Utility Patents - An Overview

Utility patents are the type of patent that most people think of when they hear the word “patent”. A utility patent protects the functional aspects of a new and useful process, device, or system, as opposed to design patents (which cover the ornamental appearance of an article of manufacture) or plant patents(which cover novel asexually reproduced plant varieties). There are statutorily defined categories of inventions that can be protected by a utility patent: a machine (e.g., a motor, an automated tool, a computer, a solar panel, etc.), a process or method (e.g., method of chemical synthesis, method of using a machine, a computer algorithm, etc.), an article of manufacture (a thing made by hand or machine, e.g., cast metal tools, shoes, toys, etc.), a composition of matter (e.g., chemical compounds, a fertilizer composition, a pharmaceutical composition, genetically modified microbes, etc.), or a new and useful improvement thereof. These categories cover a very broad spectrum of inventions, from hand tools and machine components to computing devices to specially engineered bacteria for digesting wastes. Thus, virtually “anything under the sun that is made by man” can be patented. Diamond v. Chakrabarty, 447 U.S. 303 (1980).

Scope of Utility Patent Subject Matter

There are limits on this broad scope of utility patent subject matter. Particularly, there are exclusions from the statutory categories that remove statutory subject matter status, including abstract ideas, natural phenomena, and laws of nature. Examples of these exclusions include natural occurring materials and living things (e.g., naturally occurring minerals, naturally occurring microbes, electromagnetic waves, etc.). Other commonly discussed exclusions include mathematical formulae, financial and business plans, and software that simply automates processes previously carried out by people without any added innovation. To illustrate, if someone develops a novel mathematical method for calculating the volume of a particular object from a two-dimensional image, that method may be excluded from the categories of utility patent subject matter and may not be patented, even though it is a "method". However, if one is able to invent a new machine or method for a particular purpose that utilizes such a mathematical method, such a machine or method would likely be patentable. For example, a method of scanning packages and objects entering a warehouse, automatically calculating their volume, and organizing the packages and objects based these calculations to save space is a new and useful process that has a practical application and is not purely an abstract idea or mathematical formula.

Is the Invention Patentable Over the Prior Art?

If an invention fits into one of the statutory categories discussed above, it has overcome one of the requirements of a utility patent under US Patent Law. However, in order for the invention to be patentable, it must also be novel and non obvious in view of what has come before it, which is generally referred to as "prior art". Any information accessible to the public prior to an invention is considered prior art with respect to such invention. Prior art can include prior patents, patent applications (if published), journal articles, graduate student theses, prior public use of a related technology, publication of a description of a related technology, prior sales of a related technology, a previously published Youtube video, and any other forms of publicly known information providing details of a related technology. . The invention must be compared to the prior art to determine whether it is novel and non obvious, and therefore patentable, in view of the prior art.

Novelty of an Invention

Under section 102 of Title 35 of the United States Code, inventions must be novel in view of the prior art in order to be patentable. An invention is novel if it is not disclosed in its entirety in a single reference, such as a patent, a published patent application, a single product in the marketplace, a technical manual, text book, or any other single source of information. For example, if a single patent discloses a device that includes all features of the invention, the invention is said to be "anticipated" by the prior patent and is thus not novel or patentable.

Is the Invention Non Obvious?

Under section 103 of Title 35 of the United States Code, inventions claimed in utility patents must also be non obvious in view of the prior art in order to be patentable. Obviousness is analyzed through the lens of a person having ordinary skill in the relevant art (a "POSITA"), such as a technician in the technological field of the invention. If a POSITA would view the invention as obvious in view of prior technologies. Obviousness can be based on multiple sources of publicly available information. For instance, if an invention includes elements A, B, C, D, and E, and there is (1) a prior patent that discloses elements A, B, and C in a related technology and (2) other patents for similar technologies that disclose elements D and E, it may obvious to combine the prior patents to arrive at the invention including A, B, C, D, and E because the prior patents cover related technologies. Alternatively, it may be obvious to modify a single prior art reference to arrive at an invention because elements D and E are well known to persons having skill in the relevant technology and it would be an obvious step to add elements D and E. There are many rationales for supporting obviousness arguments, which are beyond the scope of this article. Mastering these rationales requires a thorough understanding of US patent laws.

How to Determine if the Patentability Requirements are Met?

