Utility patents

utility patents
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. Thus, the term “patent” almost always means “utility patent.” Nearly all of the famous patents in history – the telephone, light bulb, transistor, airplane, motion picture, were utility patents.

What is a utility patent?  

Under US law, such patents are the type of intellectual property (IP).  These 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 is original, 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 denial 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 or to attempt to block someone else from practicing the invention in the United States. The patent claims determine the exact scope of legal protection. In practice, patents are most useful for financing, acquisitions, licensing, and other business purposes. 

Types of utility patents:  

US utility patents often start as US provisional patents.  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 something that no one else wants to practice, it isn’t going to be worth much! The effectiveness of a patent in thwarting these desires (what the claims cover), and the invention’s potential market size, are also significant. 

Your utility patent will typically have a 20 year lifetime. However, you will have to pay maintenance fees at 3-4, 7-8, and 11-12 years after issue. You may get some extra life if the USPTO delays for too long. At the end of this time, your utility patent will expire and become public domain. If you don’t respond to USPTO office actions, your patent application will also become public domain. 

Patent non-publication requests

patent non-publication requests
Confidential patent applications

Patent non-publication requests: Patent non-publication requests should be part of your IP strategy. Under US law (but not international law), you are allowed to file your US patent application with a patent non-publication request. When you make this request, the USPTO will keep your patent application secret (i.e., will not publish it) until when and if your patent finally issues. If you don’t request non-publication, in 18 months, the patent office will automatically put your patent application online.

When to consider filing a non-publication request:

Non-publication requests are particularly appropriate for certain types of software patent applications, such as “business methods” and related software patents. Why? Because US patent law for this type of software is presently in an unsettled state. Further, the international acceptance of business method patents tends to be limited. By filing with a non-publication request, your disclosure remains a trade secret. If the USPTO ends up granting you a patent that is broad enough to be worth disclosing your work, great! But if you don’t get something decent allowed, then you can continue to elect to keep your work hidden from the public.

Note that you must file for non-publication in your initial filing. The USPTO does not allow you to change your mind and elect non-publication later. 

When filing a non-publication request may not be appropriate:

Do you have plans to file outside the US? Then by international treaty, you must register for foreign patents within 12 months of your initial US filing date. You must also agree to allow the USPTO to publish your initial application within 18 months. Here, just don’t include a non-publication request on initial filing. Alternatively, you can file with the request and rescind this request later.

Other considerations: Unless you can identify a specific reason for non-publication, I generally recommend filing using the default, “publication” mode. Published patent applications can be useful. They help provide prior art to help you establish priority over competitors. Additionally, published patent applications look impressive to investors and can help give you more credibility.