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How to File a Utility Patent: What You Need to Know

November 08, 2021
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Patents are essential to protecting discoveries and inventions. Filing any type of patent in the United States begins with the United States Patent and Trademark Office (USPTO). The filing process can be long and complex, so it is important for those who are filing to do their research, or to reach out to legal experts who understand the ins and outs of the patent filing process.

Explore the elements of the patent filing process and learn more about how to file a utility patent.

What is a Utility Patent?

A utility patent is the most common of the three types of patents. You can read more about the other types—design and plant patents—in a previous post on the Cardozo Online Blog. Utility patents are given to inventions that are new, useful and not obvious to other inventors in the field.1

Utility patents apply to inventions in five categories, which are 1. a process; 2. a machine; 3. a manufacture; 4. a composition of matter; or 5. an improvement of an existing idea.2 An invention can fall under one or more of these categories and still be covered under one patent that will stop anyone else from making, using, selling or importing your invention.

How to File a Patent: An Overview of the Process

The USPTO has created an introduction to filing for a patent with eight steps that takes inventors from the ideation stage all the way through maintaining the patent.

1. Understand the Intellectual Property Protection You Need

Ensure that you know you need a patent and not another type of intellectual property protection (like a trademark or a copyright). Having a basic understanding of the different types of intellectual property protections comes in handy as you start this process. Read our blog post on the four types of intellectual property protection to brush up on this information.

2. Ensure Your Invention is Able to be Patented

Before filing for a patent, you need to do the research to make sure that your invention is able to be patented in the first place. USPTO recommends that you have an understanding of patents, and that you conduct a patent search to see if your invention has already been publicly disclosed.3 It is recommended that you search all public disclosures, as well as foreign patents. The search process can be difficult, and USPTO recommends inventors seeking a patent seek out the advice of a knowledgeable attorney.

3. Determine the Type of Patent You Need

It was noted earlier that utility patents are the most common type of patent. However, you will want to make sure you are really seeking a utility patent, rather than a design or plant patent. USPTO breaks down the differences between each type of patent and lists resources to file for depending on the type of patent needed.

4. Prepare to Apply

Doing the necessary research and pre-work before filling out the official patent application will make the process much easier. USPTO again notes that those not familiar with intellectual property law hire an attorney to assist with this process and offer resources on attorneys and agents for those looking for help in this area. In the preparation stage, USPTO recommends you answer the following questions:4

  • How much is the patent and the process going to cost?
  • How long will the process take?
  • Do you have expedited examination options?
  • Will your invention require international protection?
  • Which type of application do you want to file? Provisional or Nonprovisional?
  • Should you hire a patent attorney?

5. Complete and Submit Your Application

Once you are ready, you will complete the appropriate application, which also means filing the necessary parts together to obtain a filing date, along with the application fee.5 The application will be filed online on EFS-Web, which is USPTO’s electronic filing system. You can find tutorials on the system on USPTO’s website.

6. Work with Your Patent Examiner

You will be notified if your application is incomplete or complete. A complete application will be assigned for examination, which means you will have an examiner who will review the contents of your application in order to determine if it meets the requirements to receive a patent.6 USPTO offers resources throughout this step of the process on what to do if your application is rejected twice, what this step looks like if you are working with an attorney, how to look up your pending application and more.

7. Get Approved

If the examiner finds the application meets the necessary requirements, you will receive a Notice of Allowance that lists the fees—an issue fee and likely a publication fee—that must be paid before the patent is issued.7 USPTO notes that utility and reissue patents are received within about four weeks after the application is approved.

8. Maintain Your Patent

The final step in the USPTO’s patent process outlines how to maintain your patent. You will be required to pay maintenance fees to keep your patent in force four, eight and 12 years after the issue date for utility and reissue utility patents.8

Specifics for Utility Patents

USPTO provides an extensive guide on how to file a utility patent application. The guide contains everything from filing options to specific fees to the specific details you will need to submit about your invention. Regarding fees, since the process can be expensive (especially depending on whether or not you need to resubmit after a rejection, you may want to consider the commercialization potential of your invention. Will it be worth the money you spend to obtain the patent?

If the answer to the above question is yes, and you are considering filing for the utility patent, it is important to keep a thorough invention record. This record should include:9

  • Important dates
  • Descriptions and diagrams
  • Reasoning for creating the idea or invention
  • Signatures of two witnesses who support the invention

Be sure to file the patent as soon as you can after completing your invention.9 Based on the notes about patent searches, you want to be the first person to file, as this is a first-come, first-served system, meaning the first person to file the patent will be considered the inventor.

Learn Patent Law at Cardozo

As we know from going through the steps to file for a patent, registering a utility patent is a complex process, meaning most inventors choose to work with a patent or intellectual property law lawyer throughout the process.

With an online LL.M. in Intellectual Property from Cardozo School of Law, you will build a deep knowledge base of how patent laws, and much more, are being interpreted—both now and in the past—to understand the intricacies and complexities of IP law. This knowledge comes from coursework taught by faculty who are studying the law and actively making an impact in how law is being practiced today. Learn more about our online LL.M. and its coursework today.

  1. Retrieved November 8, 2021, from nolo.com/dictionary/utility-patent-term.html
  2. Retrieved November 8, 2021, from nolo.com/legal-encyclopedia/types-patents.html
  3. Retrieved November 8, 2021, from uspto.gov/patents/basics/patent-process-overview#step2
  4. Retrieved November 8, 2021, from uspto.gov/patents/basics/patent-process-overview#step4
  5. Retrieved November 8, 2021, from uspto.gov/patents/basics/patent-process-overview#step5
  6. Retrieved November 8, 2021, from uspto.gov/patents/basics/patent-process-overview#step6
  7. Retrieved November 8, 2021, from uspto.gov/patents/basics/patent-process-overview#step7
  8. Retrieved November 8, 2021, from uspto.gov/patents/basics/patent-process-overview#step8
  9. Retrieved November 8, 2021, from kashishipr.com/blog/how-to-file-a-utility-patent-in-the-united-states/