Just about anything is patentable in the U.S. if it meets a few qualifications:
First, it has to be new. You can’t patent something that’s known to the public, even if no one ever patented it before.
Second, it has to be useful. The idea has to solve a problem and provide some useful benefit. Sometimes people will try to get a patent on a perpetual motion device, but perpetual motion violates an accepted law of nature, so the Patent Office will reject the claim as physically impossible, and therefore unable to provide any useful benefit.
The next thing is- it can’t be obvious. For example, imagine the guy inventing the first table. If that table happened to have a square top…. His competitor couldn’t make a table with a round top and then claim that as a separate invention.
Finally, the claims have to be worded properly.
So, what kinds of things are patentable? Lots of things- including all manner of physical devices, computer software, methods of doing business, methods of production, methods of sourcing, living creatures other than human beings, and so on.
If you have an invention and it meets the criteria, you may well have something that’s patentable.
In March 2013 the US adopted a first-to-file system. Basically, that means in a race to the patent office; whoever files first gets the patent. A provisional patent application has the benefit of allowing an inventor to file quickly, without having to meet all the requirements of a formal utility patent application (cleverly called a non-provisional). It is only a first step, but it gives a one year window during which an applicant can file a non-provisional application claiming priority to the provisional. If a non-provisional application is not filed during that period, the priority is lost and the provisional lapses.
Although provisionals can be extremely short, perhaps only a few sentences and a couple drawings, and can omit the usual sections such as Background, Brief Description of the Drawings, and so forth. However, provisional applications must still satisfy the enablement, best mode, and written description requirements of a utility application. Although not required, it is a very good idea to include at least some claims in a provisional, because those claims identify what the applicant considers to be inventive.
Provisional applications are never examined by the USPTO. They hold your filing date for one year, at which time you must file a formal (non-provisional) application, which then goes through prosecution. Prior to June 8, 1995, there were no provisional applications in the US, only utility, design, and plant patents. Because of that history, and because provisional and non-provisional applications are both types of utility applications, many patent professionals still refer to a non-provisional application as a “utility” application.
One major benefit of a provisional application is that if no formal application is ever filed off of the provisional application, the provisional application is never published. Thus, a provisional application provides a way to start the patent process for an invention without disclosing the invention to competitors.
Note that an additional benefit of a provisional application is that the year of the provisional does not count against the patent term.
One critical word of warning. The inventor gets priority only for what is disclosed in the provisional. For new material added in a subsequent non-provisional application, the inventor gets a second priority date. Thus, is one files five provisional applications during a one-year period, and then combines them all together in a non-provisional filing, the non-provisional would likely have six different priority dates.
As of 2025 the filing fee for a provisional is $130 for small entities and $65 for micro-entities. Attorney time to assist with drafting and filing of a provisional can run anywhere from $500 to several thousand dollars.
Absolutely. Provisional applications are extremely useful where an inventor expects to develop some new wrinkles on his invention after filing of a first application. An applicant can’t file a second provisional application claiming priority to an earlier provisional application, but he can serially file multiple provisional applications, and then file a formal application that claims priority to any combination of provisional applications filed within the previous 12 months.
Another benefit of filing multiple provisionals addressing different aspects of an invention is that when it comes time to filling one or more non-provisionals, once can choose to not to proceed with one or more of the provisionals, and instead keep their disclosures as trade secrets. If one lumped all of the disclosures in a single provisional, or a single non-provisional, then the entirety will be published when the non-provisional is published. One can even convert some of the provisional subject matter into normal non-provisionals, and convert other provisional subject matter into a non-provisional filed with a request for non-publication. Similarly having multiple provisionals on different aspects of the invention allows one to convert some of the provisionals into non-provisionals filed with Track One prioritization, while others take the normal, slower route of prosecution.
Another great use of a provisional application is to provide a quick and inexpensive priority date for a continuation-in-part (CIP) application, where the applicant files a new application adding additional disclosure.
