If you’re not familiar with patents, read this post first: What You Need to Know About Patents
When people discuss patents in the US, they are typically referring to 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 what an invention is, how an invention works and/or how an invention is made and/or 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, and/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 the software itself is directed to the excluded category of “abstract ideas”. (Read about patenting software here.)
A utility patent usually lasts for 20 years from its earliest effective filing date, provided that the required maintenance fees are paid to the USPTO to keep the patent in force. However, the actual term of a patent can be shorter or longer, depending on developments occurring during the prosecution, the status of related patent filings, and/or the length of time it took for the USPTO to process and grant the patent application.
So once I have a utility patent for my invention/product, I can sell my invention/product, 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 grants you the right to exclude others from making, using, or selling your patented invention. In order to determine whether you can make, use, or sell your invention, your patent attorney must conduct a freedom-to-operate analysis.
What are the parts of a utility patent?
A typical utility patent includes an abstract, drawings (if necessary), a descriptive specification, and a numbered listing of claims.
The abstract is a concise summary of your invention, usually reflecting the language of your as-filed claims.
Drawings can include illustrations of the general concept of the invention, specific embodiments, variations on any of these, and/or even prior/existing technology. Drawings are necessary when required to fully understand the invention (e.g., for engineering inventions), and are optional otherwise (e.g, for some pharmaceutical compositions).
The specification is a description of your invention, which must meet three requirements. The first is the “written description” requirement, which requires you to clearly communicate the invention in sufficient detail and in a manner that demonstrates 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 make and use the claimed invention without undue experimentation. 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. For example, if an inventive manufacturing process works best at a pressure of 500 psi, at some point the specification should include a description of operation at 500 psi. Determination of whether the specification meets these requirements is based on what is being claimed (not discussed in detail here).
The claims define the metes and bounds of the protection proffered by the utility patent. Thus, if your competitor does everything the claim recites, they are likely “infringing” your claim. In this manner, claims that recite fewer elements, and/or recite elements more broadly, casts a wider net of exclusionary protection, and are more likely to be infringed by a competitor, compared to claims that recite more elements and/or recite elements with more detail.
How can I obtain a utility patent application?
To obtain a utility patent, you have to file a utility patent application with the USPTO. The as-filed utility patent application includes the abstract, drawings, and description that will eventually appear in the utility patent.
Utility patent applications also include claims, which describe your invention. A utility patent will be granted following examination once the USPTO agrees that the claims describe an invention that is useful, new, and not an obvious variation of existing technology. The process of obtaining a utility patent is called patent prosecution, which is an iterative process where a patent examiner alleges that your application does not meet all of the requirements for patentability and/or puts forth various documents (patent or otherwise) and alleges that they disclose or suggest your claimed invention. In response, you argue against the examiner’s position and/or revise the claims to highlight the distinctions between your invention and the cited documents. This back-and-forth process will continue until the patent examiner decides that your application meets the requirements for patentability and your claims are useful, novel, and non-obvious. The typical time frame from filing to obtaining a utility patent can vary from 2-5 years.
Among other considerations, determining when you should file your patent application may be influenced by your activity related to the invention (e.g., did you offer it for sale recently? Do you plan to offer it for sale soon? Have you already disclosed your invention publicly or do you have plans to do so? etc.) and/or by the filing of other, related patent applications (e.g., did you already file a provisional patent application?)
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 can be the first filed application for an invention.
- From a provisional application – If you first filed a provisional application for the invention, you must file the utility patent application within one year of filing the provisional application in order to assert the filing date of the provisional application as the priority date for your 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 – If you first filed a utility patent application directly with a foreign country, you must file the utility patent application in the US within one year of filing the foreign application in order to assert the filing date of the foreign application as the priority date for the utility patent application.
- As a continuation application – Once you have filed a first utility patent application during the pendency of that application (e.g., before it is granted or abandoned), you can file a second utility patent application, asserting a continuing relationship with the first application. The second utility patent application will have an identical specification to the first application.
- As a divisional application – If you filed a first utility patent application in which the USPTO asserted that you were pursuing two or more inventions in the same application, you may be forced to choose one invention to pursue in your first utility patent application. Once you have made a choice during the pendency of the first utility application, you can file a second utility patent application with claims directed to the nonelected invention(s), asserting a continuing relationship with the first application. The second application will have an identical specification to the first application.
- As a continuation-in-part (CIP) application – If you have filed a first utility patent application, during the pendency of that first application you can file a second utility patent application having a specification that includes all or some of the specification of the first utility application plus additional material that was not included in the first utility patent application.
- As a national-stage application (aka 371 application) – If you filed a Patent Cooperation Treaty (PCT) application., you can file a “national phase” utility patent application at the USPTO within 30 months from the priority date of the PCT application. The national phase application will have an identical specification to 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 certain industries having an emphasis on style (e.g., smartphones, wearable fitness monitors, etc.) to simultaneously file design patent applications and utility patent applications covering the same product.
Plant patents protect distinct and new varieties of asexually reproduced plants.