How to File a Utility Patent: Everything You Need to Know
A utility patent protects specific inventions, including machines, systems, or methods. 7 min read
What Is a Utility Patent?
A utility patent protects specific inventions, including machines, systems, or methods. There are also two types of patent applications called provisional and non-provisional. The majority of patents are for non-provisional utility patents.
Utility Patent Application: Provisional vs. Non-provisional
Non-provisional Utility Patent
A non-provisional utility patent is the general road most inventors go down in order to have their invention patented. Instead of filing a provisional patent application first, you will file a non-provisional patent application for protection of your invention, which for utility patents must be a piece of machinery or system. Non-provisional patent applications are more detailed than provisional applications.
Provisional Patent Application
Instead of a non-provisional utility patent, a provisional patent application may be better suited for your invention. This is a more cost-friendly way of protecting your invention. A provisional patent application is one that is filed with the USPTO and establishes an early filing date, but doesn’t equate to a formal patent application unless and until the applicant files a non-provisional patent application within the 12 months subsequent to filing the provisional patent application. A provisional patent application is both less detailed and less costly.
Immediately after you file your provisional patent application, you can indicate that your invention is patent pending on any prototype. During this time period, you can also still file a utility or design patent application. But, you have 12 months to develop your product even further and turn your provisional patent application into a formal utility patent application.
There are two things to be mindful of when filling out a provisional patent application, which include:
- Avoid using restrictive language in the description of your invention, i.e. “essential,” “necessary,” etc.
- Be broad (while also being precise) in your description.
Costs Associated With a Utility Patent
The cost of filing a utility patent application generally ranges between $8,000-$9,000. However, more complex claims (i.e. chemical, biotechnology) can cost up to roughly $16,000. Mechanical patent applications could be around $12,000. Complex electrical/computer patents could cost up to $14,000. Keep in mind that after the application is filed, it may require numerous amendments to perfect the application, which costs additional fees each time, ranging from $2,200 to $3,500 depending on the complexity and type of invention.
Choosing Between a Provisional Patent Application and a Non-provisional Patent
When considering the two types of patent applications, don’t think of them as a choice between the two but rather think of what is right at that point in time. First and foremost, you’ll want to examine both types of applications. Keep in mind that the non-provisional application can take up to 18 months. However, a provisional patent application doesn’t include the 18-month process and is only a patent pending approval in which you have 12 months thereafter to file a formal non-provisional patent application. Only at that point in time will the lengthy patent process begin.
Inventors who choose a provisional application generally do so in order to enhance or develop their invention during the 12-month period after filing the provisional application. Further, the process is much less expensive. Should you choose this route, you need not hire a professional attorney to assist you in the process. This is because a provisional application is much less time consuming and rather straightforward.
However, if you choose to file a non-provisional application, it is best to hire a qualified patent attorney to assist you. Your application should accurately capture your invention, which will result in a much stronger application with a better chance of approval.
Remember that, whichever route you choose, conducting researching on your own is invaluable. If you choose to do it alone, you’ll want to identify the requirements and fees associated with each type of application. However, if you choose to hire a patent attorney, you’ll want to do your homework in choosing the right patent attorney for your needs and your specific type of invention.
Whichever direction you ultimately choose, remember that research and self-education are invaluable to your success not only at this beginning stage, but also as you progress in the process of inventing.
When to File a Utility Patent Application
It's important that you file your application immediately after your invention is complete, because the first person to file a patent application will generally be considered the inventor. Timely filing of your patent application has other advantages, too. Once the application is filed, you can label your invention as "patent pending," which alerts all others to your claim. If you are successful in your patent application, you can seek compensation from any person or company who produced or used the invention during the "pending" period, including any provisional period.
Other Types of Patents
Another type of patent you may be interested in applying for is the design patent. A design patent protects only aesthetic design choices, including the design of manufactured products, the shape of various medical devices, and the layout of user interfaces. Someone can have both a utility and a design patent. For example, someone who invents a machine to be used to make a specific product, having designed that machine in a specific way, can apply for a utility patent for the piece of machinery itself and a design patent for the design of the machine. Notably, the review for a design patent is much shorter and much less expensive.
Another route for inventors to go down is to have an invention trademarked.
Each and every product invented has a specific name. Once you begin using the name with customers, the invention will become synonymous with its name.
Therefore, you should trademark the name of your invention.
Hiring a Qualified Attorney
When provisional patent applications are poorly drafted, it may not be successful. While there are seminars and workshops you can attend, you just won’t be as trained or well versed in this area as a patent attorney is. While provisional patent applications are easier to do on your own than a non-provisional application, inventors often forget that there are still requirements that must be met in order to be successful in protecting your invention. A patent attorney can make the process go more smoothly. Most importantly, a patent attorney will do the legwork for you, ensuring that you have a well-drafted application to increase your chances of receiving protection.
Trying to ascertain the costs associated with patenting an invention in the United States can be rather difficult, as it depends on the technology involved. It is important to understand that the act of patenting an invention can bring challenges. Your invention must be unique, and the strict measures imposed by the United States Supreme Court, United States Court of Appeals for the Federal Circuit, as well as other regulations imposed from the USPTO have made it difficult to have an invention patented. However, with that being said, it is easier to obtain a patent today than it was five to ten years ago. Although it may be easier, it is certainly not cheaper.
In order to better understand the costs associated with patenting your invention, you should consider the following:
- Discuss with a patent attorney, or even analyze for yourself, the costs associated with preparing and filing a patent application with the USPTO.
- Consider the type of invention you have. How complex is it? If complex, the process may be costlier and more time-consuming. If you have a simple invention, however, the patent review may not take as long, and thus, will be cheaper.
- If you wish to receive a patent, then you will be required to fill out a non-provisional patent application.
- Government filing fees of $730 are the minimum costs associated with patent applications for small entities.
- The fees associated with micro entities are generally at least $400.
- Professional drawings, which are highly recommended, will typically add another $300-$500 depending on the complexity of the drawings.
- Don’t forget — if you hire an attorney to assist you in the application process, you’ll be responsible for legal fees, which won’t come cheap with patent applications. The more complex your invention is, the higher the legal fees will be.
- You’ll want your application to be as strong as it can be in order to be successful in patenting your invention. Therefore, taking the time to hire an attorney and a professional to draw your invention on paper (for the patent examiner to review so he or she can better understand your invention and the economic purpose of it), is important.
- Generally, individual investors may want to find ways to cut corners financially. However, it is important to note that a patent application is not straightforward. There are many intricacies involved in the application, and a strong application usually involves an attorney’s assistance.
Applying for a Utility Patent on Your Own
While it is advisable to hire a patent attorney to assist you throughout the process, you might choose to go at it alone. Filing a patent application on your own will cost a lot less, but be mindful that it takes a lot of time. It may take even more time for you as you lack the professional knowledge. So, if you do choose to do it on your own, keep in mind that you will need to conduct your own patent search. In fact, Google allows you to search for current patents and will provide you with academic papers and other related websites to find what other inventors, if any, have an invention similar to yours. You may even want to reach out to others who operate in the same field as you to see if they have patented their inventions and how they went about the process. You can reach out to these individuals through social networks. You can also find a patent that is related to your application and use it as a template for yours.
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, Stripe, and Twilio.