What do we need to file your utility nonprovisional patent application?
If you are new to utility patents, this is a good place to start. I want to give you a patent attorney’s perspective on drafting a utility patent application. Knowing what the patent attorney is looking for can help you, the inventor, provide more relevant information in an efficient manner. My goal here is to demystify the initial filing of a utility nonprovisional patent application. Let’s delve into what it takes to draft a solid utility patent application.
Help us understand your invention: What makes it different?
As patent attorneys, 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 determining 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 equal. With your input, we prioritize unique features based on their significance. For example, if a client cares about only one out of five potentially novel features, then that top feature needs to be prioritized above others when it comes to drafting the claims.
Describing the invention is not the same as claiming it
Now let’s focus on what goes in a utility patent application. There is a huge difference between the description and the claims so you need to understand this dichotomy. 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 that your description is too detailed, you are focusing on the wrong thing and misunderstanding the purpose of the description. Do not conflate claims with the description.
Patent practitioners typically think of the disclosure portion of the application as comprising the drawings (aka figures) and the Detailed Description of the Preferred Embodiments. This is why 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 some small detail which seemed insignificant early on 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 is providing ammunition for the patent attorney to use if and when necessary.
Each patent attorney will have his or her own individual writing styles and preferences. My team and I prefer to start with the claims and work backwards. We find this to be a more disciplined approach as we’re forced to outline the key claim elements. Once the claims are drafted, we write the detailed description to make sure enough support is provided for the presently drafted claims as well as for any new or different claims to be prosecuted after the initial filing.
In the claims section of the patent application, you will typically 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 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.
Keep in mind there is a high probability that your initial claims will undergo amendments as result of being rejected, which is a very high probability. So your final claims, if allowed, will likely be very different than your initial claims.
Filing the utility nonprovisional patent application
In reviewing drafts of the application, the inventors should keep in mind that the claims are in a temporary state and 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 and to 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 inventor declarations and, if necessary, a patent assignment to transfer the ownership of the patent application to a company or other entity. While such executed documents are not necessary for the initial filing of the application, you will save late filing fees by having all the signed paperwork upfront.
As soon as the application is filed, the USPTO will instantly provide a filing receipt with the confirmed filing date and an application serial number.
How long does it take to draft and file a utility nonprovisional patent application?
It takes approximately 1 month to prepare and file a nonprovisional patent application. From the date we receive your invention disclosures, we aim to send you a first rough draft in two weeks.
The back-and-forth review and revise process can take an additional two weeks. As soon as we receive the inventors’ comments, we typically send a revised draft in one or two business days. In most cases, we are able to finalize a nonprovisional application with one or two revised drafts.
If you are in a rush to file a nonprovisional application, we may be able to expedite the filing which will require the inventors’ prompt cooperation in providing feedback.
When can you say patent pending?
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.
What is the cost of filing a utility nonprovisional patent application?
The cost of the initial filing of a nonprovisional application can vary widely even within the same firm depending upon the complexity of the subject matter and the length of the application. In our firm, we provide flat rate estimates for the initial drafting and filing of non-provisional applications, which can range from $8,500 to over $15,000. You should also factor USPTO filing fees and illustrator fees which can easily add at least another $1,100.
For a more detailed breakdown of initial filing costs, see this post on the cost of filing a nonprovisional patent application.
Keep in mind that the initial filing cost does not include responding to Office Action rejections which will inevitably occur.
Does our cost for filing a patent application include a patent search?
No, our initial filing estimates do not include any patent searches. Before filing a utility nonprovisional application, it may be wise to consider a patentability search (aka novelty search), which costs $1,500 per invention and takes about one week.
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 an (non)infringement search. Keep in mind that a patent infringement search will cost substantially more than a novelty search.
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