How to File a Utility Patent: Everything You Need to Know
A utility patent protects specific inventions, including machines, systems, or methods. 6 min read
2. Step 1: International and Domestic Protection
3. Step 2. Type of Patent Protection
4. Step 3: Do Your Research
Updated November 26, 2020:
How to File a Utility Patent: Everything You Need to Know
If you want to learn how to file a utility patent, you’ll want to first consider your options. While you can certainly file a utility patent on your own, you’ll want to do your research to figure out if hiring a patent attorney can help you be successful in your utility patent application.
A utility patent protects a product’s method, manufacturing, and/or system that is used in the making and use of the product. A majority of patent applications are in fact utility patent applications. With that being said, this type of patent can be rather time-consuming and costly to obtain. It will really depend on the type of invention you have, and if you just want it patented within the United States or internationally in other countries as well.
Step 1: International and Domestic Protection
Determine if you want to file for protection internationally as well as in the United States. If filing for international patent protection, there are other steps to take as seeking protection in other countries can be even more costly and take quite a bit of time to obtain. However, assuming you do want to seek protection within the United States, you’ll then move on to Step 2.
Step 2. Type of Patent Protection
Once you know that you want to file for patent protection in the United States, you’ll need to decide if you want to file a provisional or non-provisional patent application. The provisional application is a much quicker process that costs a lot less than the non-provisional application. Furthermore, obtaining a provisional patent does not protect you for the typical patent protection of 20 years. Essentially, the provisional patent application is an application that you can file with the United States Patent and Trademark Office (USPTO), which provides you with a period of 12 months to determine if you want to file for non-provisional patent protection. During this 12-month period, you will in fact have protection over your invention in that others cannot copy or use your invention; what’s more, you can tell the public that your new invention is “patent pending.” However, keep in mind that if you do not file for non-provisional protection within that 1-year timeframe, you will lose protection after that time.
Many inventors benefit from filing for provisional patent protection if they have not yet completed the production of their invention or need additional time to determine the next steps on their new invention. Maybe you’re an inventor who cannot afford to pay the costs associated with filing for patent protection. In that case, you can pay a nominal fee to obtain protection for one year after which point you will then have to decide if filing for non-provisional protection is the next appropriate step.
For those who wish to obtain non-provisional protection without having filed an application for provisional protection, you’ll want to visit the USPTO website to first identify what steps are needed when filing for protection. Now, you’ll move onto Step 3.
Step 3: Do Your Research
You’ll want to do an extensive amount of research before filing for the non-provisional patent application. You’ll not only want to research the different types of fees you’ll incur when filing for protection, but you’ll also want to familiarize yourself with the process – including the length of time it could take to obtain protection, any potential issues you may face along the way, deadlines to file, legal fees, and other professional fees should you choose to seek help when filing for protection.
General Fees. Remember that there are several different fees associated with seeking protection. Not only is there a filing fee, but there are also maintenance and issuing fees, fees for legal assistance should you choose to hire a patent attorney, illustration fees if you hire a professional to produce various drawings of your new invention, and other miscellaneous fees, which can include late filing fees, fees to amend your application, and several other types of fees that the USPTO charges. In all, you can potentially spend over $20,000 to file for protection. So you’ll want to ensure that you can afford such fees.
Timeliness. You want to be mindful of the various deadlines and timeframes you have for filing for protection. For example, if you file your application, and a year later receive a letter from the USPTO office that the application needs to be amended, you’ll want to be sure that you can handle the changes that will need to be made at that point in time. Quite often utility patent applications need to be amended at the request of the patent examiner working for the USPTO. Amendments can include anything from redrafting the invention through illustrations, being more specific on the type of invention, describing the invention itself and how or why it should receive patent protection. When receiving the request from the patent examiner, you’ll have a specified period time in which to amend your application. Therefore, regardless of what is going on in your life at that point in time, you will need to abide by the deadline provided to you. If you don’t, you may face additional fees or be disqualified for patent protection entirely. It’s important to remember that countless applications are being filed daily for utility protection; therefore, your invention, as complex or simple as it may be, is one of many applications being looked at by patent examiners working for the USPTO.
Legal Fees. Depending on how complex your invention is, you may want to hire a qualified patent attorney to assist you with your application. In reality, your attorney will do all the legwork for you so that you have more time to work on other important things, like developing your new invention and helping market your product. Even if you want to file for protection on your own, and don’t want to incur the additional costs, it is wise to at least speak to an attorney who generally provides you with a free consultation. When you meet with an attorney, be sure to ask as many questions as possible to find out how complex your application may be, and what the attorney will charge. Make sure that the attorney provides you with as much information as possible so that you can make an educated decision as to whether or not to use that attorney’s assistance when filing for protection.
Again, keep in mind that an attorney specializing in this area can generally market your product in such a way that it has a greater chance of success in becoming patented.
If your invention is simple and straightforward, then you may be just fine filing for protection on your own. But if your invention is detailed and rather difficult to understand, then a patent attorney may be the best decision for you.
And even if you choose to file alone, you may still want to hire a professional illustrator who can draft professional drawings of your invention. This will help the patent examiner assigned to review your application to better understand the details of your invention, what it can do, and what it will look like.
Communicate With Your Network. Many people went through the same thing you went through when seeking patent protection. Utilize your network—speak to friends and family, as well as your social media network. Reach out to people via Facebook, Twitter, LinkedIn, and other social media sites to ask questions. You may even know someone who has a connection to a qualified patent attorney. You’ll be able to have additional questions answered if communicating with your network in this manner. Don’t be afraid of the process. Ask your network if they can help. Just be careful not to give them too many details about your invention, since you haven’t obtained patent protection for it yet!
Either way, just know that the process of filing a utility patent can be expensive and time-consuming regardless of whether or not you have an attorney help you. Therefore, you must exercise patience and be ready to incur various fees.
If you need help applying for a utility patent, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.