Is a utility patent right for you?

A utility patent covers the functional aspects of an invention, how the invention works. The scope of protection is defined in the written claims. The USPTO has provided an extensive guide on the nonprovisional utility application filing process.

A design patent, on other hand, covers only the ornamental appearance of a product or concept. While it might make sense to file both design and utility applications to cover different aspects of your invention, do not make the mistake of assuming that a design patent alone will cover the way in which your invention works.

Why is a utility patent application so expensive?

In most cases, utility applications are substantially more expensive than design patent applications since a greater amount of work is required to draft a utility application. Unlike a design patent application where most of the work is in illustrating design drawings, a utility application requires a significant amount of work in:

  1. describing the invention; and
  2. claiming the invention.

After the utility application is prepared and filed, there is typically a long road ahead in dealing with the Patent Office. You may receive two or more rejections from the patent examiner.

What is involved in the description of the invention?

Describing the invention involves a coordinated effort between the inventor, the patent attorney or agent, and a patent illustrator. Once the invention is sufficiently disclosed and properly understood, the patent attorney writing the application may have a patent illustrator prepare certain drawings that help to show key features of the invention. It is important that the drawings show any features you may want to claim.

The Detailed Description of the Preferred Embodiments will be written with reference to the drawings, typically by using callout numbers to refer to the numerals in the drawings pointing to specific parts of the invention.

What is involved in claiming an invention?

Claims can read like a foreign language. If you are trying to get a utility patent, you need to understand the difference between independent claims and dependent claims. You want your independent claims to capture a proper scope of the invention without being too narrow. Your dependent claims may recite additional features or specificity.

Keep in mind that the Detailed Description must provide support for your claims. In other words, you cannot claim something that is not adequately disclosed in the specification. 

What is the patent application process after the initial filing?

After the initial filing, you can expect a long slog in going back and forth with the patent examiner. Most Office Action rejections will cite prior art references found by the examiner which are arguably similar to your claimed invention. Your response to each Office Action will try to convince the examiner why your invention is unique and non-obvious over the cited prior art references.

It can take several years after the initial filing date of a nonprovisional application to get a utility patent granted, and there is no guarantee. The average wait time for this first Office Action from the patent examiner is about 16 months. The average pendency of a utility application is almost three years.

What are the different types of utility applications?

There are two types of utility patent applications:

  1. provisional patent applications
  2. nonprovisional patent applications.

A nonprovisional application must be filed in order to obtain a utility patent. The nonprovisional application is what gets reviewed by an examiner.

A provisional patent application is a temporary placeholder that can defer the filing of a nonprovisional application by 1 year. A provisional patent application does not lead to a granted patent by itself. You must follow through by filing a timely nonprovisional application.

How long does a utility patent last?

The term of a utility patent is 20 years from the filing date, assuming maintenance fees are timely paid after the grant of the patent.  Utility applications can take several years to proceed to issuance. Therefore, a very practical consideration in deciding whether to pursue a utility patent application is the life cycle of the product or process at issue.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
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