Although there are three types of patents in the U.S.: utility patents, design patents and plant patents, utility patents are the most common patent type. Utility patents generally protect what an invention is (apparatus), how an invention works and is used (method).
Claims to an article of manufacture comprising a computer readable medium, may be used to protect computer software. Other aspects of an invention may be protected by other types of patents, such as a design patent for the physical (ornamental) appearance of an item.
A plant patent may be granted to an inventor who has invented or discovered and asexually reproduced a distinct and new variety of plant.
Plant varieties may also be protected by obtaining a Plant Variety Certification from the U.S. Department of Agriculture by preparing and filing an application with the USDA – a service also provided by Metrolex IP Law Group.
Utility patents can be grouped loosely into five categories based on the type of invention that is covered:
- A process – a method of achieving a specific result, such as Amazon’s One-Click ordering process.
- A machine – a device or apparatus with fixed or moving parts that work together to achieve a useful function, such as a computer.
- An article of manufacture – an object that is not a direct product of nature and that may be produced by a human or machine.
- A composition of matter – a combination of materials or ingredients that forms a new chemical compound or mixture, such as a drug or drug formulation.
- An improvement – inventions that improve upon or involve new uses for existing inventions, such as a new indication for a known drug.
These categories are not mutually exclusive, however. Inventions frequently fall under multiple categories, such as a chemical compound (composition of matter) and its method of synthesis (process).
Once acquired, a utility patent lasts for 20 years from the date the patent application was effectively filed allowing its owner to develop an exclusive market by preventing others from making, using, selling, offering to sell, or importing the patented invention.
Utility Patent Requirements
To meet the legal requirements for a U.S. utility patent, inventions must fall into one of the categories listed above. Inventions of abstract ideas, laws of nature or natural phenomena are not considered to meet the requirements for patent. Inventions that fall into the above listed categories but are nonetheless considered to be “directed to” an abstract idea may also be deemed ineligible.
Utility patents also require that the invention be novel, non-obvious:
- A novel invention is one in which the claimed invention has not been previously known, that is, the invention as claimed does not already exist in the marketplace or has not already been described in a publication, published patent application or issued patent.
- A non-obvious invention is one which has not been previously known, and it not considered “obvious” in terms of what is previously known, that is, an invention that is sufficiently different from existing products or processes from the perspective of one of skill in the art.
- A useful invention must perform its intended purpose and have a specific and real-world use. Specificity requires more than just a broad assertion of utility, such as stating the invention is useful to treat cancer vs. merely stating that the invention is useful to treat disease. A real-world use cannot be speculative or require additional research to prove.
Utility Patent Application Process
In order to obtain a U.S. utility patent, the patent application must be filed with the U.S. Patent & Trademark Office (USPTO). Filing an application as a provisional allows more time to gather more data, develop claims, or prepare drawings.
However, a corresponding non-provisional utility patent application must be filed within one year of the provisional application’s filing date.
Although there are no formal requirements for a provisional patent application, the invention must be disclosed in enough detail that it would enable someone who works in the field to make and/or use the invention in order for the later-filed non-provisional application to be able to make use of a provisional priority claim.
In other words, the usefulness of a provisional is proportional to the quality of the disclosure. Provisional patent applications are not examined or published by the USPTO. In contrast, a non-provisional utility patent application must include a detailed description, drawings (if necessary to explain the invention), an abstract and claims.
The claims define what the applicant considers to be the boundaries of the invention. An oath or declaration signed by each inventor is also required, stating that they are the original inventors and authorize the filing of the application.
Once a non-provisional patent application is filed, the official examination process begins and will be published 18 months from the earliest effective filing date. The application is assigned to a patent examiner who reviews the claims in light of both the disclosure of the application and an examiner’s search of the most recent applicable field publications.
The patent examiner typically will mail an Office Action that presents rejections that detail why in the examiner’s opinion, all of the requirements for patentability have not been met, and the applicant responds with legal arguments and/or claims amendments rebutting the patent examiner’s position.
The back-and-forth process may end quickly, or may continue until the patent examiner’s rejections are appealed, or the patent examiner decides that the requirements for patentability have been met and the case becomes allowed. In some cases, an applicant may decide to abandon the application.
The entire process, from filing the non-provisional application to the issuance of a utility patent, generally takes anywhere from 2 to 5 years, but depends on the subject matter of the invention.
Find A Patent Attorney Near You
For expertise, guidance, preparation and execution, work with the patent attorneys at METROLEX IP. We are a full service Patent and Intellectual Property Law firm with offices in Washington D.C. and Osaka, Japan and can make the process of bringing your ideas to fruition easier. For more information, our team of patent attorneys can help guide you through this process, fill out our contact form or call us at (202) 828-1008 today to learn more.
