Utility patents

Thinking of a utility patent
Need a utility patent?

Utility patents are the best way to protect most inventions. But to get one, you have to convince a USPTO examiner that your application is worthy.

Utility patents are by far the most common type of patent.  In fact, the term “patent” almost always means “utility patent”.  Almost all of the famous patents in history – the telephone, light bulb, transistor, airplane, motion picture, fall into this category.

What is a utility patent?  Under US law, utility patents are the type of intellectual property (IP).  Patents cover: “a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof.” A “process” is a method of doing something.  A “composition of matter” can be a drug.

Note the underlined new. You have to prove that the invention really is new, and not just a trivial (obvious) tweak to some older prior art.

Here “useful” means that the invention must have some actual benefit (i.e. it isn’t clearly impossible or too illegal) and does more than just being decorative.

Utility patents are often the hardest type of IP to get. USPTO examiners usually attempt to use prior art to reject new applications. These rejections are called “office communications”. You must send in a written response rebutting these rejections. The review process may require several cycles of rejection and response. If you do not successfully rebut the various rejections, the application goes abandoned.

Legally, a US patent gives the owner the right to sue to collect royalties/damages and/or to attempt to block someone else from practicing the invention in the United States. The exact scope of legal protection is determined by the patent claims.

Types of utility patents:  US utility patents often start as US provisional patents.  These US provisional or non-provisional patents can also be refiled (within 12 months of initial filing) as international patents.

Patent valuation: Patent valuation is dictated in large part by the desires of others to practice the invention. If a particular patent covers an invention that no one else wants to practice, that patent isn’t going to be worth much! The effectiveness of the patent in thwarting these desires (what the claims cover), and the invention’s potential market size, are also important.

Assuming maintenance fees are paid at 3-4, 7-8, and 11-12 years after issue, this type of patent typically lasts for 20 years from the initial filing. This lifetime is automatically extended if the USPTO has taken too long to review the application. After that, utility patents expire and become public domain. Patents that go abandoned early also become public domain.

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