Utility Patent Application: What Is It?

Utility patent applications offer intellectual property protection and give you exclusive rights to prevent others from making, selling, or profiting from your original invention. Utility patents are the most common type of patent, others being design patents, plant patents, and more. The United States Patent and Trademark Office (USPTO) issues utility patents.

To be patentable, an invention has to meet patent requirements. It must be novel, useful, non-obvious, and not previously disclosed. Utility patents cover the functional aspects of several types of inventions:

  • Machines: This includes products with moving parts.
  • Manufactured Articles: This includes products with no or few moving parts.
  • Processes: This includes software and business methods.
  • Compositions of Matter: This includes compounds, mixtures, and pharmaceuticals.

There are several types of utility patent applications:

  • Direct Filed Application: This is the first utility patent application related to this invention.
  • From a Provisional Application: You can file a provisional patent application before filing a full patent application. You must file the full patent application within one year of the original filing date.
  • From a Foreign Application: This is related to a foreign patent application. You can file a patent application directly with another country. Within one year, you can file with the USPTO.
  • As a Divisional Application: This is related to a separate patent application. The USPTO can rule that an application includes two inventions. You can eliminate one from the original application. You can file a second application for this additional invention.
  • As a Continuation-in-Part (CIP) Application: This is related to a separate patent application. It includes a specification from an earlier patent application.
  • As a National-Stage Application: This is for foreign applicants. After filing an application under the Patent Cooperation Treaty (PCT), you enter the national stage of the application process.

Advantage of a Utility Patent Application

  • It Gives You the Potential to Make a Profit

Profit is one of the main reasons to apply for a utility patent. With a patent in hand, you can make and sell your invention. You can also prevent others from doing so.

  • It Creates Licensing Opportunities

Some inventors don't want to make or sell their invention. They do want to profit from it, though. You can license or assign your rights to another party and charge fees for this.

Disadvantages of a Utility Patent Application

  • It Doesn't Cover Designs

Design patents cover the look of an object. If your invention also has a unique appearance, you should also apply for a design patent. You can file both a utility and a design patent related to the same invention. Review the Apple v. Samsung case to learn more about the benefit of filing both.

  • It Doesn't Cover Plants

Plant patents cover the discovery and reproduction of plants. This requires a separate application.

  • It's Expensive

Filing a utility patent application isn't free; it can cost thousands of dollars. You should have a plan to profit from your invention before filing a patent. Otherwise getting a patent might not be worth the cost.

Common Mistakes

  • Filing a Utility Patent Application Too Late

Once you share your invention publicly, you can lose both national and international patent rights. As an inventor, you essentially have one year to secure your intellectual property rights by filing a utility patent application.

  • Not Filing a Provisional Patent Application

The patent application process is long. Several years can pass before your patent issues. A provisional patent application gives you extra protection. If you're not ready to file a full patent application yet, a provisional application saves your place in the patent examination line.

  • Not Meeting Patent Requirements

You can't patent an invention that's already protected. Do a patent search to find out if something similar exists. If it does, yours must represent a distinct improvement.

  • Naming the Inventors Incorrectly

The inventor(s) can be an individual, a group, or a business. If there are multiple inventors involved, deciding who to name isn't easy. Generally, you should name people who contribute to the invention. Some businesses require employees to assign their rights to the company, though.

  • Not Getting Legal Help

Hiring an attorney is optional, but it's usually a smart decision. You need expert-level knowledge to file a utility patent application. Without that, you could file a bad patent that doesn't fully protect your rights.

Deadline

There is no specific deadline for filing a utility patent application. You should file it as soon as possible to assert rights to your invention, though. If another party files a similar patent application sooner, you could lose your exclusive rights.

If you file a provisional patent application, you must file a utility application within 12 months of the original filing date.

Frequently Asked Questions

  • Should I File a Provisional or a Non-Provisional Patent Application?

If your invention is complete, you can file a non-provisional patent application. These require more details and a higher fee.

If you're not sure about the invention, file a provisional application. It gives you an earlier filing date for your patent application. This protects your rights to your invention while you finish it. A provisional patent application gives you time to decide how to profit from the patent. If you discuss your invention with investors, you can use your provisional patent application as a marketing tool.

  • What Does "Patent Pending" Mean?

This means that an inventor has filed a provisional or non-provisional patent application. This is usually a warning to other inventors and infringers. A patent holder can demand royalty payments from anyone who infringed the patent during the pending period.

  • How Long Does It Take to Get a Utility Patent?

It can take two to five years for a utility patent to issue. Your filing date can affect the total application time. The number of amendments you have to make can also have an effect.

  • How Long Does a Utility Patent Last?

Utility patents last for 20 years from date of issue.

  • How Much Does a Utility Patent Application Cost?

The USPTO charges standard fees for utility patent applications. If your patent application is successful, you'll receive a Notice of Allowance. You will then have three months to pay the issue fee. Then you'll receive your issued patent within 10 to 12 weeks.

Description

Standard Fee

Small Entity Fee

Micro Entity Fee

Utility Patent Application

$280

$70

$70

Utility Patent Search

$600

$300

$150

Utility Patent Examination

$720

$360

$180

Provisional Patent

$260

$130

$65

Utility Patent Issue Fee

$960

$480

$240


In addition to these, you may have to pay attorney fees.

Type of Invention

Attorney Fee Range

Relatively Simple

$7,500 to $9,000

Minimally Complex

$9,000 to $10,000

Moderately Complex

$10,000 to $12,000

Relatively Complex

$12,000 to $15,000

Highly Complex

$15,000 or more


Steps to File a Utility Patent Application

  1. Document Your Invention

Start documenting your invention as soon as possible. Include written descriptions and drawings. Date every entry. This will help if you need to prove ownership at a later date.

  1. File a Provisional Patent Application

This is an optional step. Many inventors choose to file one to save their place in the application line.

  1. Complete the Utility Patent Application Transmittal Form

This form includes your contact information and key details about the patent application. It's also a checklist for your application.

  1. Complete the Abstract

This is a short introduction to the invention.

  1. Complete the Specification

This is the longest section of the application and it includes the following parts:

  • Title: Provide a simple title for your invention.​
  • Cross-References: Mention related patents and inventions.​
  • Statement Regarding Federally Sponsored Research: Only include this if it applies.​
  • Reference to Sequence Listing: Only include this if it applies.​
  • Background: Explain the technical field. Describe any prior art and related problems.​
  • Summary: Explain the idea behind your invention.​
  • Description of the Figures: List and briefly explain the images.​
  • Description: Fully explain the invention. Use clear language and exact words. Include enough detail that an average person could make the invention.​
  • Claims: Include at least one claim to describe the scope of the invention. These can be dependent or independent and must follow a specific formula.
  1. Complete the Figures

This section should include several black and white drawings or photographs of the invention. Show the invention in three dimensions. Include images of the invention from all sides.

  1. Sign the Declaration or Oath

This confirms that you believe you are the first inventor.

  1. Submit Your Utility Patent Application

File your utility patent application online with the USPTO. You should also pay the fees at this time.

If you need help filing a utility patent application you can post your question or concern 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.