If you’re not familiar with patents, read this post first: What You Need to Know About Patents
If you’ve ever overheard water-cooler banter about patents, chances are it was about utility patents, the most common kind of patent issued by the United States Patent and Trademark Office (USPTO).
What is a utility patent?
A utility patent is a form of intellectual property that protects how the invention works and/or is used, i.e., the “functional” aspects of the invention. For your invention to qualify for utility patent protection, it must be a machine, process or method, article of manufacture, or composition of matter. Abstract ideas, natural phenomena, and laws of nature cannot be patented. The interplay of these requirements can lead to some interesting outcomes: for example, bioengineered bacteria, which are laboratory-created variations of naturally occurring bacteria, are considered to be “manufactures” or “compositions of matter”. On the other hand, computer software has become a subject of renewed legal dialogue, with some alleging that it is directed to the excluded category of “abstract ideas”. (Read about patenting software here.)
A utility patent usually lasts for 20 years from its filing date, provided maintenance fees are paid to the USPTO. This duration can be shorter or longer, depending on related patent filings and how long the USPTO took to process the patent application.
So once I have a utility patent for my invention/product, I can sell it, right?
Not necessarily. Contrary to popular conception, a utility patent does not convey the power to make, use, or sell an invention; rather, a utility patent allows you to exclude potential competitors from making, using, or selling your patented invention. To determine if you can make, use, or sell your invention, a different analysis, called freedom-to-operate, should be undertaken by your patent attorney.
What are the parts of a utility patent?
A typical utility patent starts with a brief abstract, followed by drawings (if any), a descriptive specification, and finally a numbered listing of claims. The abstract is a concise summary of your invention, usually reflecting the language of your claims.
Drawings can include illustrations of the general concept of the invention, specific embodiments, variations on any of these, and even prior/existing technology. Drawings are necessary when required to fully understand the invention (e.g., for engineering inventions), and optional otherwise (e.g, for some pharmaceutical compositions).
The specification is a description of your invention, and must meet three requirements. The first is the “written description” requirement, which requires you to clearly communicate the invention in detail and in a manner that illustrates that you really did invent it. The second is the “enablement” requirement, which requires that the invention be described in sufficient detail to allow a similarly skilled person (e.g., a software programmer, for software inventions) to reproduce the invention without undue efforts. The third is the “best mode” requirement, which requires that the specification include what the inventor considers the best/most optimal approach to practicing the invention, without necessarily highlighting it as such. For example, if an inventive manufacturing process works best at a pressure of 500 psi, the specification should include a description of operation at 500 psi at some point. Significantly, the specification is not scrutinized for these requirements in isolation, but based on what the claims are (not discussed in detail here).
The claims define the metes and bounds of the protection proffered by the utility patent. Said another way, if your competitor does everything the claim recites, they are likely “infringing” your claim. In this manner, a claim that recites fewer elements, and/or recites elements in broad strokes, casts a wider net of exclusionary protection, and is more likely to be infringed by your direct competitor, than one that is relatively more detailed.
How can I get a utility patent application?
To get a utility patent, you have to file a utility patent application with the USPTO. The utility patent application includes the abstract, drawings, and description that will eventually appear in the utility patent.
The utility patent application also includes claims that you consider to describe useful, novel, and non-obvious aspects of your invention. You obtain a utility patent when the USPTO agrees, i.e., is assured that the claims do indeed describe an invention that is new and not an obvious variation of existing technology. This is achieved through an iterative process where a patent examiner puts forth various documents (patent or otherwise) alleging that they disclose what is described in the claims, and in response, you either argue to the contrary or revise the claims to describe aspects not found in the documents from the patent examiner. The patent examiner can then search for and present additional documents based on the revised claims, and you can again argue or revise the claims. This continues until the patent examiner decides that your claims represent something that has utility, novelty, and non-obviousness. The typical time frame for obtaining a utility patent can vary from 2-5 years.
The utility patent application must be filed within certain time periods, such as based on your activity related to the invention (e.g., did you offer it for sale recently, or will do so soon?) and based on related applications (e.g., did you already file a provisional patent application?), among other considerations.
What are the different types of utility patent applications?
A utility patent application can arise in several ways:
- Direct filed application – The utility patent application is the first filed application for an invention.
- From a provisional application – You filed a provisional application for the invention. Then you filed the utility patent application within a year of filing the provisional application, asserting the filing date of the provisional application as the priority date for the utility patent application. Many young companies start with provisional applications as a means to keep costs down during initial stages of a company’s life.
- From a foreign application – You filed a utility patent application directly with a foreign country. Then you filed the utility patent application in the US within a year of filing the foreign application, asserting the filing date of the foreign application as the priority date for the utility patent application.
- As a continuation application – You filed a first utility patent application. While that first application had not yet granted or been abandoned, you filed a second utility patent application, asserting a continuing relationship with the first application. The second utility patent application had an identical specification to the first application.
- As a divisional application – You filed a first utility patent application, and the USPTO asserted that you were pursing two inventions in the same application where only one is allowed at a time. You chose to pursue the first invention, and while that first application had not yet granted or been abandoned, you filed a second utility patent application for the second invention, asserting a continuing relationship with the first application. The second application had an identical specification to the first application.
- As a continuation-in-part (CIP) application – You filed a first utility patent application. While that first application had not yet granted or been abandoned, you filed a second utility patent application that had a specification that incorporated the specification of the first application, and added additional, new material.
- As a national-stage application (aka 371 application) – You filed a Patent Cooperation Treaty (PCT) application. The PCT application has a priority date associated with it, and you file a “national phase” utility patent application at the USPTO within 30 months of the priority date, based on the PCT application.
What about international patent protection?
Read our post here about protecting your invention outside the United States.
What are the other types of patents?
Patent protection is also available in the form of design patents and plant patents. Design patents protect the aesthetic or ornamental design of an item. It is common in industries (e.g., smartphones, wearable fitness monitors, etc.) with an emphasis on style to simultaneously file design patent applications and utility patent applications for the same product.
Plant patents protect distinct and new varieties of asexually reproduced plants.