nonprovisional patent

Today, countless books and articles cover every topic from patent basics to the writing and filing of your own full patent application. One topic that I feel is missing, which costs the average inventor little time, money, and effort is using common sense on determining when to invest in a patent. The following few paragraphs can save you a tremendous amount of money if you glean some of the key points contained below. For more detailed information on the patent process, please review the “Patent” section of this website.

How long does the patent application process take?
This is an important consideration for the inventor and plays into the ultimate cost of the patent. Once you submit your completed non-provisional patent application and filing fee to the USPTO, you are assigned a filing date. The waiting period typically lasts 6 to 18 months, at which point a patent examiner will review your application. Although it is not impossible for your patent application to be accepted on the first submission, it is rare and highly unlikely. This is where the patent costs start to add up, because every time the patent office rejects one or more of your claims, your attorney will need to modify and re-submit the application. This occurrence is referred to as an “office action,” which is the official communication from the patent office outlining the objections to your patent application.

It is important to understand that the initial attorney fees for preparing the application and USPTO filing fees are typically not the final costs involved when filing a non-provisional utility or design patent application. More than likely, you will incur additional preparation and filing fees, when responding to office actions

How will an “Office Actions” impact me?
What this means to you is that every time the patent office rejects your application, your attorney will need to re-work your claim costing you more time and money for the patent. Keep in mind that this process of objection and re-submission could take 2 or 3 attempts before your patent application is issued. Typically, the entire process from initial patent application submission to issued patent takes anywhere from 1.5 to 3 years and could cost from - $10,000 to $20,000 depending on the attorney.

When should I really file for a patent?
The first question you must answer is what type of patent application do you file? Then, there is the question of when do you file this application. As I discussed earlier in this guide, I believe that most inventors are better off starting with a provisional patent application rather than a full non-provisional patent, which can be filed later in the process after enough interest and support in the invention warrants this filing procedure. (See “Filing a Provisional Patent Application”)

Unfortunately, many inventors file a non-provisional patent too early, only to find out later that they need to make modifications to the design (thus requiring addendums to the patent) or they determine through their marketing efforts that the invention is not worth pursuing. When in doubt about when to file, you should consult with a registered patent attorney.

In the United States, the patent law gives superior rights to inventors that are “first to invent,” which does not mean the first to file a patent. Other countries in the world use the “first to file” rule, where the first person to file a patent application is granted protection, regardless of whether or not they actually created the invention. With that said, when should you file a non-provisional patent application? I would recommend documenting your idea or filing a disclosure document as quickly as possible. Basic market research, a patent search, and development of a prototype or virtual prototype, as well as a provisional patent are all steps to consider before moving forward with a non-provisional patent. Also, remember that having a patent does not guarantee success and does not guarantee you will land a license agreement.

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