Utility Patent: Do You Need One?

A utility patent is often the most valuable asset of a many startup ventures. Patent rights are granted by the United States Government (specifically, the United States Patent and Trademark Office). They grant the patent holder the right to prevent others from copying and commercially distributing their covered invention or creation (“invention”).

In this article, we talk about what is a utility patent, how to secure utility patent rights, and why it is so valuable for a business.

What are Utility Patent Rights?

A utility patent provides an inventor with protective rights regarding a process, machine, article of manufacture, or composition of matter. All of these types of invention are known as patentable subject-matter. Things that fall outside of these categories of subject matter may be too abstract or theoretical to apply a utility patent. It is important to note that only an inventor (or the principal who an agent inventor is working for) can patent the elements of an invention. If the patent is granted, these protections last for 20 years from the date of filing.

A utility patent application makes certain claims about the invention. These claims identify specific aspects of the invention that meet the requirements for patent protection. The requirements for a claimed element to be protectable by patent are:

• Novelty - This simply means that the claimed element of the invention must be new. This means that it must not have been previously disclosed to the public. Disclosing something to the pubic includes:

⁃ The claimed item is already being sold or offered to the public for purposes other than testing or development.

⁃ The claimed item has been the subject of extensive disclosure, such as through description in a trade publication.

⁃ The claimed item item has not previously been the subject of a patent filing in the United States or other country.

• Non-Obvious - The claimed item cannot be an obvious concept in the context of the invention. That is, it must not be already commonly understood by experts in the field. Experts in the field are known as Persons Having Ordinary Skill in the Arts (PHOSITAs).

• Useful - The claimed element must perform some identifiable function or purpose. Note, the function must have some effect or result. It does not matter the value of the function or result.

A utility patent application may make numerous claims for protection. That is, it can identify numerous aspects of the claimed invention that meet the requirements for patent protection. The can be multiple stand-alone claims, or a claim can have numerous sub-claims (or dependent claims).

How to Secure Utility Patent Rights?

As previously mentioned, the USPTO grants patent rights. As such, the inventor must apply to the USPTO and successfully prosecute the patent in order to secure rights. A non-provisional, utility patent application must include the following information:

• Application forms identifying the filing as non-provisional,
• Names of all inventors,
• Residences of the inventors,
• Name or title of the invention,
• Patent agent or attorney and registration number (if applicable)
• Address for correspondence,
• U.S. Government agency with rights in the invention,
• Specification identifying the function or use of the invention,
• Claimed elements of the invention,
• Oath or Declaration of the Inventor, and
• References to any prior Art.

Once the USPTO receives the completed application packet, it will begin researching to make certain the invention meets the criteria as patentable subject-matter. It will then begin to examine the claimed elements of the invention to determine if it meets the novelty, non-obvious, and usefulness requirements.

After these initial determinations, the review process continues with a detailed search by the USTPTO. It will search foreign and US patent filing databases to determine if the invention or its claimed elements have been subject to prior patent applications. Finding a prior patent filing covering these elements will destroy patentability.

The reviewer will also search popular databases, such as trade and commercial websites, such as amazon.com. Remember, if the invention or its claimed elements have previously been offered to the public, this can destroy patentability. The one exception is for the inventor herself. If she publicly discloses her invention to the public, she has 12 months to file a provisional or non-provisional patent application. 

Why Would Your Business Need a Utility Patent?

Your business may need a utility patent if it makes strategic sense to prevent others from copying your invention. For example, a software company develops a new software. It will seek to prevent other companies from wholesale copying (or copying elements of) her invention. If, however, the company’s software could be easily replicated in a manner that does not infringe upon the claimed elements of the patent, then a utility patent may not be beneficial.

Interestingly, utility patent rights do not necessarily entitle the holder of those rights to produce the claimed elements themselves. It simply allows her to prevent others from employing those claimed elements. This would be the case if producing the invention is illegal, such as producing firearms or explosives.

Even if the claimed elements of a patent are easily replicated, filing a patent may scare competitors away from copying the item closely. This can provide an edge in production and efficiency. As such, even a weak patent claim could be strategically advantageous.

In any case, the company will have to weight the cost of pursuing patent rights against the immediate costs. Filing a patent application with the help of legal professionals can cost anywhere from $5,000 to hundreds of thousands of dollars. The cost all depends upon how complicated and detailed the application must be.

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