Utility Patent Search: Everything You Need to Know
A utility patent search is necessary if you want to obtain a utility patent.3 min read
2. Conducting a Patent Search
3. Patent Application Publication
4. Provisional Patent Application
5. Non-Provisional Patent Application
Utility Patent Search
A utility patent search is necessary if you want to obtain a utility patent. Specifically, a utility patent is granted for processes, machinery, and compositions of matter. This can include chemical compounds and drugs.
While the utility patent is the customary type of patent granted to inventors (totaling 90%), two other types of patents are also granted, including design and plant patents. The design patent protects the look and design of the invention, whereas the plant patent protects the invention of new plant species. Regardless of what type of patent you are seeking, your invention must be useful, novel, and non-obvious.
Conducting a Patent Search
• Patent searches are vital before you submit your patent application. If there are any similar or identical inventions that are already patent protected, then your invention will be deemed invalid.
• If you don’t run a search, and submit a patent application for an invention that is already patented, your application will be rejected. However, you’ll have already spent the time and money in preparing and submitting your application.
• If, prior to submitting your application, you begin manufacturing, using, and selling your product, you could be at risk of an infringement suit if the invention is already being used by someone else who has patent protection.
• Another important reason to conduct a search is so that you can modify, alter, and change your invention if you do find similar or identical inventions. You want to ensure that your invention is unique.
• You have several avenues that you can use to conduct a patent search, including Google Patents, the United States Patent and Trademark Office (USPTO) website, or other companies that charge a fee to run international patent searches.
Patent Application Publication
• Generally, utility patent applications filed on or after November 29, 2000 are published, with two exceptions:
–U.S. patent applications that have no foreign counterpart are not published so long as the inventor make a request to not publish it.
–If a patent is granted within 18 months of the application filing date, the application will not be published.
• U.S. utility patent applications are published 18 months after the earliest filing date or foreign priority date, whichever occurs first.
• An inventor can request that the application be published earlier; however, publication is not required if the inventor indicates that he or she doesn’t intend to apply for patent protection outside of the U.S.
• A published utility patent application has rights to royalties over those applications that are not published.
Provisional Patent Application
• A provisional application is simple and cheaper to obtain.
•The provisional patent gives you a period of one year to modify and enhance your invention prior to submitting a non-provisional patent application.
Non-Provisional Patent Application
• A non-provisional application should be filed within one year after you receive a provisional patent.
• If you choose not to file a non-provisional application, then your invention will be deemed abandoned, giving anyone else the freedom to use that invention should he or she create something similar or identical.
• Even if you submit a non-provisional application, this does not necessarily mean that your invention will be successful in obtaining a patent.
• If, during the non-provisional process, an identical or similar invention gets published, or is being used by the public, then your patent will be rejected.
• Generally, the utility patent application takes one to three years to complete, depending on the complexity of the invention.
• The utility protection lasts for a period of 20 years from the filing date of the application.
• The protection period can last longer than 20 years if the USPTO causes a delay in the examination process of the patent.
• The utility patent owner must pay a maintenance fee at 3 different times during the life of the patent (year 3.5, year 7.5, and year 11.5). You have six months after the due date to pay the fee (surcharge applies if paying late). After the six-month grace period, the patent will expire.
If you need help with conducting a utility patent search, 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.