As an inventor, you’ve probably dedicated a considerable amount of time, energy, and resources to creating a novel invention that’s entirely new or better than everything else out there. The next step becomes figuring out how you can protect your invention. What’s stopping someone from coming up with the same idea, cornering the market, and rendering all your hard work useless? How do you protect something that can’t be kept in a bank or a safe? How can you protect an idea? Thankfully, there’s government protection for inventions known as utility patents, allowing you to claim your inventions as your property.
What Is a Utility Patent?
Let’s start with the basics. There are three types of patent applications that may be filed with the United States Patent and Trademark Office (the government agency responsible for examining patent applications and issuing patents), including utility, design, and plants. If a patent application is approved and your patent is issued, any of these types of issued patents provide the patent owner with a form of intellectual property rights. The rights bestowed on the patent owner include the right to exclude others from making, using, selling, offering for sale, or importing into the United States the invention claimed in a patent under 35 U.S.C. § 154.
To further understand the broader landscape of intellectual property, especially when it comes to non-physical assets, you might find our article on intangible property enlightening. It’s important to understand that a patent does not give you the right to make or sell a product or service, but rather gives you the right to exclude others from making, using, offering for sale, selling, or importing the subject matter claimed in the patent, and it’s up to the patent holder to enforce their rights.
A utility patent is a type of issued patent that protects the functionality of a product, process, software, or machine. Utility patents, as opposed to design patents, are the most common types of patents issued by the United States Patent and Trademark Office. The key for any inventor is to understand what they are trying to protect. If it’s the functionality of a product, then a utility application is the right fit. However, if the inventor is focused on the ornamental design or appearance of a product, then a design patent is the best type of application.
What Qualifies as a Utility Patent?
Utility patents cover a large range of inventions as long as the protection is focused on how the product functions and not the ornamental design or shape of the product. However, there is one key requirement that an invention must have to qualify for a utility patent: it must be useful. This is known as the utility requirement. The patent application must state that the invention is useful for some purpose, whether specified implicitly or explicitly. Similarly, the invention that the inventor is seeking to patent must meet the specified use and purpose. That is not to say that it has to be perfect.
As long as the invention gets the job done, it is useful. For a deeper dive into understanding the intricacies of the utility requirement, this article from IPWatchdog provides valuable insights. It simply must be operable, but it does not have to be particularly skillful. Inoperable inventions cannot be patented with a utility patent.
Problems with the utility requirement typically arise in one of two ways. Firstly, issues may come up when an applicant does not identify any specific or substantial utility or does not provide sufficient information for the invention’s use to be apparent in the application. Secondly, problems may arise when the invention’s usefulness is not credible.
Steps to Apply for a Utility Patent
The starting point for your utility patent is by preparing and filing a patent application with the United States Patent and Trademark Office (USPTO). Patent applications have different sections or parts and generally include drawings (also called figures), a written description of the invention (also called the specification), and one or more claims. Each claim is written as one sentence and may include numerous portions, called claim limitations. Claims state the metes and bounds of the subject matter protected by the patent. Each claim is read separately, and the differences between each claim allow for variations in the description and limits of what the patent protects as your invention.
Utility Patent Application Filing: Step-by-Step Outline
The first step in preparing a utility patent application is to prepare a thorough disclosure outlining your product’s operation, components, methods/processes of use, and desired output, including any drawings, flowcharts, or wireframes for review by your patent attorney.
The second and most crucial step is identifying and clearly articulating the product’s “points of novelty” that distinguish your features, functionality, and limitations from other conventional systems or existing technologies already in the marketplace. Once these points of novelty have been thoroughly reviewed by your patent attorney, a prior art search should be performed to determine the patentability of your invention and how broadly any claims may be drafted within your application.
The third step is to conduct a thorough prior art search. Existing patent publications and non-patent literature constitute prior art. This step is crucial to determining whether there are existing patent references that could prevent you from patenting key features in your product. Performing an effective patent search is more of an art or skill than a perfunctory task.
