The U.S. Patent and Trademark Office (USPTO) accepts applications for three types of patents: utility patents, design patents, and plant patents. The most common of these is the utility patent. They protect the way an invention is used by giving a limited-time monopoly of 20 years from the application’s filing date to the inventor. There are extensions of up to five years available for drugs, medical devices, and additives. The inventor will then have a right to exclude others from manufacturing, using, selling, or importing a particular invention. The patent owner also has the right to recover damages by suing an infringer.
Two types of utility patent applications may be filed: provisional and non-provisional. The latter is a more common application. The provisional patent application puts applicants in the United States on equal footing with foreign applicants. Without the provisional patent application, non-U.S. applicants could add a year to the 20-year life of the patent by filing an application in their home country first, and then filing their U.S. application. By claiming priority in their home country, they would have an extra year during which they could claim a monopoly on their invention. A provisional patent application gives applicants in the United States the same advantage by giving them 12 extra months during which the patent is “pending.”
Patent laws have a wide scope, but there are certain limits on what may be patented. For example, laws of nature, physical phenomena, or abstract ideas are not patentable.
In order to get your patent application accepted, the following requirements must be met: subject matter, novelty, utility, non-obviousness, and enablement.
How to Apply for a Utility Patent
In order to be eligible for a utility patent, an invention must be one of the following:
- A process or method for producing a useful and tangible result, such as computer software;
- A machine;
- A manufactured article;
- A composition of matter; or
- An improvement of an invention falling within the foregoing categories.
Utility patents can be mechanical, electrical, or chemical. To make sure your invention is new, you need to search all of the earlier developments in the field of the invention. This involves searching U.S. (and sometimes foreign) patents, as well as other publications like scientific and technical journals, to find related inventions.
Under 35 U.S.C. § 102 (a), an invention must be “novel” in the sense that it is not known or used by others in this country, or patented or described in a publication anywhere. If the invention is patented elsewhere or known to others, there is a statutory bar to giving the inventor a patent. In general, there is a one-year grace period between the time of invention and the time you file for the patent. The grace period may start running as soon as the invention is disclosed to someone else without an expectation of confidentiality.
As the name “utility patent” suggests, the invention must be both useful from a practical standpoint and operable. There is a “beneficial use” strand of the utility requirement, which involves morality, but it has not been applied broadly for years. When applying for a patent, you must be able to show how the invention works in the real world. Fantastic or hypothetical machines, such as a perpetual motion machine, are not patentable.
An invention will be found to have utility when a person with ordinary skill in the art immediately appreciates why the invention is useful based on the invention’s characteristics, and its usefulness is specific, credible, and substantial. The latter requirement means that the invention cannot be considered a throwaway or insubstantial. You need to show only one utility for a claimed invention.
Whether or not an invention is nonobvious must be determined on a case-by-case basis. Nonobviousness is a highly fact-specific inquiry into whether the subject matter of the patent and the prior art are such that the invention would have been obvious to someone with ordinary skill in the art at the time of the invention. An examiner will look at the different between the prior art and the invention that is the subject of the patent application, as well as the skill of a practitioner of the relevant art. A patent application may fail if the patent is a combination of two prior art elements that are suggested or motivated by the prior art, the nature of the problem, or a practitioner’s ordinary skill in the art.
Enablement means that the patent application contains a specific written description of the invention that allows anybody who is skilled in the art at issue to make and use the description in order to make and use the invention.