What Are the Steps to Get a Utility Patent?

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

When you start the patenting process for a utility patent, there are two types of applications to consider — provisional & nonprovisional. Which one to start with is a matter of budget and strategy.

Provisional Application

Clients sometimes show their ideas to others in a public disclosure. It may be a class project, it may be to show a potential investor or to do some market research. Patent law in the US requires the inventor to file an application within a year of the public disclosure. The provisional patent application is often used when a client needs to expeditiously fix this issue. This route is faster, less costly, and requires slightly less preparation than a nonprovisional 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 nonprovisional application but simultaneously needs protection during discussions with potential partners or investors who may be interested in the project.  The client may also want to continue to improve the product, yet needs the protection before disclosing publicly.

The provisional application preserves the clients rights and establishes the legal 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 nonprovisional 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 nonprovisional 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