Utility Patents – Your Questions Answered
For most inventors, a utility patent that protects the function of an item is the most powerful patent protection they can get. Unfortunately, utility patent applications are also the most expensive type of patent application, take the longest to get examined, and have the lowest chance of success. How can you stack the odds of success in your favor? Pay attention to this video and also see the video in Prior Art Searches.
What are the odds of success for utility patent applications? Over the past decade the odds of success on a utility patent application have varied from a high around 70% to a low around 40%. Right now the odds appear to be pretty close to 50/50.
How much does a utility patent application cost?
At our firm, we do fixed prices, start to finish, for preparing and filing utility patent applications. These range from around $6,500 for simple mechanical to over $10,000 for more complex electrical and software.
Is there a more cost effective way to do it?
You can file a Provisional Patent Application (see our video on Provisional Patent Applications) for about half the cost of a utility patent application, which gives you patent pending status for one year. However, there are a few Achilles’ Heels with Provisional Applications that you need to avoid.
How long do Utility Patents last?
If you are fortunate enough to get your Utility Patent Application allowed by the USPTO as an issued patent, most Utility Patents are good from 20 years from the date of filing, so an average patent application (not a continuation application) has a useful life of around 17 years.
Only 17 years? My invention is way too valuable to protect for only 17 years!
Think again, 50% of all retail money generated is made from products two years old or less. If you are the proverbial average inventor, you have around 5 years to make money on your invention; beyond that it is likely that competitive products and technologies will surpass your invention and it will not make much money, so don’t worry so much about when your patent will expire, and instead focus your attention on how to make money off your invention during the first five years. (If, however, you were the inventor of the light bulb, hula hoop or internal combustion engine, you will be truly bummed out when your patent expires, but these were not “average” inventions).
Are Utility Patents renewable?
No. Once a patent expires anyone can use your patent as a blueprint to make your invention and sell it, without compensating you. Then again, hopefully you have used Trademarks (link to Trademark video) to build up a strong brand so that even if others can copy your invention, people will want to buy YOUR product over your competitors’ products.
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Patent Process: The Next Step Is Deciding What to Do Next
Once you have reviewed the results from the prior art search, you have a very important decision to make.
The next step in the Patent Process is an important one. You can review the results yourself and decide how to proceed, or have a patent
attorney review the results and advise you (usually around $1,500 to review a prior art search, but can vary depending upon the number of references found).
Please realize before you spend money having the prior art results analyzed that a) the analysis
will be based only on the prior art found, and b) that patent laws and the USPTO’s interpretation
of them can change dramatically from the time of the analysis to the time your application is
examined, which can render the analysis relatively useless in light of changes to law or USPTO
examination procedures.
So, how to decide? Our advice is first to decide if you think you have a reasonable shot at a
utility patent. If not, you should consider a design patent, if possible. Design patent applications
are (again) relatively inexpensive, quick, and have a high likelihood of success. Because they
only protect the shape of an invention, they usually offer less protection than a utility patent
application, but they may be the best that you are going to get.
Even if you think there is not a reasonable chance of getting a utility patent, there are still
additional reasons for considering filing a utility patent:
1. The inventor is willing to take a chance that the application will be approved anyway. If
an issued utility patent would be extremely valuable, it may be worth risking the costs in
filing an application.
2. Patent laws and their interpretation by court decisions and the USPTO examination
procedures may change to the point where an “unpatentable” invention at the time of
filing becomes patentable by the time it is examined (note: the reverse also can happen).
If you decide to go the utility route, you have to decide whether to file a provisional patent
application or a utility patent application. A provisional application is a good way to buy
yourself a year of grace period; you are “patent pending” from the day the provisional is
submitted, and if you later file a utility patent application based on the provisional within the
year allotted, your utility application will claim the date of the provisional.
Provisionals cost roughly half of a utility patent application (generally around $3,000) and can be
prepared relatively quickly, usually within 1 – 2 weeks.
Provisional patent applications generally work well for inventors who:
1. Currently don’t have the money for a utility patent application, and would like to get
“patent pending” before they try to raise money from investors, venture capitalists, hedge
funds, etc.
