Lynch LLP Releases Simple Guide for Applying for Utility Patents

Lynch LLP Partners

Lynch LLP Partners

Applying for your first, second, or even third patent can be confusing. Lynch LLP has compiled a simple guide for applying for a utility patent.

A vital step in the process is determining whether or not your invention can be patented. We recommend asking yourself several questions before applying for a patent to ensure the smoothest process.”
— Sean Lynch

CALIFORNIA, UNITED STATES, September 15, 2021 / -- According to the United States Patent and Trademark Office, “To protect your invention, you may need a patent, trademark, copyright, marketing plan, trade secrets, or some combination of these. Before you begin preparing a patent application, find out if you really need a patent or some other form of Intellectual Property protection.”

"A vital step in the process is determining whether or not your invention can be patented,” said Sean Lynch, partner at Lynch LLP. “We recommend asking yourself several questions before applying for a patent to ensure the smoothest process and best outcome for you.”

Lynch LLP recommends clients review the following questions before applying for a patent:

- Who can apply for a patent?
- What can and cannot be patented?
- How do I know if my invention is patentable?
- How long does patent protection last?
- How much does it cost to get a patent?

Next, it is important to search if your invention has already been publicly disclosed. If you are not experienced at performing patent searches, a registered attorney or agent is recommended for this. They can also help you determine what type of patent best fits your needs (utility, design, or plant).

US utility (nonprovisional) patent application is filed at the USPTO.

When it comes to prosecuting a US utility patent application, once the application is filed, it will be assigned to an examiner, beginning the prosecution phase. If international protection is important for you or your business, note that you have one year from an application’s earliest filing date to file international (PCT) applications that claim priority to this utility application.

Once examined, the USPTO sends office actions giving reasons why the patent isn’t ready to be allowed.

During the prosecution phase, the USPTO will send office actions to your lawyers explaining why your patent is not yet in condition for allowance. One of the most common reasons is the existence of “prior art” (e.g., Publicly available documents including patents and patent applications) that preclude allowance. This begins an iterative process of amending claims and presenting arguments about why the amendments are not taught in the prior art. Each time you submit an office action response, there is a chance you will receive another office action.

There is no set amount of office actions you will receive, and there is no guaranty your patent will ever leave this phase —but the best way to maximize your chances is to use a good lawyer to break out of that cycle and get to a notice of allowance.

Allowance and Issuance
By 30 months of initial filing, choose countries in which to work toward foreign patent protection.

Once an examiner is satisfied that your claims are not taught anywhere in the prior art (or that you’ve satisfied any other requirements presented to you in the office actions), you will receive a notice of allowance.

Before you pay your issue fee, we generally recommend filing a continuation application. Ask your lawyer if this strategy is right for you.

About Lynch LLP
Lynch LLP helps clients large and small protect their inventions across a wide range of practice areas. We have specialized expertise in a wide range of technical fields and focus our practice on providing strategic guidance and services including patent prosecution as well as strategic patent counseling. We also have experience with clearance searching, prior art searching, product licensing, as well as litigation and enforcement of patent and other intellectual property rights.

Patent attorneys at Lynch LLP have focused technical backgrounds that give us the breadth of scientific knowledge to write patent applications that not only capture a new and novel invention, but that also creates an umbrella of coverage extending beyond the exact confines of the invention. We combine our experience as patent attorneys with our experience with patent litigation to prepare and file patent applications of all types that are created to withstand scrutiny and maximize enforceability. Our expertise extends into negotiating and drafting licensing agreements.

We have experience representing plaintiffs and defendants in a wide variety of proceedings before courts and the USPTO, crafting patent strategies that complement and further our clients’ business interests.

We have experience filing utility patents and design patents to protect all aspects of your invention. Visit Lynch LLP at to set up a free consultation.


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