The fourth step is to ensure that your non-provisional utility patent application includes 1) claims, 2) specifications, and 3) drawings that highlight your points of novelty and improvements over the prior art. For those seeking a comprehensive understanding of the filing process and additional details, the USPTO’s guide on applying for a utility patent is an excellent resource.
Utility Patent Requirements
Utility patents must meet three statutory requirements under 35 U.S.C. § 101 to be considered patentable subject matter:
1. The Invention Must Be New
To be granted a patent, your invention must not have been previously offered to the public, described in written or published material, or patented anywhere in the world. It is advisable to consult a patent attorney or agent about doing a prior art search where they will review the embodiments of your disclosure and search through issued patents, published applications, and non-patent literature in your field to determine if your invention is new and novel.
2. The Invention Must Be Non-Obvious
This requirement is entirely subjective and is the most ambiguous to determine. When trying to decide if your invention can be considered non-obvious to “one reasonably skilled in the art,” the USPTO will consider how easy it would be for a person with ordinary skill in the corresponding field to recreate a similar version of your idea.
3. The Invention Must Be Useful
The last requirement for patentability is that your invention must be useful. To be considered useful, an invention must perform the function for which it was designed.
It is important to remember that simply being novel and non-obvious alone is not enough to qualify your innovation for a patent. The fundamental rule is that your invention must also serve its intended purpose and have utility. The utility requirement, also known as “usefulness,” is one of the key requirements for patentability and is the most difficult to understand, as what may be considered “useful” for one inventor may be different for another.
The USPTO has provided guidelines for determining compliance with the utility requirement. According to the standards, the utilities must be:
- Credible: For an invention to be credible, it must either have logical and factual support behind its usefulness or be accepted by someone with skill in the field as currently being useful for the claimed purpose.
- Specific: The utility must be specific to the invention claimed; it cannot be a general utility that could apply to many different inventions.
- Substantial: An invention can only be called substantially useful if it has a clear, defined real-world use. If further research is needed to identify or confirm a use for the invention in the context of the real world, then that utility cannot be considered substantial.
Start With a Utility Patent Search
Before diving into any patent application, it’s always best practice to start with a prior art search to determine if your product is patentable in light of existing patents, published applications, and public disclosure documents (i.e., non-patent literature) in both the U.S. and globally. This search process is known as a prior art search or “patentability search” and is conducted by a patent professional. The value of a thorough prior art search cannot be overstated, as it will not only inform if your product is patentable but also provide you with an outline of how broadly or narrowly any claims must be drafted.
Types of Utility Patent Applications
Provisional Utility Patents
A provisional patent application is an effective placeholder for 12 months before a non-provisional patent application has to be filed. You can describe and detail your invention and its elements without the formal requirements of a non-provisional patent application. Later, when you convert and file a non-provisional (regular) patent application, you can claim the benefit of the earlier filing date of the provisional patent application. The content of the non-provisional patent application that is covered by the provisional application receives the benefit of the earlier filing date. You can learn more about provisional patent applications by clicking here.
It is important to note that a provisional patent application will not mature into an issued patent unless properly converted into a non-provisional patent application within the 12-month statutory term. While the USPTO does allow an applicant a two-month grace period to file a Petition to Restore Priority, you will forfeit any right and have to file a new application if this window is missed.
Non-Provisional Utility Patents
A non-provisional patent application is a type of application that protects novel, non-obvious, and useful products, processes, machines, and devices and provides 20 years of protection from your filing date. Before filing your non-provisional patent application, it’s recommended you conduct a Prior Art Search to determine the patentability of your invention and help identify all “novel” features and functionality that will be the scope of your claims. If patentable, ensure that you have clearly identified the “point of novelty” in your invention and only file when you have a finalized invention.
Utility Patent Drawing Requirements
Patent drawings are an integral part of the patent application and are designed to support your claim set within your application and provide your Examiner with an understanding of how your invention is created and used. Each technology field will dictate the best figures that can be used. To provide one example of utility patent drawings, I will use software. While the minimum filing requirements for a non-provisional utility patent application under 35 U.S.C. § 111 require only a single drawing figure to be submitted with your application, software-implemented applications typically contain a variety of drawing figures that may be used to identify your system, components, and functionality if your application is going to receive a notice of allowance.