2. Need to become “patent pending” ASAP and don’t want to wait for the 2-4 weeks it
usually takes to have a quality utility patent application prepared.
3. Want to do a bit more R&D, prototyping, market testing, etc. before they commit to a
final version of the invention for the utility patent application.
The main dangers of relying on provisional applications include:
1. The year will fly by very quickly and if the inventor is not motivated, organized and self directed,
they would probably have been better off filing the utility patent application in the first
place (as now they will have to wait until the utility patent is examined, and the
inventor does not “move to the head of the examination line” just because the utility
relied on a provisional filing date).
2. The provisional has to provide “support” for what is being claimed in the utility patent, so
if the inventor changes the invention so much that it is not reasonably related to the
contents of the provisional application from which it claims a filing date, that earlier
filing date can be denied by USPTO.
3. If the inventor, during the year of patent pending status, decides to file a utility patent
application based on the provisional, he/she will pay additionally for the utility patent
application (we usually take ½ of the cost of the provisional off the cost of the utility
patent application).
There are also advantages and disadvantages to going immediately with a utility patent application.
The main advantage (for some inventors) is that you get in line to have your patent
examined by the USPTO, and you don’t delay the examination by first filing a provisional,
waiting up to a year, and then filing the utility. Other inventors may prefer to drag out their
patent pending status as long as possible before examination, and so they would rather tack a
utility onto the end of a provisional. We have also found that our inventors are usually taken
more seriously by venture capitalists, investors, prospective licensees, etc., with a pending
utility patent rather than a pending provisional patent.
Many inventors are extremely eager to see their patent applications examined. In other cases, it
is very important for the commercial success of a company to know as soon as possible whether
or not their patent will be approved. Inventors in either of these positions should consider an
Accelerated Examination Application. Accelerated Examination is a program that tries to give
the inventor either a patent or a final rejection within a year of the filing date. The catch? Cost.
You need to begin an Accelerated Examination application by having an extensive prior art
search performed, which usually runs $3,000 to $8,000. Drafting the application is also
considerably more expensive (usually double the normal rate) as we have to prepare a support
documents that can go well over 100 pages in length.
Other intellectual property to consider. No matter what an inventor decides regarding the filing
of patents, he/she should also consider the role that Trademark and Copyright protection may
offer. For more on Trademarks and Copyrights, you can look at our website.
Patent Process – After The Prior Art Search
The next step in the Patent Process is an important one.
Once you have reviewed the results from the prior art search, you need to decide how to proceed. It may be necessary to have a patent attorney review the results and advise you and the likelihood of success(usually around $1,500 to review a prior art search, but can vary depending upon the number of references found).
Please realize before you spend money having the prior art results analyzed that a) the analysis will be based only on the prior art found, and b) that patent laws and the USPTO’s interpretation
of them can change dramatically from the time of the analysis to the time your application is examined, which can render the analysis relatively useless in light of changes to law or USPTO
examination procedures.
So, how to decide the next step of the Patent Process? Our advice is first to decide if you think you have a reasonable shot at a utility patent. If not, you should consider a design patent, if possible. Design patent applications
are (again) relatively inexpensive, quick, and have a high likelihood of success. Because they only protect the shape of an invention, they usually offer less protection than a utility patent
application, but they may be the best that you are going to get.
Even if you think there is not a reasonable chance of getting a utility patent, there are still additional reasons for considering filing a utility patent:
The inventor is willing to take a chance that the application will be approved anyway. If an issued utility patent would be extremely valuable, it may be worth risking the costs in
filing an application.
Patent laws and their interpretation by court decisions and the USPTO examination procedures may change to the point where an “unpatentable” invention at the time of
filing becomes patentable by the time it is examined (note: the reverse also can happen).
If you decide to go the utility route, you have to decide whether to file a provisional patent application or a utility patent application. A provisional application is a good way to buy
yourself a year of grace period; you are “patent pending” from the day the provisional is submitted, and if you later file a utility patent application based on the provisional within the
year allotted, your utility application will claim the date of the provisional. Provisionals cost roughly half of a utility patent application (generally around $3,000) and can be prepared
relatively quickly, usually within 1 – 2 weeks.