What You Need to Submit Utility and Design Patent Applications

And whether or not you need expert legal help in Southern California

By Super Lawyers staff | Last updated on May 4, 2023 Featuring practical insights from contributing attorney

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A U.S. patent is a property right that grants an individual or a business exclusive commercial rights over an innovative invention. Getting a patent approved is not easy—an application must be comprehensive and well-supported—and it may not pay to take a DIY approach.

“It is generally recommended to have an attorney, and the patent office does highly recommend having one. The majority of applications that are filed without an attorney are rejected right off the bat,” says Omid E. Khalifeh, a patent attorney at Omni Legal Group in Los Angeles.

“They are extremely complicated—the researching, the drafting, the filing, the prosecution with the patent office would all benefit from the assistance of a seasoned practitioner.”

In this article, you will find an overview of the key things to know about the patent application process in Southern California.

The Difference Between a Utility Patent and Design Patent

As explained by the United States Patent and Trademark Office (USPTO), a utility patent protection is essentially a functionality patent—it protects the manner in which a specific good/process works.

By contrast, a design patent protects appearance. While utility patents and design patents protect different things, they are not in direct conflict. You could simultaneously apply for both a utility patent and a design patent from the same product.

Beyond design patents and utility patents, there is also a third type of patent called a plant patent. Before you can put together an application, you must determine which type of patent is appropriate for your needs.

It is generally recommended to have an attorney, and the patent office does highly recommend having one. The majority of applications that are filed without an attorney are rejected right off the bat.

What You Need to File a Patent Application

The USPTO will only approve your patent if you can meet all of the criteria set forth under federal law. Thankfully, though, experienced patent attorneys will do the heavy lifting for you.

“Not much is required of you,” Khalifeh says. “Usually clients present their invention, and the attorney takes care of the rest.” In terms of what you disclose when presenting the invention, “There’s no black letter rule as to what the disclosures are, and we usually work closely with you to figure out what we need to satisfy the patent office’s requirement for what’s called an enabling disclosure.”

The attorney will handle things such as demonstrating that the invention works and has an innovative/novel nature. They will also search for other, similar intellectual property that has been previously protected. Then they will guide you on choosing a provisional patent application or a non-provisional patent application.

Whereas non-provisional is the full patent application, a provisional is a streamlined application that allows you to seek “patent pending” status. It could be advisable to start with a provisional in certain circumstances.

What It Costs and How Long It Takes

Every law firm is slightly different, Khalifeh says, but Omni Legal Group handles patent applications on a fixed fee basis. “As soon as you decide to move forward with us, we give you a quote and that’s what you pay,” he says. While that fee is dictated by the complexity of the patent application, their range is between $8,500 and $16,000 for a utility patent application, and around $3,500 for a design application.

It takes one to three months to submit the application, but approval can take longer. “Over 75 percent of applications are rejected at least once, and that requires some back and forth between the attorney and patent office to get it through. That can sometimes take years,” he adds.

Filing for a patent is complicated. Even a seemingly small error in your utility patent application and/or your design patent application could result in a denial by the USPTO. With professional guidance and support, you can be sure that you or your company is in the strongest possible position to get a patent application approved.

If you have any specific questions about submitting a utility patent application or a design patent application, contact an experienced patent attorney for immediate assistance. For more information on this area, see our overview of patent law.

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