A non-provisional (utility) patent protects functional features- such as the way an article is used and works. For example, a coating on the lens of a pair of sunglasses might be the subject of a utility patent because the coating is functional.
A design patent protects non-functional aspects. A stylistic shape of the lens of a pair of sunglasses might be the subject of a design patent because the shape is merely ornamental. It has no function.
Non-provisional (utility) patents are typically much more expensive to obtain than design patents. They can cost anywhere from $7,000 to $10,000 or more to search, draft and file with the patent office, and probably at least another $5,000 to $7,000 by the time they are issued. They also take longer to get, from 2 1/2 to 4 years or more.
Design patents are more narrowly focused, so they normally cost less: a thousand dollars or less to place on file, and likely less than another thousand dollars by the time they are issued. And they typically take less than a year to issue.
Getting a patent in the U.S. typically costs between $15,000 to $20,000. So, where does all that money go?
The process starts with a thorough search to see if the invention already exists someplace. An attorney or agent should brainstorm with the inventor to really understand the fullest potential of the idea, and then move forward by making drawings of the invention, and wording the specification according to the formalized rules required. The application will then be submitted to the Patent Office with the necessary filing fees. Over the next several months or years, there will likely be quite a bit of back and forth with the Patent Office.
You might wonder why, if you could technically file a patent yourself, you are paying someone else so much money to do it for you? The answer is that the process is not at all easy. Every step of the way is littered with what sound like unresolvable rejections, terminology you don’t know, and discouragement. And once you start the process, it’s very hard, and often times impossible to correct mistakes made at the start of the process.
Once everything is ironed out and the Patent Office agrees that claims are allowable, another fee must be paid for them to grant the patent.
Some firms charge upwards of $15,000 to $20,000 just to draft and file a patent application. Such fees should raise a big red flag. The justification might be that the application is very long and detailed, but most likely the application is much longer than it needs to be. Long applications usually mean that the attorney or agent handling the case didn’t do the heavy lifting to figure out what is inventive before drafting the application, and so just wrote down everything he/she can think of. That not only makes the application more expensive, and slower to file, but it also likely means that the disclosure includes many things that should have been kept as trade secrets. Long applications often also contain repeated paragraphs or even entire repeated pages with only a few altered words. Good for billing, but bad for the clients!
On the other hand, it‘s extremely difficult to search, brainstorm, write and file a decent non-provisional patent application for less than $6,000 or $7,000. AI searching and preparing of drafts can help somewhat, but AI is not yet at a sufficient level of logical thinking to supplant a good attorney or agent.
Keep in mind that if you want the protection extended to foreign countries, it will typically run about $15K per country by the time the patents issue. The math is somewhat different for regional filings such as the European patent office (EPO). There, it might well cost $15K to $20K to obtain EPO grant, and then several additional thousand dollars to register the grant in the UP or individual EPO countries (states).
The short answer is at least 2.5 to three or four years. Business method and Internet-related inventions generally take longer, perhaps five to seven years.
The number one reason for such delay is that the US patent office is really backlogged. Over half a million patent applications are often waiting in line, so it can be a at least 18 months before the patent office even gets to yours. Other countries have huge backlogs as well. The second thing is that in almost every instance, the there is at least one round of rejections.
You might think: “Well if the lawyer were any good at his job, he should be able to write something that would get by the first time!” …. and he could. But an attorney or agent’s job is not just to get a patent issued, it’s to secure commercially relevant claims. Patent applications that get through the first time are probably too narrow, which means that competitors can easily get around the patent. The focus should be about getting as much value out of the invention by securing broad claims. The patent office is supposed to push back against this, and it is this process of back and forth that costs so much time.
Think about selling a used car. If you offer to sell for $15,000 and the potential buyer immediately accepts, you are probably asking too little. It’s the same with the patent office. If your claims are immediately deemed to be allowable, your claims are probably too narrow.
