Laws & Processes

The Utility Patent Process

A utility patent is issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof. It generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing. Approximately 90% of the patent documents issued by the USPTO in recent years have been utility patents.

Below is a summary of the benefits of utility patents:

  • Protects the functional aspects of an invention.
  • Can provide broad patent protection making it difficult for a competing product to avoid patent infringement.
  • Capable of protecting many different variations of a product with a single utility patent.

We have tried to collate a list of questions with answers from the USPTO website that will help you in understanding the process to get a Utility Patent:

What should be my Application strategy? Provisional or Non-provisional application? 

  • Provisional Application: A provisional patent application allows you to simply file your invention without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. A provisional application is a quick and inexpensive way for inventors to establish a U.S. filing date for their invention (priority date), so anyone conceiving the same invention later will not be able to obtain a patent (as long as a full, non-provisional patent application is filed within one year of filing the provisional version). Filing a provisional patent application allows the inventor to refer to her or his invention, and mark the product ‘Patent Pending’.
  • Non-Provisional Application: The non-provisional application establishes the filing date of your patent application and begins the examination process. Your patent application will be examined by the USPTO only after the Non-provisional application is filed.

Should I use professional legal services or file myself?

Hiring a Patent Attorney or IP Firm: The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO) to obtain the patent is an undertaking which requires good knowledge of patent laws, Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention. Also, a comprehensive search needs to be performed to be sure that the invention is new and can be patented. Inventors may get into considerable difficulty if they prepare their own applications and file them in the USPTO and conduct the proceedings themselves.

Inventors are not skilled in the art of searching prior-arts and hence might miss important references which might lead to loss of filing and examination fees and eventually abandoning of their patent application. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.

Therefore, hiring a Patent Attorney for filing your patent and a Patent search firm for Patentability search may be the two most important and correct decisions of your patent’s life cycle.

I want to file myself (Pro Se):

If you do want to file your patent yourself, familiarize yourself with important patent laws, procedures of the patent office and study the domain of your invention in detail.

If you are an inventor or small business who has limited resources and needs help applying for a patent on an invention, you may be eligible to receive pro bono (“for free”) attorney representation through the Nationwide Pro Bono Program.

Make sure you have all the required documents listed in the Checklist for Filing a Non-provisional Utility Patent Application with the USPTO.

How much is this going to cost me?

A patent application is subject to the payment of a basic fee and additional fees that include a search fee, an examination fee, and issue fee. Depending on your application, there may also be excess claims fees. Fees vary depending on the type of patent application that you submit. Get the Current Fee Schedule here.

How long will this take?

The time it will take until you receive your first letter from the USPTO in response to your application depends on the domain of the invention. You can estimate the time using the First Office Action Estimator.

Can I get my patent faster?

Consider expedited examination options. The USPTO has various programs and initiatives that are available to applicants during each phase of the application process. Each program is designed to advance the progress of a patent application and to provide applicant assistance. You can view a detailed Matrix of programs available Prior to Examination on USPTO’s website.

How do I prepare and submit my application?

There are several sets of requirements to prepare and submit a Patent application. See the Patent Application Guides for the detailed legal requirements for filing a Utility Patent Application.

Make sure to submit your initial application with all the required parts needed for obtaining a filing date and include the correct fee.

Can I submit my application online?

Use EFS-Web, the USPTO’s electronic filing system for patent applications, to submit Utility patent applications, Provisional applications and many other types of Office correspondence to the USPTO via the Internet.

Before you sign the application, make sure that you read the written specification and claims. You will not be able to add anything new to your application once it has been filed with the USPTO.

What if my application is incomplete?

If your application is incomplete, you will be notified of the deficiencies by an official letter from the USPTO, known as an Office Action. You will be given a time period to complete the application filing (a surcharge may be required). If the omission is not corrected within a specified time period, the application will be returned or otherwise disposed of; the filing fee if submitted will be refunded less a handling fee as set forth in the fee schedule.

When and how will my application be examined?

Once your application has been accepted as complete, it will be assigned for examination.

Your examiner will review the contents of the application to determine if the application meets the requirements. If the examiner does not think your application meets the requirements, the examiner will explain the reason(s). You will have opportunities to make amendments or argue against the examiner’s objections. If you fail to respond to the examiner’s requisition, within the required time, your application will be abandoned.

What if my response to a Final Action does not overcome all of the examiner’s objections?

If your response to a Final Action does not overcome all of the examiner’s objections or if any of the claims have been twice rejected. You can consider filing an appeal with the Patent Trial and Appeal Board (PTAB).

Can I get updates about my application?

Sign up to view your pending application and documents in Private PAIRYou can also sign up for the PAIR e-Office Action Program to receive an email notification when a new Office communication is available for viewing and download in PAIR.

When do I receive an approval?

If the examiner determines that your application is in satisfactory condition and meets the requirements, you will receive a Notice of Allowance. The notice of allowance will list the issue fee and may also include the publication fee that must be paid prior to the Patent being issued.

When do I get a Patent number for my invention?

Utility and reissue patents are issued within about four weeks after the issue fee and any required publication fee are received in the Office. A patent number and issue date will be assigned to an application and an Issue Notification will be mailed after the issue fee has been paid and processed by the USPTO.

How will I receive my patent with a ribbon and gold seal?

The patent grant is mailed on the issue date of the patent. It includes any references to prior patents, the inventor(s)’) names, specification, and claims (to name a few). It is bound in an attractive cover and includes a gold seal and red ribbon on the cover. You can also Order certified documents with the USPTO ribbon and seal as well as the signature of an authorized certifying officer.

We hope these FAQs will help you file and get a US Utility patent. Keep Innovating!

For any further questions, feel free to comment or contact me on jay[email protected] .

Meet the Author:

Jay Sharma

Manager – Client Engagement

Jay has extensive experience in Intellectual Property consulting. He has been helping clients across the globe in achieving their business goals. He has consulted thousands of individual inventors to get patents for their inventions, monetize them and unlock the real value of their IP. He loves golf and spends all his free time reading fiction.

Citius Minds is a technical consulting firm based out of Chicago. We provide specialized patent analytics and litigation services to patent professionals across the globe. We are highly appreciated and loved by our clients for the following service offerings:
| Patent Invalidity Search | Patentability Search | Freedom to Operate Search | Infringement search | Patent Landscape Analysis | Patent Portfolio Analysis | Infringement Contentions | Invalidity Contentions | Prior art search | Rule 11 charts | Source Code review | Pre-litigation analysis | Clearance search | Patent Validity Search |

7 comments

  1. Wow, very well written, I enjoy reading your blog. Thanks for sharing the step by step info about The Utility Patent Process. thanks.

  2. I am frequent to blogging and I truly appreciate your content. I learn something more challenging everyday. This is very good info. Can I republish some of your content on my site?

  3. Beautifully explained article. Good job done by the author, he has fantastically explained the entire process of utility patent. This article is of great help for the people who are looking for a guidance for filing their new inventions. Great work.

  4. This is very useful. The step by step process of getting a Utility Patent is very nicely written. Congrats to the author for writing such an interesting article.

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