Nonprovisional Utility Patent Application:  The Patent Application Series

In this ‘Patent Application Series,’ I’ll be discussing the nonprovisional utility patent application.  I’ll explain what it is, what to know before filing, and why it is an important tool for the protection of a utility invention.

What a Nonprovisional Utility Patent Application is:

A nonprovisional utility patent application, as the name implies, is a patent application that is not provisional, i.e. it is not temporary, and it protects an invention with utility, i.e. a useful function. Unlike the provisional patent application, after a nonprovisional patent application is filed, it is examined by an patent examiner at the the United States Patent and Trademark Office (USPTO).  A nonprovisional utility patent application must undergo this examination (patent prosecution) and ultimately must be allowed by a USPTO patent examiner before the application can be issued as a utility patent.

There are specific requirements that must be met for a nonprovisional utility patent application filing to be accepted and for the invention itself to qualify for protection.  The nonprovisional patent application filing requirements are defined by the USPTO.  In addition, for an invention to qualify for utility patent protection, it must be confirmed as being either a machine, a process, an article of manufacturing (manufacture), or composition of matter.  Alternatively, improvements on existing inventions also qualify for protection. Abstract ideas, laws of nature, and natural phenomena do not qualify for patent protection.

What to Know Before Filing:

Filing a nonprovisional utility patent application does not guarantee a patent will be issued on the invention as it was filed.  In most cases, when the utility patent is finally allowed, the issued utility patent differs greatly from the application as it was initially filed.  All of the changes that the application undergoes to become a patent worthy of issuance take place during patent prosecution. The majority of patent applications filed with the USPTO are eventually issued as formal U.S. Patents, but the process is generally a long one and does not always end with an issued patent.  

The first step in the process is filing the patent application with the USPTO.  Once filed, the application is reviewed for its adherence to the filing-formalities required by the patent office.  This review takes place during the pre-examination phase. After an application passes the pre-examination phase, it is placed in a que with other patent applications to await formal examination by a USPTO patent examiner.  It can take 18-24 months for an application to be begin the examination phase.

During examination, a patent examiner compares your invention to the available  prior art in order to determine if the invention itself is new, novel, and non-obvious.  Approximately 18-months after the application is filed, or 18-months from the application’s earliest priority date, the application is published and made available to the public on the USPTO publication database.  If the application is approved by the patent examiner, examination with be closed, and the patent will be allowed.  With allowance, an issue fee is due before the application can be officially issued as a patent. The issued patent must then be maintained with the payment of a maintenance fee to the USPTO at intervals of 3.5, 7.5, and 11.5 years judged from the date the patent was issued.  If the maintenance fees are not paid, the patent will expire and the rights it provided will be lost. If all maintenance fees are paid, patent protection will last for 20-years from the date the patent application was filed.

It is important to understand that an issued patent does not grant the patent owner the right to make, use, or sell the patented invention.  A patent attorney must conduct a freedom-to-operate search and analysis in order to determine this ability.  Patent protection alone only grants the patent owner the exclusive right to prevent others from using and marketing the claimed invention.  

Why a Nonprovisional Utility Patent Application is an Important Tool:

A nonprovisional utility patent application is an important tool, because the resulting certified utility patents are important.  All issued patents allow the patent owner exclusive rights to protect their invention. Without the security provided by an issued patent, inventors may not be willing to put forth the effort required to bring their invention to market. In this way, utility patents are not only important to the inventors or companies that own them, but they are also invaluable to society which prospers from them.  

Don’t leave a matter as important as your intellectual property to chance.  Willing help in the form of an experienced legal team is here and is just a call away.  We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if you are interested in a nonprovisional application or other patent applications.