect the following typical sequence of events.
- Non-final Office Action
- Final Office Action
- If case is not allowed after responding to first Final Office Action, file Request for Continued Examination (RCE) and repeat step 1 above.
- If case is not allowed after responding to second Final Office, consider a second RCE or appeal.
How long does the middle stage of a utility patent application take?
The average time from the initial filing to a first Office Action is approximately 18 months. So expect to wait about one and a half years for an initial review of your nonprovisional application. The deadline to respond to a substantive Office Action is 3 months without an extension, and up to 6 months with a request for extension of time.
It’s easy to see how the ongoing prosecution of a patent application can easily take 2-4 years, especially after a handful of Office Actions.
How to know when to appeal or abandon
This is not an easy decision. An appeal is certainly not a decision you should make without consulting your patent attorney. At our firm, we often ask whether we can still make any further meaningful claim amendments without sacrificing too much scope. If so, it may be worthwhile to file another amendment.
If not, then assess your probability of success in appealing the rejection. Do you have any claims rejected under Section 103 as being obvious? Consider whether you have introduced into the record sufficient secondary evidence of nonobviousness.
Before filing the appeal, it may be worthwhile to conduct at least one Examiner Interview. Sometimes a great deal of clarity and progress may be accomplished by simply talking to an examiner.
End of utility patent process: Grant or abandon
Hopefully, your journey will lead to an issued US patent. If you’ve received a Notice of Allowance, you will want to consider whether it may be worthwhile to file placeholder continuation to pursue additional claims.
Need to file a utility patent application?
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