Utility patents are the type of patent that the layperson thinks of when they hear the word “patent”. These patents protect the functional aspects of an invention. 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.), process or method (e.g., method of chemical synthesis, method of using a machine, a computer algorithm, etc.), article of manufacture (a thing made by hand or machine, e.g., cast metal tools, shoes, toys, etc.), and compositions of matter (e.g., a fertilizer composition, a pharmaceutical composition, genetically modified microbes, etc.). 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).

There are limits on this broad scope of utility patent subject matter. Particularly, abstract ideas, natural phenomena, and laws of nature cannot be patented. Examples of these exclusions include natural occurring materials and living things (e.g., naturally occurring minerals, naturally occurring microbes, electromagnetic waves, etc.). However, if one is able to invent a new machine or method for producing a mineral, electromagnetic waves, or other naturally occurring things, such a machine or method would likely be patentable. To illustrate, if an alchemist truly finds a method of turning lead into gold, that method would surely be patentable. 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.

In order to obtain a utility patent on an invention, the invention must fit into one of the statutory categories above. Then, a patent application must be filed that meets all of the formal requirements of a utility patent application and it must be demonstrated to the US Patent and Trademark Office that the invention claimed in the patent application is novel and not obvious in view of related technologies that are already publicly known. Technologies and information known prior to the filing date of a patent application are referred to as “prior art”. Prior art can include prior public use of a related technology, publication of a description of a related technology, prior sales of a related technology, a prior issued patent for a related technology, and any other forms of publicly known information providing details of a related technology. If “one skilled in the relevant art” (e.g., a technician in the technological field of the invention) would find it obvious to come up with the invention in view of the information available in the prior art, the invention is not patentable. 

If the invention is patentable, a utility patent covering the invention allows the patentee to exclude others from making, using, selling, offering to sell, or importing the invention claimed in the patent. This is a powerful tool for protecting the market for the patented goods and/or services. A patentee can enjoin infringing activity by third parties and pursue damages resulting from the infringing activity, such as lost profits resulting from infringing third party sales. The patent 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.

It is helpful to understand that there are two types of utility patent applications: provisional utility patent applications and non-provisional utility patent applications. A non-provisional patent application is examined by the patent office for patentability, and is thus the standard form utility patent application. A provisional patent application reserves patent rights in an invention without any examination of the application. In order to pursue a 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 patent application may be thought of as a preliminary placeholder for a non-provisional 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 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 date for the invention, while still allowing 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. 

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.