How does one determine whether an invention is novel and non obvious? Typically, the answer is a patentability search for the invention before a utility patent application is filed. A patentability search involves searching various sources of prior art, including the database provided through the USPTO website, foreign patent office databases, primary scientific literature, technologies in public use, and other public sources of knowledge for related technologies. The search results must then be analyzed to determine whether there is an anticipating reference or whether the invention would be obvious to a POSITA in view of the search results. This analysis requires a thorough understanding of US patent laws and should be conducted by or with the assistance of an experienced patent attorney. The patent search is typically conducted in preparation for filing a patent application. Conducting a patent search to evaluate whether the invention is patentable subject matter before filing the patent application is a prudent step. It can guide both the decision of whether to file an application for a utility patent and what features of the invention distinguish the invention from prior technologies and should therefore be emphasized in the patent application.

Filing a Utility Patent Application

It is helpful to understand that there are two types of applications for utility patents: provisional utility patent applications and non-provisional utility patent applications. A non-provisional utility patent application is examined by the patent office for patentability, and is thus the standard form of utility application.

Provisional vs. Non-provisional Utility Patent Application

provisional patent application reserves patent rights in an invention without any examination of the application. In order to pursue a utility patent on an invention described in a provisional application, a non-provisional application claiming priority to the provisional application must be filed within twelve months of the filing date of the provisional application. A provisional utility patent application may be thought of as a placeholder for a non-provisional utility patent application. The provisional application has the following advantages: (1) establishes an official priority date (official invention date), (2) provides a 12-month period during which the invention described in the provisional patent application is considered patent pending, (3) is not disclosed to the public, maintaining trade secret status of the invention (assuming the invention has been maintained as a trade secret by the inventor), and (4) does not count against the twenty-year term of the corresponding utility patent, providing up to one extra year of patent pending status. In order to preserve the priority filing date of a provisional patent application, a non-provisional patent application must be filed within the twelve-month provisional period. A provisional patent application is a useful tool for protecting a technology or innovation that includes patentable aspects, but may still be under development. The provisional patent application establishes a priority filing date for the invention, while still allowing patentable subject matter to be added to the application before the non-provisional patent application is filed. This is useful because subject matter cannot be added to a non-provisional patent application once it is filed. The one-year provisional period may also be used to defer the costs of the patent examination process. For example, the inventor may wish to test the commercial viability of the invention and/or pursue partners, investors, manufacturing, or perform other due diligence prior to committing to the higher costs of the non-provisional patent application.

Non-provisional Utility Patent Applications

If the inventor wishes to pursue patent protection through a non-provisional utility patent application, the application must meet all of the formal requirements of a utility patent. The formal requirements are in addition to the patentable subject matter, novelty, and non obviousness, and it must be demonstrated to the US Patent and Trademark Office that the these requirements are met. The formal requirements include specific sections of a patent application, including a detailed description of the invention, at least one patent claim, patent drawings, and an abstract of the invention. If these elements of the patent application are not present, the application will be rejected and will not be examined by the patent office. A patent application that meets the formal requirements will be preliminarily accepted and assigned to a patent examiner. There are also more specific legal requirements that must be met to comport with the relevant patent laws, including an adequate written description, enablement of the claimed invention, and definiteness of the patent claims. The patent examiner evaluates the application for compliance with these requirements, as well as for novelty and non-obviousness.

Detailed Description of the Invention

Every application for a utility patent must include a detailed description of the invention. The written description typically has some standard sections, including a background describing the problem or issue to be addressed by the invention, a summary of the invention, a brief description of the drawings, and detailed description of the invention. The written description should provide written support of every aspect of the invention that is included in the patent claims. In other words, every element included in the patent claims must be described in sufficiently detail to allow a POSITA to understand the claimed invention. Any claim element that is added, but not described in the written description or otherwise supported by other portions of the patent record (e.g., the patent drawings are adequate support in some circumstances) is considered "new matter" and will be rejected by the patent examiner.

Enablement Requirement

The written description and drawings must also provide enablement of the invention. The enablement requirement is essentially the manner in which the patent law ensures the invention works as purported by the inventor. To meet the enablement requirement, the patent application must provide sufficient information to allow one having ordinary skill in the relevant art to practice the invention without undue experimentation. If there is sufficient technical detail in the application to satisfy the examiner that a POSITA could practice the invention without extraordinary effort, this requirement is essentially met. Thus, a patent application must be technically thorough.

Reproducible Drawings

The patent drawings must meet a certain level of quality. Many inventions have intricate designs (e.g., engines, electronic devices, etc.) that require detailed and complex illustrations in order to sufficiently teach the invention to the reader of the patent application. Without a professional draftsman or technical illustrator, the drawings may not have sufficient detail to properly explain the invention. Also, the assistance of technical illustrator or draftsman is needed in order to provide patent drawings that are of sufficient quality and are reproducible for publication by the US Patent and Trademark Office.

