U.S. Utility Patent Applications: What You Need To Know To Protect Your Invention And Your Profits. Who Can File A U.S. Utility Patent Application? An inventor or assignee (owner) who wants to obtain patent protection in the USA. Only an inventor or assignee (owner) of an invention can file for a U.S. utility patent application. You cannot apply for a patent for someone else's invention. However, an inventor can agree to assign any invention to you and then you will own the patent application that gets filed.
What Is A U.S. Utility Patent Application? A U.S. Utility patent application is an official request for a U.S. utility patent. A U.S. utility patent application is an official request for the U.S. government to grant you the right to exclude others from practicing your invention for the life of any patent that issues from your U.S. utility patent application. Basically, the U.S. government wants to encourage inventors to innovate and publicly disclose new inventions. In exchange for your teaching the public how to make and use your invention, the U.S. Government may grant you a U.S. patent that will allow you to sue others for making, using, selling, offering for sale, or importing your claimed invention without your permission. There are three types of U.S. patents. A utility patent protects functional inventions. Design patents protect the non-functional appearance of inventions. Plant patents protect new plants that you discover or invent.
Where Can You File A U.S. Utility Patent Application? All U.S. utility patent applications must be filed in the United States Patent and Trademark Office (USPTO). All utility patent applications must be filed in the USPTO either directly using a U.S. non-provisional utility patent application or indirectly by filing a PCT application AND then a U.S. national stage application. A U.S. utility patent application can provide protection across the entire USA, because a U.S. utility patent can be enforced across the entire USA. A U.S. utility patent cannot be used to sue competitors in any other country. Also, an inventor, a U.S. patent attorney, or a U.S. patent agent can file your application by mail, fax, or on the Internet from anywhere across the U.S. or around the world.
When Should You File A U.S. Utility Patent Application? That answer depends on your situation. You can file a U.S. utility patent application as soon as you draft claims that will protect and define your invention, AND you can describe to a person skilled the art how to make and use the invention as described in your claims. However, once a U.S. utility patent application is filed, then you cannot easily add subject matter to your application. Therefore, it becomes a balancing act. Filing later allows you to fully develop your inventive product and evaluate the market for your invention. Filing sooner deceases the threat getting scooped by someone else. If you filed a provisional patent application, then you may want to file your U.S. utility patent application within a year, otherwise, your provisional patent application will lapse and you will lose your priority date. Still another consideration is when you want to sue or threaten to sue others for practicing your invention without your permission. You cannot sue others until a U.S. patent issues from your U.S. utility patent application. Of course, costs are also a consideration.
Why Should You File A U.S. Utility Patent Application? To Get A Limited Monopoly: A U.S. utility patent application can issue as a U.S. Patent, and a U.S. Patent can be used to sue or threaten to sue others in the U.S. for practicing your invention. If your market analysis indicates that your invention would provide you with a commercial advantage in the U.S., then a U.S. Patent can give you a monopoly over that commercial advantage for the life of your patent. To Get Investors: Many inventors require that you protect your innovations and future profits by applying for patents before they will invest in your company. To Showcase Innovation: Many companies use patents as marketing tools that indicate how innovative the company is during a period of time. To Sell Or Rent: A U.S. utility patent application is a type of intellectual property that you can sell (assign) or license (rent) to make money or at least offset the cost of your research expenses. To Get Regulatory Exclusivity: For products (e.g., drugs) that require regulatory approval from the Food and Drug Agency (FDA), you can get the drug approved and have a patent that covers that drug listed…
How Do You Apply For A U.S. Utility Patent Application? You can hire a U.S. patent attorney or U.S. patent agent to draft and file one for you, OR If you are an inventor or assignee (owner), you can draft and file a U.S. utility patent application representing yourself (not your company). Due the complexity of patent law, I highly encourage you to hire a U.S. patent attorney or U.S. patent agent to draft and file your U.S. utility patent application. READY TO TALK? Call me direct at 832-621-0353 or email me to schedule a FREE, no-obligation consultation. If you decide to file your own U.S. utility patent application, you can click on this link for guidance from the USPTO.
How Much Does It Cost To File A U.S. Utility Patent Application? The answer to this question depends on the size of the entity filing, who is drafting and filing the U.S. Utility patent application, and the details of the U.S. utility patent application itself. USPTO Fees: The USPTO fees for filing a U.S. utility patent application depend on the size of the business (entity) who owns the U.S. utility patent application. The general filing fees are as follows: $1,600 for a large entity (generally over 500 employees), $800 for a small entity (generally less than 500 employees), or $400 for a micro entity (generally university owned or licensed, non-profit, or where each inventor has filed less than 4 U.S. patent applications). The Details Of the Patent Application Itself: USPTO fees can increase based on many factors, including expedited fees, number of pages, number and type of claims, and how the application was filed. Patent Attorney Fees: If you hire a U.S. patent attorney or a U.S. patent agent to draft and file your U.S. utility patent application, then they usually list their service fees separately from the USPTO fees. According to the American Intellectual Property Law Association (AIPLA) 2015…
How Long Does It Take To Get A Utility Patent? The answer depends on your filing strategy and your invention. Generally, it takes from about 3 months to 5 years. Generally, there is no upper limit on how long it takes for a U.S. utility patent application to issue as a U.S. patent because your U.S. utility patent application may not issue at all. That is, if you run out of money and/or fail to timely respond to a USPTO requirement, then the application can go abandoned and never issue as a U.S. patent. There are various filing strategies where you can speed up the examination process for your U.S. utility patent application and possibly allow it to issue within two to three months. Alternatively, there are filing and prosecution strategies for slowing down the examination of your U.S. utility patent application so that it can take more than a decade to issue as a U.S. patent.
When Does A U.S. Utility Patent Expire? If filed today, the default patent term is 20 years from the day of filing your U.S. utility patent application. Patent term is the duration or life of your patent. The default is the starting point for calculating when your patent will expire. The term of a U.S. utility patent can be increased by delays at the USPTO (patent term adjustment (PTA)” or delays for FDA approval (patent term extension (PTE)). The term of a U.S. utility patent can be decreased by terminal disclaimers and by a failure to pay maintenance fees.
What Should You Expect After You File A U.S. Utility Patent Application? The answer depends on the filing strategy you use and who is handling your patent application. You are entitled to a U.S. utility patent when you file a U.S. utility patent application unless the USPTO provides you with a reason why your patent application shouldn’t issue as a patent. In practice, the USPTO will examine your patent application and issue Office Actions, which are official communications that explain why your U.S. utility patent application cannot be allowed. You can then file a response that brings your U.S. utility patent application into condition for allowance. You can think of the process of getting a patent like a tennis match where you (or your patent attorney) explain why your U.S. utility patent application should issue as a U.S. Patent, and the examiner or a judge explains why it should not. In the end, either you get a U.S. utility patent or you decide that it's not worth your time or money to continue trying to get a patent issued. It is rare for a U.S. utility patent application to issue as a U.S. patent without at least one Office Action.…