UPDATED: March 27, 2011

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent Office. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S. or “importing” the invention into the U.S. In order to obtain a patent in the United States it is necessary to file a US patent application. One can either file a design patent application, a plant patent application or a utility patent application. In order to obtain a utility patent, which most people simply refer to as a patent, one must file what is referred to as a non-provisional application or a non-provisional utility application. It is called “non-provisional” to distinguish it from a provisional patent applications.

This distinction between a provisional patent application and a nonprovisional patent application became necessary in 1995 when the Patent Office first allowed the filing of provisional applications. A provisional application is one that essentially allows you to file and hold your place in line for 12 months. You can file a provisional application without many of the formalities required for a non-provisional application. This is because the Patent Office will not review provisional applications. In order to initiate a Patent Office review, and in order to obtain a patent a non-provisional application must be filed. Simply stated, a provisional application will never mature into a patent. You can file a provisional and then file a follow-up non-provisional within 12 months (this is common), but you are not truly on the road to obtaining a patent, at least is so far as the Patent Office is concerned, until you file a non-provisional application.

When you file a non-provisional application your application will be preliminarily reviewed by a Patent Office employee to see if all of the parts of the application, including the filing fee, are present. In order to file a non-provisional application you must fill out a number of forms, and you also must create the patent document itself. There are no forms for the patent document, which makes it challenging for individual inventors and entrepreneurs. The patent document must include a specification (the written description of the invention), at least one claim and at least one drawing. Drafting the specification and the claims are what makes creating a non-provisional patent application a challenge. In terms of the patent drawings, while there is no requirement that you file formal drawings, there are significant advantages to doing so. The primary advantage of having formal drawing is that drawings that meet the requirements of the Patent Office are almost always far more detailed than ordinary sketches, which means that they convey more detail regarding the invention, which in turn gives you a broader, stronger patent application.

Once you file the non-provisional application and all the parts are present your application will be forwarded to a patent examiner. The patent examiner is the one who will review the substance of your application and make sure that you are entitled to a patent. It is typical for a patent examiner to reject some claims and want the description of your invention to be more narrowly tailored. Don’t be alarmed by this, that is simply their job. In virtually all cases, the patent examiner is the one who is responsible for deciding whether you receive a patent and, if so, what your patent will cover. For more information on the examination process please read our Overview of the Patent Process.

If you feel you need the assistance of a patent attorney, I can help. I have been helping independent inventors and start-up companies since 1998. I have developed a unique process efficiently and effectively creates patent applications with the cooperation of the inventor. This process reduces costs and creates a better product because rather than doing all the drafting I work together with the inventor to create the patent application. This process uncovers many additional aspects of the invention that can be protected and results in a far more detailed patent application than is typical. If you are interested in my assistance please send me an e-mail and I will get back to you as soon as possible.

For more information on this and related topics see:

• Good, Bad & Ugly: Truth About Provisional Patent Applications
• Tricks & Tips for Describing An Invention in a Patent Application
• Paranoia Power: Confidentiality Before and After Patent Filings
• The Cost of Obtaining a Patent in the US
• Invention to Patent: The Pitfalls, Perils and Process
• Patent Application Costs: You Get What You Pay For
• Preparing for Future Litigation Before Your Patent Issues
• The Business Responsible Approach to Inventing
• Patent Strategy: Laying the Foundation for Business Success
• Q & A: File a Patent Application Before Market Evaluation?
• Patent Searches: A Great Opportunity to Focus on What is Unique
• Patents: A Most Difficult Legal Instrument to Draft
• The Risk of Not Immediately Filing a Patent Application
• Should Inventors Draft Their Own Patent Applications?”
• Understanding Improvement Patents & Inventions
• Inventors Beware: Yugo Prices Suggest Yugo Quality
• Inventor Pitfalls: What is the Patentable Feature?

Below are some ballpark estimates for likely attorney costs through filing of a nonprovisional utility patent application.