If you’ve created a new product, process, or technology, obtaining a utility patent is a critical step to protect your invention and secure exclusive rights in the marketplace. When people talk about filing a “patent,” they are typically referring to a “non-provisional” “utility” patent application. This is opposed to other types of patent applications, such as a design patent application or a provisional patent application. A non-provisional utility patent application is the formal path to patenting your invention through the United States Patent and Trademark Office (USPTO).
In this guide, we break down the U.S. patent process step-by-step so you can understand what to expect and the pitfalls to avoid.
What Is a Utility Patent?
A utility patent protects the functional features of an invention—how it works, how it’s made, and how it’s used. This is the most common type of patent granted by the USPTO. If investigating how to get a patent, a non-provisional utility application is what you are looking for, it is the full, formal process required to obtain enforceable patent rights allowing you stop competitors from making, using, or selling your invention.
Step 1: Conduct a Patentability Search
Before investing in a patent application, it is important to determine whether or not your invention is:
- Novel – Not already disclosed or patented
- Non-obvious – More than an expected improvement
- Useful – Functionally operable
A search of the prior art (all publicly available information) helps identify existing patents or publications that may affect your chances of approval. Online databases like Google Patents and the USPTO’s website contain a wealth of useful information regarding the potential obviousness of your invention. While a patent attorney can perform a broader, more detailed, prior art search for you, even patent attorneys cannot search recently filed patent applications as the Patent Office keeps them confidential. So while patent searches are good, there is no way to guarantee that your invention is patentable until you actually file your application.
Step 2: Choose What Kind of Patent to File
You can file a provisional patent application first to establish an early filing date, but this is only temporary and not examined by the USPTO. To actually get a patent, you’ll need to file a non-provisional utility patent application within 12 months of filing your provisional application. While your provisional patent may preserve some of your dates to keep your invention out of the public domain, do not rely on a provisional patent application without expert advice as to what is preserved and what is not. A provisional patent application only covers what you have included in the application. If, you need to add additional material to support your new patent claims in your new non-provisional utility patent application, that new material and those new claims will receive a new filing date, which may place them in the public domain and invalidate your entire patent application.
Step 3: Prepare Your Patent Application
This step is the heart of the patent process. A strong patent application includes:
- Specification – Detailed technical description
- Claims – Legal language defining your invention’s scope
- Drawings – Diagrams or illustrations, if needed
- Abstract – A concise summary
The scope of all patents is determined by the claims. A claim is a one sentence description of your invention. You want your claim to include a combination of elements that is new and non-obvious, but not include so many elements that it is easy for a competitor to eliminate one of those elements and avoid infringing the patent. Drafting strong claims is therefore extremely important. While it is possible for an inventor to draft a patent claims themselves, it is almost impossible for an inventor without patent drafting experience to draft a good, let alone a great, patent claim. Unfortunately, the Patent Office does not care if your claim is good or bad, and will be more than happy to grant you a bad patent with bad claims. Compounding the problem is the fact that you will not know if your patent is good or bad until you go to enforce it, possibly years later, at which point it will be too late to fix.
Enlisting a registered U.S. patent attorney will ensure your invention, as described in your patent application, is clearly defined and strategically protected from potential competitors. Be discriminating in your choice of patent attorneys. If you hired fifty patent attorneys to draft a patent application covering your invention, no two of the applications would be the same. They would all vary in scope and defensibility. So be sure to choose a patent attorney with experience drafting patents covering your technology. It is also helpful, but not essential, to choose a patent attorney who has experience licensing patents and litigating patents in federal court.
Step 4: File with the USPTO
Once completed, your patent application is filed electronically through the USPTO’s patent filing system, along with applicable government filing fees. If you are an individual inventor or a small business, you may be eligible for reduced filing fees. Once you file your patent application, you’ll receive an official filing receipt and application number. From this point, your application is pending and assigned to an examiner. Although you are now “Patent Pending,” under most circumstances you cannot sue anyone for infringement until the Patent Office actually grants your patent. From this point forward the Patent Office has strict deadlines that must be followed. Failure to adhere to these deadlines could lead to your patent application being irreparably abandoned. Your patent attorney will have specialized software to docket these deadlines and will remind you of these deadlines well in advance.
Step 5: Respond to Office Actions
After some time (currently about two years), the USPTO will issue an Office Action—either approving your claims or raising objections based on prior art or technical issues. The Office Action will likely state the patent examiner is rejecting your patent applications based on several federal statutes. Amending your application and/or traversing the examiner’s rejections, while retaining obtain maximum patent coverage, requires a detailed knowledge of patent law and patent claim drafting, as well as the technicalities and practicalities of USPTO administrative practice. While it is possible for an inventor to respond to an Office Action, it is once again almost impossible for an inventor without experience practicing before the USPTO to draft a response that not only addresses the examiner’s rejections, but also preserves maximum patent coverage for the invention. In almost all cases it is best to have a patent attorney address and respond to the Office Action.
This phase of the process, known as patent prosecution, can take 2-6 years or more depending on the complexity and workload at the USPTO.
Step 6: Receive Notice of Allowance
After some back-and-forth, if the examiner finds no other similar inventions, the USPTO will send you a Notice of Allowance. After paying the issue fee, your utility patent will be officially granted. At this point you may enforce your patent against infringing competitors.
Step 7: Maintain Your Patent Rights
Your utility patent will remain in force for up to 20 years from the filing date, as long as you pay the required maintenance fees at 3.5, 7.5, and 11.5 years. Your patent attorney will also docket these dates for you and remind of the amounts due well in advance of the deadlines.
DIY vs. A Patent Attorney?
Drafting and filing a patent application may seem straightforward, but the language, technical detail, and legal strategy behind a successful non-provisional patent application are complex. The process is so complex, that not even regular attorneys are allowed to prepare and file patent applications for inventors. To prepare patent applications an attorney must: 1) have an undergraduate degree that includes specific STEM classes; and 2) pass an additional bar examine covering patent specific practice. These requirements are to ensure that your patent lawyer is qualified, your rights are protected, your claims are strong, and your invention is positioned to succeed.
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