An Overview of Utility Patents in the United States | Fish & Richardson

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What is a utility patent?[1]

The definition of a utility patent is a patent which covers “any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof”.[i] Utility patents are the most common type of patent. In 2016, the United States Patent and Trademark Office estimated that 90% of issued patent documents are utility patents.[ii] As an example, a utility patent (or more patents) could be obtained to claim a new type of wheel for a car, including methods of using the wheel.

Who can file a patent?

Anyone with an invention, an inventor, can apply for a patent. In addition, a person or entity to whom an inventor has assigned or is under an obligation to assign his invention may apply for a patent, with certain exceptions. These people or entities are called assignees. While any inventor or assignee can draft a patent application and proceed before the Patent Office, it is advisable that such inventors or assignees engage a patent attorney to assist them in drafting and / or pursuing their application before the Patent Office. Patent Office.

What is the content of a utility patent?

Generally, a utility patent includes an abstract, drawings, a detailed description and the claims of the patent. The abstract provides a brief statement summarizing the invention. The drawings (also known as figures) provide a visual representation of the invention and may include flowcharts or diagrams. The specification typically provides the scope of the invention, a history of the invention, a summary of the invention, a brief description of the drawings, and a description of the invention. Finally, the claims define the object (or “limits and limitations”) of the invention. For a more detailed discussion of the contents of a utility patent, see Anatomy of a Patent.

How to get a utility patent?

People looking for utility patents get them after a successful application and examination by the United States Patent and Trademark Office (USPTO). A utility patent application generally includes the abstract, drawings and specification that will eventually appear in the utility patent. The application will also include claims, which may be amended as the patent application is reviewed by a patent examiner during the USPTO patent application process. On average, it takes almost two years from the date of application for a utility patent to be granted, and typically involves several rounds of round-trip communications between the patent examiner and the applicant.[iii]

Does a utility patent give you the right to make your invention?

No. A common misconception is that the owner of a utility patent has the right to make, use or sell the patented invention. A utility patent, however, only grants the right to prevent others from making, using, or selling their patented invention. Although a patentee may be able to implement his invention, he must first determine whether he has freedom to operate with a view to others’ patented inventions.

How long is a utility patent valid?

For utility patents filed after June 8, 1995, the term of the patent is twenty years from the date of filing of the first related patent application. Utility patents which were filed on or before June 8, 1995 and which were in force on June 8, 1995 are valid for seventeen years from the date of grant of the patent or twenty years from the date of grant of the patent. the filing date of the first related patent application, whichever is longer. Utility patents filed between 1836 and 1860 had a maximum term of 21 years from issuance, and utility patents filed between 1790 and 1835 had a maximum term of 14 years from issuance.

The actual term of a patent may be shorter or longer than the terms provided above. For example, a patent applicant may file a final disclaimer to overcome a “double patent” rejection during patent prosecution. Final disclaimers usually arise when an applicant has a granted patent and seeks further application to the same invention with minor improvements. Disclaimers limit the term of a subsequently granted patent upon expiration of the earlier patent.

The term of patents can also be extended by adjusting the term of patents (PTA, 35 USC § 154) or extending the term of patents (PTE, 35 USC § 156). The PTA extends the term of a utility patent in the event that the USPTO delays the examination process beyond certain legal requirements. The PTA is calculated and assigned automatically by the USPTO and printed on the front of an issued utility patent. On the other hand, PTE extends the term of a utility patent for marketing delays due to pre-market regulatory review, such as approvals associated with the Food and Drug Administration. Unlike the PTA, the PTE is not automatically calculated and assigned by the USPTO and must be requested by the patent applicant. For a more comprehensive review of PTE, see Introduction to Patent Term Extensions.

What to do after obtaining a utility patent?

Once you have obtained a utility patent, you must pay maintenance fees to maintain the patent for its term. Maintenance fees are not due during the patenting process. On the contrary, they are only triggered after the grant of the patents.

Under Section 35 USC § 41 (b), maintenance fees are due on issued utility patents 3.5 years after grant, 7.5 years after grant, and 11.5 years after grant . Maintenance fees can be paid up to six months before the due date. A patent owner who does not pay on time has a six-month grace period to pay afterwards. The patent will expire at the end of the six-month grace period. However, it is possible to revive a patent by paying maintenance fees after the expiration of the six-month grace period if it is demonstrated that the delay was unintentional. For a more complete discussion of maintenance fees, see Everything you need to know about patent maintenance fees.

Then in this series we will give an overview of design patents.

[1] This is a follow-up blog post in a series reviewing the different types of patents. See https://www.fr.com/different-types-of-patents/. Subsequent blog posts will review design patents and plant patents.

[i] 35 USC § 101.

[ii] See https://www.uspto.gov/web/offices/ac/ido/oeip/taf/data/patdesc.htm

[iii] https://www.uspto.gov/dashboard/patents/pendency.html

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