There are ways to speed up prosecution. The most common ways are to expedite the process by filing the application with Track One priority, or filing with a petition to make special because the inventor is at least 65 years old. But generally speaking, the backlog is going to cause a long wait, and yes, it can be really frustrating. However, the last thing an inventor wants is to get a cheaper, but useless, patent.
All extrinsic materials cited in a patent application should be expressly incorporated by reference: (a) to provide a source for experimental data and other information that might be needed during prosecution; and (b) to provide enablement for the claims, without wasting a lot of space in the current application. The general rule is that one only needs to provide support for the claimed subject matter. Well-known information should generally be eliminated from the specification, or incorporated by reference.
It is a good idea to insert the following language shortly after discussing the first reference. “This and all other referenced patents and applications are incorporated herein by reference in their entirety. Where a definition or use of a term in an incorporated reference is inconsistent or contrary to the definition of that term provided herein, the definition of that term provided herein applies and the definition of that term in the reference does not apply.”
One can speed up prosecution in several ways, including: (1) filing an application with a Petition to Make Special; (2) filing an application with a request for Prioritized Examination under Track One; (3) using one of the Patent Prosecution Highway countries; and (4) using a PCT First filing strategy.
MPEP 708.02 lists the acceptable reasons to grant a Petition To Make Special:
- The applicant is over 65 or is in poor health;
- The invention is are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason; or
- The invention will materially (a) enhance the quality of the environment, (b) contribute to the development or conservation of energy resources; or (c) contribute to countering terrorism.
Accelerated examination was a species of petition-to-make-special, but with additional requirements. Among other things the application could only have 20 claims, and no more than 3 independent claims. In addition, the applicant had to demonstrate that they did an adequate patentability search, and must distinguish all of the references. If all the requirements were satisfied, the patent office guaranteed that they would provide sufficient resources to push the application through to final disposition (allowance or final rejection) within 12 months from the filing date. At one time this was a viable, albeit expensive way to push applications to allowance. Fish IP once received notice of allowance on an accelerated examination less than a month after the filing date. In June 2025, the patent office stopped using accelerated examination. At this point in time, the only viable ways to speed prosecution are to file with Track One prioritization, file with petition to make special because of age, and using the Patent Prosecution Highway.
An invention is “patent pending” as soon as the patent office receives the application and assigns a serial number. That applies to all types of patent applications, including provisional, non-provisional, design, plant, and PCT applications. If the application is defective in any manner, including failure to pay the appropriate fees, you will receive a notice of defects. You will still be patent pending as of the filing date, as long as you timely correct the defect(s).
No, you don’t. You can draft and file a patent application by yourself, but it’s a bad idea to do so. Guidance from the USPTO website is too generic to be very useful, and the popular patent it yourself books just teach rudimentary mechanics. ChatGPT and other AI programs do a workman like job on the specification, but do a really bad job of claiming.
You can, however expedite the process, lower the cost, and improve the quality of your patent application(s) by using AI to search prior art, and learning about patenting strategy. You can find extremely useful strategic guidance in White Space Patenting with respect to drafting and filing application, and Green Fields Patenting with respect to building patent portfolios.
Someday AI will almost certainly be able to draft and prosecute strong patent applications, eventually doing that much better than humans. But that day isn’t here yet. At this stage AI is fairly good at identifying prior art that literally includes the claimed elements. The problem is that AI is bad at inferences. A prior art reference can be used against a pending claim for everything it teaches, and everything a person of ordinary skill would infer from it teaches. For example, a claim reciting elements A, B, C, and D can be rejected on a combination of four different references, each one teaching, suggesting, or motivating a different one of the four claimed elements. AI isn’t good at identifying prior art based on inferences buried in the teachings.
The inadequacy of AI is much worse when it comes to claiming. A good patent claim recites language broad enough to encompass all of the inventor’s preferred embodiment(s) as well as all commercially viable alternatives whether or not those alternatives are contemplated, while also disclaiming all prior art whether or not the prior art is known, and do it all in preferably in 50 words or less. AI can be very creative, even having wild hallucinations, but so far AI doesn’t have the level of guided creativity and clever wordsmithing to accomplish those competing requirements.
