FAQ – Non-Provisional Utility Patent Application

Q: I just filed a non-provisional utility patent application, what does that mean?

A: You are “patent pending” and you do not have to keep the details described in the application secret anymore. Also, you now own an application that represents powerful potential rights. You can license and/or sell these rights. Moreover, the United States government now holds proof of your invention as of your filing date and nobody can get a patent on the same invention if they invent it later than you.

Q: What does it mean to be “patent pending?”

A: This means you are authorized to put the words “patent pending” on your product/service, packaging, and advertising/marketing materials. Without this authorization, you are at risk of being sued for damages and fines if you wrongfully use the words “patent pending” in advertising. The words “patent pending” are a warning to competitors and strategic partners that they take substantial risks if they copy you. Also, the words carry a certain marketing value because they attract customers to your product.

Q: What should I do next?

A: You should be moving forward with your business. Sometimes that means going to trade shows, making deals, networking, engineering your product/service, selling, marketing, etc. Anything you can do to build success around your product/service will increase the value of your property.

Q: What if somebody starts to copy me?

A: Some people are horrified to find out that they may have been copied. However, copying by others in the marketplace is the single best indicator of strong value in the property. Therefore, copying might be the best thing that can happen to you.

Q: What should I do if I think somebody is copying?

A: If you are copied DO NOT contact the infringers. Instead keep careful records of proof of their copying, including saving their advertising materials and, where appropriate, buying some of their products/services. Let your attorney know that you have been copied and they can start the process for making sure you can capitalize on what may be your good fortune.

Q: What happens next with my application?

A: Your application will go through two separate examination processes. The first process is designed to catch simple errors in the application. It occurs about a month after the application is filed. Most standard applications pass this process without any event. The second process involves an analysis of the claims and is used to determine if you are allowed have a patent registration. The second process starts about one to three years after the application is filed.

Q: Tell me more about the second examination process.

A: There are many requirements that must be satisfied before you can be allowed to have a patent registration. A Patent Examiner reviews your application to see if you have met all of those requirements. Patent Examiners are punished if they allow applications that their superiors think should not be allowed, but are not punished at all for rejecting applications that should have been allowed. Therefore, Patent Examiners on average are much more likely to reject applications than they are to allow them. Accordingly, most patent applications are initially completely rejected, even though most applications are eventually allowed. The second examination process then becomes a negotiation process where we work to convince the Patent Examiner that the application should be allowed. Sometimes this is simple and inexpensive. Typically it takes over a year and several thousands of dollars to achieve.

Q: How should I prepare?

A: We recommend that you have saved up approximately $2,500 within one year of filing the application in order to begin the negotiation process. There is no upper or lower limit on the cost of that process and there are often many options available. However, the deadlines can be severe and the penalties for missing deadlines even worse, so being prepared with funding is critical.

Q: Can I use my application for business before it is registered?

A: Definitely! Because the application is property, it can be very useful in attracting strategic partners, talented employees, joint venture partners, distributors, manufacturers, and others. You may also license the application and therefore turn it into a stream of revenue. Also, the “patent pending” status gives you the ability to charge higher prices for your product/service and therefore increase your margin and the strength of your business.

Q: I just got something in the mail about my application, what should I do?

A: If/When your application publishes, your address and name will also. Business and con artists will use that information to send you offers/scams in the mail. Official communications will ONLY come to/from your attorney. Pay very close attention to anything you get from your attorney. Feel free to do as you like with other communications.


CALL NOW: 866.273.0388