How to Get a Utility Patent: Everything You Need to Know
Utility patents are one of the three types of patents available to inventors through the United States Patent and Trademark Office (USPTO). 8 min read
How to get a utility patent
If you want to know how to get a utility patent, know that engineered processes, mechanical systems, and other functional innovations in the technologies sectors are inventions that may be eligible for utility patent. Utility patents are one of the three types of patents available to inventors through the United States Patent and Trademark Office (USPTO). The other two types of patent, design patent and plant patents, are more limited in scope and eligibility requirements. Plant patents protect invention of asexual reproduction in plants, while design patents cover the unique illustration or ornamental aesthetics of a manufactured object.
Composites, machines, manufactures, and processes can be registered for utility patent with the USPTO. Most abstract, perhaps are processes, deemed to be stepwise methods. Processes can include business process and software processes. Some software patent applications, however, are turned down and referred to copyright as custom creation, rather than original or improved process. Copyright application can be obtained from the U.S. Copyright Office website: www.copyright.gov.
Patent of an invention legally protects a useful idea. The use value of an invention and its replicability are the terms to patent registration eligibility. Applicants registering patent “claims” with the USPTO are required to explain the intentional use of an invention, and its potential to be replicated. Prototypes are not mandatory for provisional or nonprovisional patent registration, yet an illustration is required, along with a description of research and development, along with the invention itself.
Professional renderings from expert patent draftspersons are digital illustrations, often in 3D sketch. Informal renderings are also acceptable, and not uncommonly submitted with provisional patents by individual inventors still involved in the research and development phase of their work. Nonprovisional patent registration guarantee must follow a provisional patent one year after the initial application is submitted.
Maintaining sole ownership over a patent can pose a challenge. The fact that many patents are not original inventions, but improvements of existing patented composites, machines, manufactures, and processes, means that legal complications are virtually guaranteed if it weren’t for nonprovisional patent registration. In a joint research and development scenario, one inventor from a team of inventors is entitled to submit a patent registration application. The benefit of submitting a provisional patent application first is that an inventor can claim “patent pending” during the development phase; claiming record of registered ownership early on.
Research teams working on an invention often sign a confidentiality agreement with non-disclosure agreement (NDA). The NDA protects a provisional patent holder from infringement by another party through public disclosure or corporate espionage during the time that the research and development of an invention is in-process. Confidentiality agreement also means that the terms and conditions to working agreement, and sometimes transfer, or rights to sale of an invention are outlined in writing. Independent inventors might request signatory of a unilateral confidentiality agreement where a potential investor or prospective licensee is involved in review of an invention undergoing patent registration consideration.
Types of Patents
The three types of patents – design, plant, utility – are subject to different rules of eligibility for patent. Most USPTO patent applications are for nonprovisional utility patents.
Non-Provisional Utility Patent Applications
The patent application process follows Title 35 of the United States Code (U.S.C.) and Title 37 of the Code of Federal Regulations (CFR). Patent laws and regulations to non-provisional registration follows a rigorous examination process to determine the suitability of an invention for patent protection. All foreign companies and inventors submitting nonprovisional utility patent applications to the USPTO must have “claims” written in English or verified translated in English, and fee payment by federal law.
The following elements are required to submit a nonprovisional patent application: 1) Utility Patent Application Transmittal Form or Transmittal Letter; 2) Fee Transmittal Form; 3) Filing fee; 4) Application Data Sheet; 5) Specification with at least one claim; 6) Illustration; and 7) Declaration or Oath by the Inventor. Plant patent registration applications also require a Amino Acid Sequence Listing. The application transmittal form lists the documents filed with the application and filing fees.
Obtaining a Patent in the U.S.
When an inventor decides to patent an invention, the single most factor when applying to the USPTO is to have all illustration, description, and specifications, along with prior art search listing available for review. Sophisticated inventions will require more in terms of documentation. The USPTO must see that an invention has been documented from its beginning is journal or record form. Step-by-step description of the development process, as well as the invention itself, is critical to meeting nonprovisional patent registration requirements.
Prior art search evidences that an inventor or company applying for a patent has reviewed all similar or same inventions existing in the USPTO database. Some inventors find that hiring a patent researcher or working with a law firm specializing in patent law, a good upfront investment, saving time and money once a patent is approved. Attorney’s fees can be high, however, costing upwards of $15,000 per filing. Complexity of invention can impact cost of filing fees for a patent depending on the number of claims on an application.
Federal law requires the USPTO to assist inventors with patent examination. Inquire with a patent examiner when applying for registration to determine an invention is eligible to meet the criteria for qualification. Patent applications must exhibit the elements of an invention, and describe use value. Documenting the elements of an invention consists of the following:
Record of Invention Research and Development
Patent application should include a signed and dated record of the research and development process leading to the innovation. Requests should be accompanied by the signatures of two reliable witnesses. The description must include all steps in the invention process, as well as details to the illustrated diagram of its features, and any modifications in the case of transfer from a provisional patent application to a nonprovisional patent application. Blueprint or prototype of an invention is not mandatory for patent application with the USPTO but can help in exhibiting the functional aspects of the invention. Prototyping also allows for testing of an idea, so that an inventor can make a solid claim, and describe the potential of a replication model, or foreseen improvement.
