What is a Utility Patent?

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Definition of Utility Patent

utility-patentsA property right that grants, for a limited time, the right to exclude others from making, using, offering for sale, selling or importing the invention.

A utility patent is designed to protect “any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof” (35 U.S.C. §101).

Overview

Since patent rights are territorial, each nation has its own entities that issue and enforce patent protection. In the United States, the governing body that issues a patent is the United States Patent and Trademark Office (USPTO).

From a bird’s eye view, there are three main types of patents that the USPTO grants: utility patents, design patents, and plant patents. Design patents protect the ornamental design for articles of manufacture, and plant patents protect inventions or discoveries that asexually reproduce any distinct and new variety of plant.

Of the three patent types, utility patents are the most common – tallying nearly 94% of all patent applications in 2013.

What Does a Utility Patent Actually Do?

A utility patent ultimately grants a monopoly for a limited time, generally 20 years from it’s first effective US filing date. The incentive behind such a monopoly stems from promoting “the progress of science and useful arts, by securing” the inventor’s exclusive right to his discovery (Article 1, §8, cl. 8 of the Constitution). The Founding Fathers reasoned that by protecting the rights of an inventor, the progress of science and useful arts would flourish in the U.S. And flourish it did, since the first issued patent in 1790, relating to potash, the growth of science and technology has skyrocketed.

Though the end result creates a monopoly, a patent is actually granting a negative right to the patent holder. A negative right does seem like a bit of a conundrum; yet, think of it as really a right to exclude.

A patent does not grant the right to make, use, offer for sale, or import. It grants the right to exclude others from making, using, offering for sale, selling or importing the invention. In other words, the USPTO does not grant the keys to the patented invention; it grants the lock to shutout any competitor, effectively creating a temporary monopoly.

In theory, the USPTO could grant a valid patent that can’t be legally commercialized and sold. For example, assume that Inventor A patented a wooden pencil and Inventor B came along and improved the pencil by adding an eraser to the end of the pencil. Inventor B is granted a patent because she made a “useful improvement thereof” (putting aside the obviousness concerns). However, since Inventor A has the right to exclude Inventor B from making, using, and selling the pencil, Inventor B must first obtain a license from Inventor A to use the pencil before capitalizing on the pencil with an eraser. Thereby, the patent system creates a fragile and imperfect balance between restricting innovation and fostering the dissemination of ideas.

What are the Parts of a Utility Patent?

A utility patent generally includes drawings and a specification.

A Typical Specification May Include:

  • Title of the Invention
    • The title should be short, specific and descriptive of the invention.
  • Cross-Reference to Related Applications
    • This section includes any pertinent patents or applications that are related to the present application; it could include a provisional application or a foreign filing.
  • Background of the Invention
    • The background of the invention describes the field to which the invention relates, and it also describes any relevant prior art.
  • Summary of the Invention
    • The summary describes the substance and the overall novelty of the invention.
  • Brief Description of the Drawings
    • This section provides a brief explanation of each of the drawings.
  • Detailed Description of the Drawings
    • This section describes how the invention is structured and how it works.
    • It informs any person skilled in the art, to which the invention relates, on how to recreate and use the invention.
    • Everything mentioned in the claims should be included in this section.
  • Claims (the most important section)
    • The claims state the intellectual property that the inventor is claiming ownership over.
    • Claims should be written with a fine balance between being specific enough to describe the invention and broad enough to cover any conceivable variations of the invention.
    • Claims have numerous nuanced rules and drafting claims can be extensively complex.
    • It is rare for a claim to be overly simple, but it has been done before.
      • For instance, the patent for Element 95 on the Periodic Table, simply claims, “Element 95.”
    • Abstract
      • The abstract is a short (150 words or less) synopsis of the invention.

Difference Between a Provisional and a Nonprovisional Utility Patent

First off, a provisional patent is really a provisional patent application. A provisional patent doesn’t exist; the term arose from a mere colloquialism that dropped off the word application.

Here’s a non-inclusive comparison between provisional patent applications and nonprovisional patents.

 Nonprovisional Provisional
Protection Offered   Full ProtectionLimited to Rights of an Application – i.e. Can’t Sue for Infringement
Duration 20 yr. term1 yr. term
Subsequent ActionsMaintenance Fees, etc.Must File Nonprovisional Application Within 1 yr.
“First-to-File” USPTO Filing DateDate of NonprovisionalUpon Filing a Nonprovisional Application, the Priority Filing Date Relates Back to the Provisional Application – Offering 21 yrs. of Protection
Time till Issuance2-4 yrs.Effective Immediately Upon Filing
Filing RequirementsFiling Fee, Specification, Drawings, Claims and AbstractFiling Fee, Specification, Drawings
Acceptance Rate LowHigh
Examination ProcessExamined on the MeritsNot Examined on the Merits
Use of Patent Pending NoticeYesYes
Cost$6,000 – 10,000 or moreUsually less than $4,000

Benefits of a Provisional Patent Application

Essentially, a provisional patent application offers a lower upfront cost and a faster processing time. These benefits are largely due to the simplified technical aspects of the application.

A realist may easily question the purpose of a provisional patent application. After all, why pay a higher cost in the long run (provisional and nonprovisional ≈ $14,000) when one could save $4,000 by not filing a provisional patent application?

The provisional patent application is worth its weight in gold in two main respects:

First-to-file

Since the U.S. replaced the first-to-invent standard with the first-to-file system in 2011 (Leahy-Smith America Invents Act (AIA)), invention protection has become much more than sealing an envelope and sending it to yourself. Patent protection now revolves heavily around who filed the invention first. A provisional patent application helps in this regard because it allows for the earliest possible filing date.

The Wright Brothers were not the first to think of the idea of a plane, nor were they the first to build a prototype plane – they were the first to fly it.

Hedging Risk

Often times, it’s unclear if the invention will turn out to be a monetary success. In a way, provisional patent applications test the waters of success for an invention. Simply speaking, the nonprovisional patent application and the provisional patent application offer the same status – patent pending. So for one year, a provisional patent application allows for the same patent status and protection to explore the venture, but at a smaller cost than the nonprovisional patent application.

If the invention is indeed successful – perfect, the earliest priority date is set and a nonprovisional application should be filed accordingly to obtain full patent protection. If the invention is not successful – not so perfect, cauterize the bleeding and know that it was still worth finding out this result before investing more time and money into a nonprovisional patent. In sum, there’s less risk of a potential loss if the invention is not successful.

Choosing Between Provisional and Nonprovisional Patent Applications

Listing out a one-to-one comparison chart isn’t a dispositive assessment in deciding between a provisional or nonprovisional patent application. Both applications have distinct purposes that are entirely tailored to individual circumstances. It’s best to seek expert counsel to help decide the most profitable course of action for your circumstances.

If the best course of action is indeed filing a provisional application, be watchful to include all of the paramount information that could be contained in the later nonprovisional application. The subsequent nonprovisional application can only claim priority back to the information encompassed by the provisional application. Any distinctly new information will not have the preferred filing date.

The Utility Patent Application Process

what-is-a-utility-patent

References

U.S. Patent Statistic Chart

USPTO Arrangement of Specification

Nonprovisional (Utility) Patent Application

Provisional Patent Application

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