Proper Utility Patent Claims

Patent claims are written in a specialized language unique to utility patents. Patent claims generally include a preamble, a transitional phrase, and the claim elements (in the case of a device or system) or steps (in the case of a method). The preamble generally introduces the particular invention claimed as a device, apparatus, system, composition of matter, method or process in the field of the invention, and the transitional phrase is placed after the preamble: e.g., "A method of synthesizing a biodiesel fuel, comprising..." The transitional term plays a role in defining the scope of the claim, as follows:

          1.  "Comprising" is an inclusive, open-ended term that does not exclude additional elements or steps. It indicates that the list of claim elements or steps in the that follows is potentially non-exhaustive.

          2.  "Consisting of" is a more restrictive term, indicating that the claim is limited to the claim elements or steps listed, excluding anything else.

          3.  "Consisting essentially of" is a middle ground, indicating that the claim includes the listed claim elements or steps and may include other elements or steps that do not materially affect the basic and novel characteristics of the claimed invention.

The "comprising" is the preferred transitional word because it provided broader scope. A utility patent claim that uses the "comprising" term can be infringed by a technology that includes the elements or steps of the claim and additional elements or steps. Thus, simply adding an element to the claimed invention will not avoid patent infringement.


U.S. patent law mandates that an application for a utility patent include one or more claim particularly pointing out and distinctly claiming the invention. The definiteness requirement addresses these important goals of the patent laws:

          1.  Notice to the Public: The definiteness requirement ensures that the claims of a utility patent provide clear notice to the public, particularly to experts in the field, about the boundaries of the subject matter that is protected by the utility patent. This clarity helps avoid infringement by enabling others to ascertain the scope of the patent rights and design around them.

          2.  Prevents Overbroad Claims: It prevents inventors from being granted exclusive commercial rights that are broader than what they have actually invented or disclosed in their patent application. Overbroad or vague claims can unjustly inhibit innovation and competition.

          3.  Facilitates Examination: Clear and definite claims assist patent examiners in assessing the patentability of the invention, particularly in determining novelty and non-obviousness.

In practice, a claim is considered definite if a person having ordinary skill in the art can understand the bounds of the claim. However, a claim that is ambiguous, vague, or overly broad may be deemed indefinite. The standard for definiteness was clarified by the U.S. Supreme Court in the case of Nautilus, Inc. v. Biosig Instruments, Inc. The Court held that a patent claim passes the definiteness threshold if it informs those skilled in the art about the scope of the invention with "reasonable certainty."

Examination Process for Utility Patents

Filing a patent application establishes the priority of the invention. The America Invents Act changed US patent system in 2013 from a first-to-invent system to a first-to-file system. This means that regardless of which of two inventors was first to develop a new technology, the first inventor to file an application has the better rights. The filing date determines the priority among inventors and the earlier application wins the race to the patent office.

Examiner Review and Patent Office Actions

Once the application is filed, the application is routed to an art unit within the patent office. Typically, there is a delay in examination of several months before substantive examination begins. After this time period passes, the examiner will begin the examination process. The examiner will review the application for compliance with the formal application requirements. The examiner will also conduct a search of the prior art to determine whether there is any closely related prior art. The examiner will then analyze the patent claims in view of the prior art. If the examiner finds any issues with respect to the formal requirements or novelty or obviousness issues, an office action will be issued to the applicant. The applicant will then have 3-month time period to respond to the office action.

Responding to Patent Office Actions

The Applicant can respond to an office action by amending the patent claims and/or present legal arguments to address the rejections in the office action. The applicant may also interview the patent examiner to assess how the examiner is interpreting the invention and whether there are aspects of the invention that the examiner does not find in the prior art. The examination process can involve honing the claims to the point that the examiner believes they are patentable without narrowing the scope of the patent claims unnecessarily. This process requires experience and skill to execute effectively such that the scope of the allowed claims have the broadest utility patent coverage available, capturing non-obvious elements without surplus language.

A successful application process results in a utility patent that has a term that begins on the date the patent issues and ends twenty years from the date the application for the patent was filed. Thus, the enforceable term of the patent is quite long.

Foreign Patent Rights

A US utility patent application can serve as the priority application for pursuing foreign patent rights. One option is to file a Patent Cooperation Treaty (PCT) Application that claims priority to a US utility patent application. The PCT application preserves the inventor's right to pursue patent protection in foreign countries for 30 months from the US patent application's filing date.

Design Patents and Plant Patents

There are other types of patents available in the US, including Design Patents and Plant Patents. Please visit our pages covering these topics for further information.

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The patent attorneys and professionals at Sierra IP Law are experienced and skilled in area of intellectual property, including all aspects of patent law. Contact our firm for a free consultation regarding your patent matter.

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