Is a utility patent right for you?
A utility patent covers how an invention works. Unlike a design patent which covers how a product looks, a utility patent covers the functionality of a product or process. Accordingly, utility patents generally provide broader protection because competitors cannot easily avoid infringement by merely changing the appearance of their competing products.
Utility patents also take longer and cost more. Utility nonprovisional patent applications will also involve more rejections than your average design patent. Depending on your concept, utility protection may be the right way to go. Just don’t expect a quick and inexpensive patent process.
What are the types of utility patent applications?
A nonprovisional patent application is the only application that will lead to an issued utility patent. It is what will be reviewed, and most likely rejected, by a patent examiner. Filing a nonprovisional will start the USPTO examination process and put you in the queue (backlog) as you wait for examiner review.
So why are there two types of utility applications, provisional and nonprovisional? What is the point of filing a provisional patent application (PPA)?
A provisional patent application is a temporary placeholder that provides you with patent pending status and a one-year window to file your nonprovisional application. A provisional patent application does not lead to a granted patent by itself. Provisional applications will not be reviewed by the Patent Office. No one at USPTO is going to tell you whether your provisional is acceptable or sufficient. The only time a provisional might be reviewed by an examiner is after you file a nonprovisional, and the examiner wants to check if support for your nonprovisional claims can be found in your earlier provisional.
You must follow through by filing a timely nonprovisional application within 12 months of the provisional filing date.
So a provisional patent application serves as a precursor to the subsequent nonprovisional application. You must follow through by filing a timely nonprovisional application within 12 months of the provisional filing date. And if you fail to file the nonprovisional by the 1-year deadline, you lose the benefit of your provisional.
What are the main parts of a utility nonprovisional patent application?
A utility nonprovisional patent application must include:
- a description of the invention, including the written specification and any drawings; and
Let’s explore what those parts entail.
What is the description of the invention?
The description of the invention includes the written text and, in most cases, drawings. 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, your patent attorney may use a patent illustrator to prepare certain drawings to show key features of the invention. It is important that the drawings show any features you may want to claim.
In a nonprovisional application, the section entitled Detailed Description of the Preferred Embodiments should contain all the details of your invention. You will typically see numerals in this section referring back to the callout numbers in the drawings (e.g., ” . . . device 10 includes a part 20 connected to . . .”).
This Detailed Description must describe all the features that you will claim. In other words, you cannot claim features that are not adequately disclosed in your Detailed Description.
Utility Patent Claims: How do independent claims differ from dependent claims?
Recognize that the description of the invention does not define your legal rights. The claims do. So the scope of protection will be defined in the written claims.
Claims can read like a foreign language. It helps to understand the difference between independent claims and dependent claims. You want your independent claims to capture a balanced, broad scope of the invention without being too narrow. Your dependent claims are narrower in scope as they will 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 nonobvious 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. From start to finish, the average pendency of a utility application is almost three years.
The USPTO has provided an extensive guide on the nonprovisional utility application filing process.
How much does a utility patent cost?
In most cases, utility applications are substantially more expensive than design patent applications since a greater amount of work is required. 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 describing the invention and claiming the invention.
After a nonprovisional patent application is filed, expect a long road ahead in dealing with the Patent Office. You may receive two or more rejections from the patent examiner.
How long does a utility patent last?
The term of a utility patent is generally 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.
Need help with filing a utility patent application?
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