Learning how to file a utility patent involves determining whether your invention qualifies for patent protection, documenting how it works, and choosing a patent filing strategy, typically guided by a utility patent attorney. Then, you work with your attorney to prepare and submit an application requesting U.S. Patent and Trademark Office (USPTO) examination.
Jones IP Law helps inventors evaluate whether their inventions may qualify for utility patent protection and prepare applications that explain how those inventions work. Founder Michael Jones combines a mechanical engineering background with more than a decade of intellectual property experience. He has represented innovators who invented mechanical devices, manufacturing systems, computer software, machine learning, cloud computing, and digital platforms. We can recommend a filing strategy, prepare your application, and represent you before the USPTO.
What Does a Utility Patent Cover?
A patent grants its owner the right to prevent others from making, using, selling, offering to sell, or importing an innovation. Utility patents protect how inventions work and cover several kinds of inventions, including:
- Processes,
- Machines,
- Manufactured products,
- Chemical compounds and mixtures, and
- Improvements to one of those inventions.
To qualify for utility patent protection, an invention must be:
- Useful—have a specific and practical use,
- Novel—be new, and
- Non-obvious—not an improvement to an existing invention that individuals working in the relevant field would consider obvious.
A utility patent attorney can translate how those legal requirements apply to your invention before walking you through how to file a utility patent.
How to File a Utility Patent
The how to file a utility patent process often begins when you meet with your attorney to explain how your invention works, how you have developed it, whether you have disclosed it to others, and what you plan to do with it. Your utility patent attorney helps you document the invention, evaluate patentability, prepare and submit your application, and work through USPTO examination.
1. Document Your Invention
To begin the filing process, you need to explain the invention’s components or steps, how they work together, and the problem the invention solves. To do so, you typically give your attorney information and materials that show how you developed it, including:
- Drawings, test results, and prototypes;
- Other ways someone could make, arrange, or use the invention;
- Dates when you developed and tested it; and
- Publications, demonstrations, sales, offers for sale, or other disclosures.
You break your invention down into its components to compare it to existing inventions to evaluate its novelty.
2. Evaluate Patentability
Next, you consider whether your invention is likely to qualify for patent protection. A prior art search often represents a significant part of that analysis. “Prior art” includes inventions and information you or others disclosed before your filing date, as well as certain not-yet-disclosed earlier-filed patent documents. It can include:
- Existing patents,
- Published patent applications,
- Technical articles,
- Products, and
- Other public disclosures of the features of the invention.
After a prior art search, your attorney advises you on whether your invention appears patentable and helps you adjust your application materials to avoid potential hurdles.
3. Prepare and File Your Utility Patent Application
You may begin the formal application process by filing a provisional application or a non-provisional application. The provisional application describes your invention but does not ask the USPTO to begin reviewing its patentability. It can hold a filing date, disclosing your intent to patent an invention. You generally must file a corresponding nonprovisional application within 12 months of that date to use it.
Alternatively, you can begin by filing a nonprovisional application. In either case, in your nonprovisional utility patent application, you generally provide:
- A written description explaining the invention and how to make and use it;
- Claims defining what features you want the patent to cover;
- Drawings, when they help explain the invention;
- An abstract summarizing the technical description; and
- An inventor’s oath or declaration and other required filing information.
Once the USPTO receives the application and required fees, it assigns the application to an examiner for review.
4. Complete USPTO Examination
The patent examiner reviews whether the application contains all necessary information and whether the invention, as defined by the claims, is useful, new, and non-obvious. During that process, the examiner may issue an office action, which is a written notice that identifies problems with the application or explains why the examiner believes some or all claims do not qualify for approval as written.
Your attorney typically translates the examiner’s concerns into practical terms, explains how they relate to your invention and why the examiner raised them, then prepares a response addressing each point. The examiner reviews the arguments, amended claims, or corrections before deciding whether to allow the application or continue examination.
5. Maintain Your Patent
If the examiner allows the application, you pay an issue fee before the USPTO grants the utility patent. Your patent rights begin when the USPTO issues the patent, and the patent lasts 20 years after your nonprovisional application filing date. To keep the patent in force, you must pay maintenance fees 3½, 7½, and 11½ years after the USPTO grants it.
Frequently Asked Questions (FAQs)
How Much Does It Cost to File a Utility Patent?
How much it costs to file a utility patent depends primarily on the invention’s complexity, whether you begin with a provisional application, how much searching and drafting the application requires, and how many issues arise during examination. Your attorney can explain the likely costs of your filing strategy.
How Long Does It Take to Get a Utility Patent?
The process often takes several years, but each application follows its own timeline that varies with the invention, the USPTO’s workload, and events during the application.
What Is the Difference Between a Provisional and Utility Patent Application?
A provisional application is an optional initial filing that can establish a filing date for a later nonprovisional application. A nonprovisional utility patent application requests USPTO examination.
Can I File a Utility Patent Myself Without an Attorney?
Yes, if you live in the U.S., the USPTO allows you to file without an attorney. However, doing so means you do not have the assistance of someone who can translate the substance of the law to your invention or guide you through the steps you need to take to complete the process.
What Can Be Protected by a Utility Patent?
Utility patents can protect new, non-obvious, and useful processes, machines, manufactured products, chemical compounds or mixtures, or improvements to those inventions.
Prepare Your Utility Patent Application with Jones IP Law
Through a utility patent application, you explain how your invention works and ask the USPTO to protect it. If you are considering a utility patent, Jones IP Law can guide you from preparation through the end of patent prosecution and beyond. We help determine what the application must include, account for meaningful variations, draft application materials, and respond when the examiner raises problems. Contact Jones IP Law to discuss preparing a utility patent application for your invention.
Legal References Used to Inform This Page
To ensure the accuracy and clarity of this page, we referenced official legal resources during the content development process:
- Manual of Patent Examining Procedure, ch. 2100 § 2152.
- USPTO, Managing a Patent.
- USPTO, Provisional Application for Patent.
