The Utility Patent Process
PATENT SEARCH
APPLICATION FILING
EXAMINATION & PROSECTION
ALLOWANCE AND REGISTRATION
MAINTENANCE
What is a Utility Patent?
A utility patent is a patent that covers the creation of a new or improved — and useful — products, process, machine, or other useful product or method (including software, methods of doing business, and a wide range of new and useful inventions). A utility patent prevents competitors from making, using, or selling the invention without authorization.
To qualify for a Utility patent, the invention must be “novel” and “non-obvious.” Novelty requires that the invention not have been done before, anywhere in the world. Just because a product is not currently on the market is not enough, it must be completely new and this includes product that have gone live in foreign countries.
Whether something is non-obvious is a difficult question to answer, but a patent examiner will try to find all of the features in different patents (and other prior art documents), and see if there are teachings in the art to combine these references to arrive at the present invention.
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It is helpful to first perform a patent search to determine if a potential invention may be patentable. If you are a do-it-yourself inventor, a screening search may be performed online (www.uspto.gov, and www.google.com/patents) relatively quickly and easily. It is also fairly easy to research the marketplace (google search, and searching through stores and catalogues) to determine if anyone is already selling a similar product.
If you do not find any “prior art” (i.e., prior patents, publications, products for sale, etc.), a professional PATENTABILITY search may be desired. A professional searcher will be able to search much more thoroughly and determine whether the invention is patentable. A complete search will enable the Patent Attorney to write the broadest and strongest claims. A typical U.S. patentability search costs $1200, although this can vary depending upon the complexity of the invention, and the field of technology involved.
Important disclaimer: It is worth noting that no search is able to completely guarantee success in a patent application. There are many sources of prior art that can’t be searched (e.g., patent applications that have been filed but not yet published), and prior art that is too expensive to search under ordinary conditions (e.g., foreign databases, technical journals, etc.). If you need a more detailed search, discuss various additional searching options with your attorney.
In addition to a patentability search, it may also be beneficial to perform an INFRINGEMENT search, to determine if there are patents which your product might infringe. If you are launching a new product in a fiercely contested space, this may help you avoid costly infringement problems later. Infringement research tends to be fairly expensive, so it should be performed with care, but it can be essential under the right circumstances. Under most circumstances, a patentability search is the most cost-effective solution.
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If you decide to move forward with a patent application, it is important that the patentee understand the basics of the patent application process. This will not only prepare the patentee for the process, it will also ensure that the patent be as broad and strong as possible, and prevent falling into any traps or pitfalls along the way.
Once you have started the application process, you will need to fill out a questionnaire that will help us gather all the necessary information needed to prepare the application. You can find the Questionnaire here.
A. Provide a Detailed Disclosure of the Invention
It is important that a patent application include all of the potentially patentable details of the invention. Some of the strongest patent claims may be based on particular details of the construction, methods of manufacture, or methods of use of the invention. Take the time necessary to fully disclose all of the details, especially details that are different than prior art devices, and details that are important to the manufacture, operation, and/or use of the invention.
It is also helpful to include different EMBODIMENTS (i.e., specific implementations) of an invention. While your focus is probably on your currently preferred embodiment (i.e., how you plan on making it yourself), it is worth disclosing and discussing alternatives. Also, ask yourself how a competitor might try to change or improve your current product, or try to design around your patent. If these alternatives are discussed, it can become much more difficult to get around your patent.
Other important details include anything done “against the teachings of the prior art,” or solutions that you have found to hurdles that have confounded others in the industry. The more detailed and specific, the better.
IMPORTANT NOTE: Many patentees mistakenly believe that being vague helps to broaden the patent, and this is not correct. The scope of patent protection is determined by the language used in the CLAIMS, not the details disclosed in the specification. Add as much detail to the specification (i.e., disclosure) as possible, and work with an attorney to make claims of suitable scope.
Questionnaire:
Once you have started the application process, you will need to fill out a questionnaire that will help us gather all the necessary information needed to prepare the application. You can find the Questionnaire here.
B. Information Disclosure
When an application is filed, all involved parties (inventors, applicant, attorney) have an obligation to disclose all pertinent prior art to the patent office. Failure to disclose prior art can lead to many potential problems, including invalidation of the patent.
