What Are the Steps to Get a Utility Patent?

What Are the Steps to Get a Utility Patent? by Pat Werschulz

{2:45 minutes to read} When you are starting the patenting process for a utility patent, there are two types of applications to consider–provisional & non-provisional. Which one to start with is a matter of budget and strategy.

Provisional Application

The provisional patent application is often used when a client is in danger of losing their rights due to public disclosure of the product and needs to expeditiously fix this issue. This route is faster, less costly, and requires slightly less preparation than a non-provisional patent application would.

In addition, the provisional application is useful when a client is not quite ready to commit to the product and lacks the funds for a non-provisional application, but simultaneously needs protection during discussions with potential partners or investors who may be interested in the project.

The provisional application preserves the clients rights and establishes the date of an invention. This is important because regardless of when the invention was created or whether it was created by multiple people, the only consideration that matters is who filed the patent application first.

Once the provisional application is filed, the product is patent pending. This application is essentially a placeholder; it preserves the date of filing and the client’s rights, but nobody officially examines the content to see if the product is actually patentable.

It is critical to note that this placeholder—the provisional patent application—expires one year after it’s filed. There are no exceptions, no extensions, and no petitions.

Without a non-provisional utility patent application that claims to be the child of the provisional application, the provisional application evaporates. In fact, it’s as if it never existed: the patent office removes it from its active files, and as a result, it is impossible to find. Moreover, anything that was invented and filed during that year can and will be used against you to show that your invention is not novel or is obvious—if you file a non-provisional application after the deadline.

The Importance of Strategy

With all of that said, it is crucial that clients understand this year-long timeline in order to proceed accordingly. In our next article we will explore strategy further.

Please contact me with any questions about this process.

Patricia Werschulz

Patricia P. Werschulz

Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
908-313-2347
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