First of all, the patent office is not rejecting your “invention”. The office is merely rejecting one or more of the pending claims. Second, the patent office almost always rejects patent applications on the first office action. Indeed, that is usually a good thing because if the patent office were to allow the claims as originally filed, those claims are probably too narrow. Third, having claims rejected is not the end of the road. A rejection is merely an opportunity to amend the pending claims.
Final rejection just mean that the patent office wants more money. They spent the filing fee searching the claims and issuing office actions, and now they want more money to continue the process. The proper response is usually to file a Request For Continuing Examination (RCE), along with a preliminary amendment that amends at least one of the rejected claims. The cycle of rejection and response can go on for years, with multiple “final” rejections.
When an applicant files through the European patent office (EPO) or other regional filling offices, there is only one prosecution, so all countries necessarily have the same claims (albeit as translations). Outside the countries of regional filings, however, the claims almost always vary from country to country because the laws vary from country to country and the examiners vary from country to country. Of course, one could minimize the differences by trying to conform the claims in each country to a common set, but doing so would mean that an intransigent examiner in one country would have a choke hold on the breadth of claims in all countries, and the common claim set would end up being unnecessarily narrow. For all these reasons, claim for a single application almost always vary across different countries.
The patent offices in Australia and New Zealand give deadlines for “acceptance of the application”, and applicants often worry that their applications will go abandoned if that deadline is not met. The reality is that the deadline is set to push the application forward. If the applicant is responding correctly to office actions, and in other ways the prosecution is proceeding properly, the examiner will usually keep extending the deadline.
Even if the deadline is reached, the applicant can appeal the then-existing rejections, and usually continue the prosecution.
In the US an applicant is entitled to file child patent applications off of a currently-pending application. This allows for the applicant to obtain additional patents for subject matter that was disclosed but not claimed in the original application. This can be done repeatedly, effectively “daisy-chaining” patent applications together to create a patent family.
In patent-speak, we call a prior link in the chain a “parent” application, and applications filed off of the parent, “child” applications. One of the biggest benefits of filing child applications is that the child application retains the priority date(s) of the parent application for subject matter disclosed in the parent application. For patent families with long chains, this means that an applicant could still be filing claims with a benefit date years in the past, long after the original parent application was issued!
In years past, when the term of a patent was 17 years after issuance, one could keep a family going forever by filing child applications. That process was stopped when the patent office joined the rest of the world by having patents term out 20 years after the earliest claimed priority date. That change was made in June 8, 1995, by the US adopting the Uruguay Round Agreements Act (URAA), which implemented the TRIPS Agreement under the World Trade Organization.
Note that the US has a Continuation-In-Part (CIP) practice, where a child application includes subject matter that was not included in the parent. In that case the child application has two priority dates, a first priority date for the subject matter included in the parent application, and a second priority date for the additional subject matter included in the child application. The US is the only country that has a CIP-type practice.
A child application can only be filed off of a pending parent application. Once the parent issues, it is generally too late to file a child. The clarifier “generally” is used here because it is possible in the US to file for reissue of an issued patent, and then file a divisional continuation, or CIP off of the patent being reissued. Note that the patent is not surrendered until the reissue patent is granted. Reissues can be used to expand the scope of the claims if filed within 2 years of the issue date. Reissues can be used to narrow the scope of the claims at any time during the life of a patent. Narrowing reissues are useful to deal with prior art discovered after issuance, that could be used to invalidate the issued claims.
Interestingly, one can file a child application on the same day that the parent issues.
Once an application issues as a patent with no children, anything that is disclosed but not claimed in that patent is donated to the public. The only exceptions are (1) the non-claimed subject matter is covered by a different application, and (2) non-claimed subject matter can be claimed in a reissue application filed within 2 years of the issue date of the patent.