Be sure to disclose to your attorney all prior art (prior patents, publications, products being sold, etc.), so they can be disclosed via an Information Disclosure Statement.
This disclosure obligation continues until the patent is registered, so if you find similar prior art while the patent is pending, you should immediately disclose it to the attorney.
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Once the patent application has been filed, it is important to realize that this is only the start of the process. The application must be examined by a Patent Examiner, a process that takes about 1-2 years. Once the Examination is complete, there are arguments back-and-forth between the Attorney and Examiner as whether the application should be granted or rejected (a process called “Prosecution”). This usually lasts a few months, but in rare cases can take years.
Prosecution: A written response from the Examiner is called an “Office action.” The first Office action is almost always initially a rejection of at least some, often all, of the claims. So don’t be concerned about an initial rejection, and you should budget a few thousand dollars ($1000-3000) to respond to initial rejections. This process can often be resolved in a single action, but it may also take multiple rounds of argument, especially if you want to fight for the broadest claims possible. You may also end up filing multiple follow up patents at this time, to include improvements or claim additional features of an invention to just get around rejections. The stronger you want your patent, the more you should budget to fight for it. The fight can sometimes go to the Board of Appeals, or higher, if necessary.
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Once the patent has been allowed, you have 3 months to pay a final government issue fee. This is also your last chance to file additional applications for further claims, to add improvements, etc. There are many benefits to keeping at least one application “pending,” so if you have the budget, and want to maximize your protection, you should discuss further patent filings with your attorney. Once the allowance is paid for and filed, we will receive the registration document in approximately 3 months.
Note: The USPTO has switched to electronic copies of registration documents meaning that hard copies will no longer be sent out
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Maintenance fees are due at 3.5, 7.5, and 11.5 year intervals from patent grant. If you don’t pay these fees, the patent will expire. We docket reminders for all our clients and keep you up to date on when your fees are due. All correspondence regarding your application status and fees will come directly from Karich & Associates. Please be wary of scam notices which ask for payment for these maintenance fees. See this article here for more details.
Why get a Utility Patent?
A Utility patent will enable a patent holder to prevent competitors from practicing the invention (as defined in the “Claims”), and collect monetary damages for infringement. This enables a patent holder to maintain higher margins on his or her product, and protect market share from competition.
This is a critical concern in the modern, highly competitive marketplace. Without a patent advantage, competition will be swift and fierce, and price competition will quickly eliminate profit margins.
To justify your investment in new product development, testing, and launch, it is important to establish patent tools that will enable you to maintain healthy profit margins in the face of tough competition.
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The cost of the Utility Patent depends on the complexity of the product and your entity status (micro, small, or large.) The average range for the application is between $5,000 - $8,500 with a government filing fee averaging $910.
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Yes, the initial application quote is only for preparing and filing the application and does not cover any post filing matters such as prosecution, allowance, and maintenance fees.
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There is almost always initially a rejection of at least some, often all, of the claims. So don’t be concerned about an initial rejection, and you should budget a few thousand dollars to respond to initial rejections. The rejections from the examiners are called “Office Actions.” This process can often be resolved in a single action, but it may also take multiple rounds of argument, especially if you want to fight for the broadest claims possible. You may also end up filing multiple follow up patents at this time, to include improvements or claim additional features of an invention to just get around rejections. The stronger you want your patent, the more you should budget to fight for it. The fight can sometimes go to the Board of Appeals, or higher, if necessary.
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Once the Examination is complete, the Examiner issues an “Office Action” and there are arguments back-and-forth between the Attorney and Examiner as to whether the application should be granted or rejected (a process called “Prosecution”). This usually lasts a few months, and the cost varies from application to application, but the average cost to prepare and file a response is typically between $1200 - $3500.
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When we receive an Allowance from the USPTO, this means that your application has been approved and is moving on to the registration process. We will notify you when we receive the Notice of Allowance and will let you know the fees that will be required to proceed. The fees vary depending on the applicant’s entity status.
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Maintenance fees are fees that keep your patent actively registered and are due at 3.5, 7.5, and 11.5 year intervals from patent grant. If you don’t pay these fees, the patent will expire. The fees vary depending on the applicant’s entity status.
*All fees are subject to change
Now What?
Have more questions? Feel free to look at our FAQs page for more answers or contact us if you have additional inquiries.