Utility Patent

As an inventor you have several paths in pursuing a utility patent. These paths include filing (1) a provisional patent application, (2) a non-provisional (regular) patent application, (3) a Patent Cooperation Treaty (PCT) application, and/or (4) an application in a foreign country. Each of these options is discussed below in detail.

Provisional U.S. Patent Application
A provisional patent application is a patent application that is good for one year, and automatically expires one year after filing. It never gets examined. It is a placeholder to give you time (up to one year) to make a decision as to pursue your invention before the US Patent Office by filing a regular non-provisional patent application.

The advantage of a provisional patent application is that it protects you from other inventors who file their patent application after yours. A provisional patent application is also relatively cheap and minimizes the financial risk in the event you seek to abandon the invention and walk away. Lastly, the provisional application gives you one year to decide to change your invention, which can be important if you plan to take a product or service to the market. Often, in the prototype stage, an inventor modifies an invention. Because you have to file a non-provisional application anyway after filing the provisional application, you can include your design changes in the non-provisional application.

A provisional application also has several drawbacks. The clock to get a patent does not start until filing a regular non-provisional patent application (Discussed in detail below). Filing a provisional application instead and waiting a year also delays getting a patent by a year. A provisional patent application is also only good for what it discloses. That is the provisional patent application only covers the inventions disclosed in the application at the time of filing. If you change your invention when you file the regular no-provisional application, the new invention will not be entitled to the date of the provisional application.

File a Regular (non-provisional) US Patent Application
To obtain a patent in the U.S., you need to file a non-provisional patent application. You can file the non-provisional patent application first, or alternatively, you can first file a provisional application (as set forth above), and then file the non-provisional application.

A non-provisional application should be complete since you do not get a second chance to make changes at a later date. It takes typically about 2-3 years to get a patent after filing of a patent application.

Preparation of a patent application has several components. Some inventors decide to do a search first to determine what aspects of the invention are already in the public domain and cannot be patented. The search results can help focus the patent application drafting to the novel aspects of the invention.

Patent Application Drafting and Filing
The patent application has several parts, including the specification, the claims, and the drawings. The specification describes the invention. The claims define the invention in the same way that a deed sets the bounds of a property to define the owner’s rights. The drawings must describe all aspects of the claims. Before filing a patent application, formal drawings have to be made. We retain a draftsman to do the formal drawings for you.

One misconception that inventors have is that a prototype is needed before filing a patent application. This is incorrect. All you need is conception of an idea to get a patent, and you do not need to make a prototype of the invention.

Notice of Missing Parts
After a patent application is filed, you may receive a notice of missing parts, which is a notice that the Patent Office sends if it finds the application that was filed is incomplete. In most instances, the Notice of Missing Parts deals with minor issues that can easily be corrected.

Restriction Requirement
Once the patent application is deemed complete, the patent application is sent to the patent examiner. The examiner may issue a restriction requirement if he determines that the application contains more than one invention. Each patent application can only have a single invention. The examiner may force the inventor to choose one of the inventions if more than a single invention is claimed in the patent application. The other inventions that are not chosen in this round for examination can then be filed in a separate (“divisional”) application.

Office Action (Rejection, Allowance)
At this stage the examiner will send an Office Action, which will either allow or reject some or all of the claims of the patent application. A rejection is very common. A response has to be filed in the event of a rejection. The most common rejection is that the invention of the patent application was already publicly known before the patent application was filed.

If the rejections are overcome, a notice of allowance is obtained. The inventor has to pay an issue fee to have the patent application issue as a patent.

If the examiner does not withdraw the rejection, then an appeal has to be filed.

Maintenance Fees
After a patent issues, there are several maintenance fees that have to be paid. If the maintenance fee is not paid, the issued patent will go abandoned.

File a PCT application
Another option is to file a Patent Cooperation Treaty (PCT) application. A PCT application simply gives you 30 months to make a decision as to which countries to file a non-provisional patent application. A PCT application is expensive, with the government fee for filing around $6000. And at end of the 30 months, you still have to file a patent application (non-provisional) in each country that you want to pursue.

File an application in a foreign Country
Another option is file a patent application in each foreign country. For each country, you need to hire an attorney to file the patent application for you. The costs of foreign patent filings can easily get out of control. At Moradian Law we can help coordinate foreign filings if it makes business sense for you.


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