Non-provisional utility patents serve as powerful tools to protect new and valuable inventions, encompassing a wide range of innovations, from machines to processes and articles of manufacture. This guide is aimed at a college to graduate student audience and seeks to provide a clear and organized overview of the patent procurement process.
II. Benefits of Non-Provisional Utility Patents
Monopoly Rights. A non-provisional utility patent grants its owner exclusive rights to prevent others from making or using the patented invention for a substantial period of 20 years from the date of filing.
Potential for Damages. Patent holders have the potential to seek substantial financial damages from individuals or entities found to be infringing on their patented invention.
Broad Scope. Non-provisional utility patents offer a broader scope compared to their counterpart, design patents. They encompass functional equivalents and significant improvements, while design patents primarily protect the ornamental aspects of an invention.
III. Overview of the Patent Procurement Process The process of obtaining a non-provisional utility patent can be divided into five key phases:
Roadmap. The roadmap phase involves a thorough assessment of the invention's patentability. This assessment examines whether the invention is novel and non-obvious, crucial criteria for obtaining a patent. Novelty means that no prior patent claims the same subject matter, while non-obviousness requires the invention to be a significant improvement over existing technology. This phase involves comparing your invention against publicly available disclosures.
Application. Once it is determined that the invention meets the criteria of novelty and non-obviousness, the next step is to prepare and file the patent application. The United States Patent and Trademark Office (USPTO) requires a technical disclosure known as a specification. This specification includes various components such as the title, background summary, brief description, detailed description, claims, abstract of the disclosure, drawings, and an oath or declaration. The claims play a pivotal role in defining the scope of the patent. (As of this writing, the basic filing fees for a standard entity amount to $1,820, with reduced fees of $455 for micro-entities and $960 for small entities).
Prosecution. During the prosecution phase, applicants and patent examiners engage in negotiations to determine the allowable scope of the patent. A patent examiner reviews the application and issues a written office action, detailing whether the patent can be granted based on legal regulations and precedents. It is common for patent applications to receive at least one rejection. - Upon receiving an office action rejection, applicants have the opportunity to prepare and submit a response to address the examiner's concerns. A second office action may be issued, and additional responses can be filed for a fee.
Issuance. The patent examiner allows the patent application and sends a letter called a Notice of Allowance. Once the Notice of Allowance is received, the patentee has three months to pay the government issue fee - $1,200 for normal entities.
Post-Issuance. After the patent is issued, the patentee is responsible for government maintenance fees at specific intervals: i) $2,000 for normal entities due at 3.5 years; ii) $3,760 for normal entities due at 7.5 years; iii) $7,700 for normal entities due at 11.5 years.
- The USPTO's complete fee schedule is accessible here.
IV. Timeline and Budget Considerations
The average total pendency for utility patent cases as of June 2023 is 25.3 months, representing the time from the patent application filing date to final disposition.
Budgeting for a non-provisional utility patent, assuming micro entity status, typically amounts to approximately $8,100. The breakdown includes government fees of $755, patent drawings costing $500, and attorney fees ranging from $7,000 to $9,500. Thus, the projected budget range falls between $8,255 and $10,755.
It's important to note that the expenses associated with patent procurement are tax-deductible as a business expense.
J. Greg Tinch - Founder and Principal of Tinch Law Firm, P.C. - helps businesses reduce risk by understanding business law and leveraging intellectual property assets. Greg has counseled all types of decision makers from early-stage startups to federal government officials on patents, trademarks, copyrights, and transactional and entity formation aspects of business law. Greg's intellectual property practice is informed by his interest in public policy, experience working in Congress and litigating civil cases in Maryland.