- To claim subject matter allowed in a parent application more broadly, or from a different perspective;
- To claim different inventions that are described but not claimed in the parent application;
- To keep the subject matter “alive” at the patent office, which allows you to draft claims to adapt to developments in technology and the marketplace; and
- In certain circumstances, to add additional developments to a prior invention while keeping the possibility open to keep claiming inventions from the parent application.
There are three types of child applications: a continuation application, a continuation-in-part application and a divisional application. These are discussed in more detail in other FAQs.
A continuation patent application is a type of child application that is filed with the goal of obtaining additional patent claim coverage. Situations where a continuation application may be appropriate include:
- If the patent office allows claims that are narrower than what is actually allowable;
- If there are aspects of the invention that should be claimed but do not necessarily fit with the claims of the parent, then a continuation application would be a good way to cover those aspects of the invention; and
- To tailor the claim language of allowed parent claims to more specifically cover a competitor’s product.
Since the invention(s) claimed in the continuation application is/are described in the parent application, the continuation application will receive the benefit of the earliest filing date that applies to the parent application. However, to take advantage of the parent application’s filing date, the continuation application must be filed while the parent application is still pending. The costs of filing a continuation application are significantly lower than those of an original patent application because most of the work has already been done in drafting the parent.
In the real world, development and refinement of an invention does not stop simply because a patent application is filed. Very often, the further development of an invention can lead to new features that are worthy of inclusion in a patent application. In those situations, a continuation-in-part (“CIP”) application is the appropriate way to incorporate the new features into the patent family.
A CIP application is a child application that includes at least some subject matter carried over from a parent application, as well as new subject matter that is not in the parent.
An important wrinkle of a CIP application is that claims that are entirely derived from the subject matter carried over from the parent application can take advantage of the priority date of the parent, while claims including anything new to the CIP can only rely on the CIP’s own filing date. Note that in some situations the additional subject matter can stand on its own, and it’s better to just file a new application with the additional subject matter, without claiming the priority.
The cost of a CIP tends to be lower than that of drafting a new application because at least some of the subject matter is brought in from the parent. However, if there is a lot of additional subject matter, the marginal cost of filing a CIP can be almost as much as filing a new application without priority.
Sometimes, a patent application can describe more than one invention. For example, a machine might be made up of components that are independently patentable. However, patent laws specify that each patent is for a single invention. Accordingly, when you file a patent application, you pay the patent office a fee to search and analyze the patentability on a single invention.
If the patent office decides the claims in a patent application are directed to multiple inventions, the Office will require that the applicant choose which of the different inventions he/she wants to proceed with. The claims to the other inventions are not necessarily lost because those other claims can be divided out to be filed in a divisional application. Since the invention claimed in the divisional application is described in the parent application, the divisional will receive the benefit of the earliest filing date that applies to the parent application. However, to take advantage of the parent application’s filing date, the divisional application must be filed while the parent application is still pending.
The costs of filing a divisional application are significantly lower than those of an original patent application because most of the work has already been done in drafting the parent. Indeed, the cost of a divisional might be little more than the filing fee because the claims included in the divisional were already set out in the parent.
37 CFR §41.31(a)(1) states that “[e]very applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal.” Unfortunately, what seems like a simple rule could be tricky to understand.
The issue is whether claims that were rejected once, and then only slightly amended before being rejected again, can be counted as claims having been twice rejected. Amended claims are obviously not the same claims, but they could be almost the same claims. That issue was addressed head on in Ex Parte Lemoine, 46 USPQ2d 1420 (Bd. Pat. App. & Inter. 1994). There the PTAB held that there is no “exactness requirement” in the “twice rejected” rule. Determining whether the claims have been only slightly amended, and therefore qualify as the same claims, is a matter of judgment for the examiner. Likely if the scope of the claims has changed so little that another rejection would simply reiterate a prior rejection, one can likely file an appeal, even if the subsequent rejection is non-final. Of course, one can always appeal from a final office action.