Review Patent Registration Eligibility
Before filing a patent application, it is important to review the criteria to eligibility. Some ideas are not patentable but may be copyright worthy, or eligible for trademark through the USPTO. If an invention “works” it exhibits utility and is likely eligible for patent approval. Design patents must be related to a manufactured object, yet is not useful for process.
Feasibility Study of the Commercial Potential of an Invention
Study of the commercial feasibility of an invention designed for patent may have much to do with the budget assigned for patenting and related expenses. If a utility patent proves to have major commercial potential in a feasibility study, investor confidence is likely to increase; enhancing finance toward development of a highly marketable and lucrative invention idea. For companies, patent is an important business decision that may be followed by trademark of an invention for distribution, sale, or marketing. Professional inventors working with research firms skilled at econometric analysis of technologies, and other innovation products and services can calculate the commercial potential of an invention in terms of short- and long-term return on investment.
Conduct a Prior Art Search
Establishing the limits of prior art held in the USPTO database can take time. When searching prior art for same or similar patented inventions, it is critical that an inventor have knowledge of related innovations in the field of development their patent will be relevant to. International patent research is also recommended to find out if foreign competitors are on the horizon. USPTO patent examination requires prior art search. Prior art documentation lends to the authentication of an applicant’s claim. Companies interested in licensing their invention can search the USPTO federal database for inventions that have also been trademarked.
Prepare and File an Application With the USPTO
The decision to file a nonprovisional patent application or provisional patent application is the first step to registration of an invention. Inventions undergoing research and development can be protected by filing a provisional patent claim for “patent pending” status in the meantime. Provisional patent registration also costs a fraction of the nonprovisional patent registration filing fee. Provisional patent application fees begin at $65 for micro-entities, $130 for small entities, and $260 for large entities. Both types of patent application require detailed illustration, description, and specification of the invention under examination. Filing of a nonprovisional patent application must be done within a year of a provisional patent application filing. Lapse of a nonprovisional application filing will result in forfeiture of the provisional patent claim to “patent pending”. Interested patent applicants can visit the USPTO website for details about patent and trademark registration filing: www.uspto.gov.
Summary of Utility Patent
Applicants for patent registration seek protection of an invention. The USPTO is the government body responsible for the granting of property right of an invention. If issued, a patent registration entitles the inventor to ownership of the original invention, and the design or utility resulting from it. The latter is the most sought patent registration, covering the widest range of inventions in the category of chemical development, mechanical engineering, technological innovation, and business process.
Utility patent registration covers new methods, and device improvements as well. The long list of ideas worked at as invention for use and replication reflects the enormous demand for utility patent. Since 1995, the USPTO has allowed inventors to file provisional applications. The change in policy has assisted to “patent pending” protect the interests of inventors and companies involved in intensive research and development of technologies and processes responsible for altering the scientific, engineering, manufacturing, and information sectors. Due to the fact provisional patent applications can be filed without the formalities and the fees required for non-provisional patent application, utility provisional patent registration filings have increased in popularity.
Preliminarily registration of a patent by the USPTO does not guarantee approval of a nonprovisional patent one year later. However, Inventors should be aware that the requirements to nonprovisional patent application require updates to an original application, and payment of additional fees. If an invention has advanced to include new facets of utility, individual claims must be made as part of the new application, to ensure that patent of all elements of an invention are protected by registration.
Patent application is a challenging process for most inventors new to the process. The specification documentation to an invention must include details to the invention and its development in writing. An experienced patent holder will stand a better chance at submitting the specifications, yet will also benefit from already holding searchable registration of a patent within the USPTO database.
Consultation with a USPTO patent examiner, or with a licensed intellectual property attorney specializing in patent representation, can improve the chances that an inventor’s patent application is approved the first time it is submitted. Failure to meet the requirements for patent application submission may result to denial of registration and additional filing fees the next time around.
Content and Substance of a Patent
Regardless which type of utility patent in terms of content or substance, the intellectual property behind the invention is the source of legal protections. The more useful, unique and non-obvious an invention is, the more likely it is that it will qualify for patent on the initial USPTO application submission. Contact the USPTO for more details about the eligibility of an invention for utility patent: www.uspto.gov.
Get in touch with UpCounsel if you have any questions about how to get a utility patent. For any questions or concerns, post your legal need on the UpCounsel’s marketplace. UpCounsel has top lawyers from around the nation to help you with your legal needs. UpCounsel lawyers have worked with reputable companies as Stripe and Google.