Utility Patent Application
Something about an issued utility patent provides the owner or licensee the opportunity to prevent other parties from using the patented stuff in commerce.
The filing of a U.S. utility patent application (UPA) may require significant time to complete. The patent attorney provides the legal language and knowledge of requirements and is responsible for UPA drafting and filing. Active cooperation by the inventors is essential in reviewing UPA drafts and providing scientific content, such as:
- A complete written description of the invention. A manuscript is ideal; other publications or descriptions are helpful.
- Data, examples, ranges, context, parameters, etc.
- Listing of all contributors and their contribution(s).
- An indication of the direction of future research.
- Any public disclosure/presentation plans.
Prosecution
From filing to issuance or final rejection, the Technology Advancement office (TAO) will:
- Continue to market the technology if it is not licensed or optioned.
- Manage prosecution efforts such as office actions, which are conversations/ negotiations with the U.S. Patent and Trademark Office (USPTO) about the UPA.
- Notify inventors of the publication of the UPA, which takes about 18 months.
Inventors help by:
- Assisting with office action responses.
- Continuing to publish/present as provided under any funding agreements; this can be a helpful marketing tool.
- Continuing to report and update TAO regarding new data, improvements, advancements and setbacks.
Notice of Allowance
Inventors will be notified by TAO that the patent has been allowed, that the patent was denied or the patent was allowed but the claims are not commercially significant.
When the patent is issued, TAO will pay the issue fee and conduct an additional marketing campaign if needed, as the issued patent provides an enhanced value proposition. The patent is valid up to 20 years from the filing date of the utility patent application.
Timeline
A UPA will take a few weeks to a couple of months to draft, depending on the complexity. Once submitted, it typically takes 12 months to receive the first office action and anywhere from a month to several years to reach conclusion. The average time in the USPTO from filing to issue is about three years.
Expense
The total cost of filing a UPA, including the costs from filing the provisional to paying the issue fee is approximately $25,000.