At RLG, we recommend to our software clients that they submit at least five software utility patent drawings figures, including:
- Network environment where the software may be implemented;
- A main node (i.e., a computer or a server) where the software code is executed;
- A flowchart of a main method executed by the software code;
- Flowchart(s) of additional optional variations of the main method executed by the software code;
- A diagram of the computer system/server where the computer-readable medium having the executable code resides in the memory and is executed by the processor of the computer system/server.
Please keep in mind that additional diagrams and flowcharts may be included with your software utility application if it helps represent your system’s information or aids the Examiner in understanding how to make and use your software system. In some types of software applications, Graphical User Interfaces (GUI) or screenshots associated with the execution of the software code may provide additional support to your claim set and specification and aid in illustrating your system’s “point of novelty.” However, when in doubt about whether something should be included in a drawing, show it in drawing figures.
Drafting Utility Patent Claims
Utility patent claims are arguably the most important component of a utility patent application. The claims are a list of statements that are presented in numerical order, which provide the foundation for any subsequent intellectual property infringement lawsuits. There are two different types of patent claims: independent and dependent. Independent claims tell the invention’s story, laying out all of its most important and unique components. Dependent claims, on the other hand, define terms necessary for the independent claims and provide additional implementations of the invention. For a more in-depth look at what utility patent claims are and how to write them, check out our guide here.
Utility Patent Examples
Utility patents cover a broad range of inventions, encompassing essentially anything functional or useful. If it is not a plant or something purely serving an aesthetic purpose, it is probably protected by a utility patent. Some examples of utility patents include:
- Machines or mechanical devices
- Electrical devices
- Medical devices
- Biotechnological innovations
- Chemical formulas and compounds
- Processes and methods
- Consumer products
- Innovations in transportation and space
- Renewable and eco-friendly technologies
Utility Patent Duration: How Long Does Protection Last?
Patents offer inventors protection for their inventions, but these protections do not last indefinitely. In the case of utility patents, patent protections last for 20 years from the filing date of the patent application. It is critical to note that the clock begins when the application is filed, not when the application is granted.
Utility Patent vs. Design Patent
As an inventor, the first question you must ask yourself is “what is your point of novelty?” Is your point of novelty in the functionality of the invention or the non-functional ornamental design of the invention? Utility patent protections last for 20 years from the date of the filing of the application. However, both design and utility patent applications should generally be filed concurrently if you desire to protect both the aesthetic appearance of an item as well as its structural and functional aspects. To dive deeper into the distinctions and considerations between these two types of patents, our comprehensive article on design patent vs. utility patent provides valuable insights on this subject.
Work With an Experienced Patent Attorney to Get Your Utility Patent
Patents are invaluable assets that will bring your company strategic value. Utility patents will not only protect your invention from infringement, increase the valuation of your company, provide a competitive advantage in the marketplace, but will also provide both short-term and long-term monetization strategies. The Rapacke Law Group is a fixed-fee (no billable hour) patent and intellectual property firm designed for software and technology companies looking to protect their most valuable intellectual property assets. Our firm provides one transparent fixed fee for all patent and trademark matters without the hassle of surprise costs or nickel-and-dime billing used by traditional law firms.
In addition to a fixed-fee billing approach, RLG offers a money-back guarantee on all prior art searches, trademark applications, provisional patent applications, and design patent applications. To be clear: should our team determine that your invention is not patentable considering the prior art, a full refund will be provided. If patentable, we will credit the cost of your search towards your new application.
For the trademark and design patent applications, this means that if your application does not receive a notice of allowance for any reason, we will provide a full refund. Our trademark and design patent application packages include all search, preparation, office action, USPTO correspondence and filing fees. Please schedule a free strategy call or take our Intelligent IP Quiz to see what protection is best for your invention.
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