More about utility patents
Protecting the Utility of an Idea: Utility Patents
A new or useful improvement in any process, machine, manufacture, or composition of matter may be protectable by a utility patent – an enforceable instrument issued by the Federal Government to enable a twenty year monopoly against infringement by competitors including the import, sale, or manufacture of any infringing product or embodiment within the United States (or abroad where an international patent is granted).
Generally speaking, a utility patent protects the way something operates, the general concept informing an idea or invention, or the steps comprising a particular method or process. Since a concept may be executed in multiple ways, a utility patent typically protects across multiple embodiments of an invention. Therefore, utility patents generally have broad scope which makes them appealing to inventors.
Utility patents are issued by the United States Patent and Trademark Office after a comprehensive examination process known as prosecution of a patent application.
Prosecuting patent applications is an adversarial process requiring substantial knowledge of patent prosecution procedure and controlling case law. To increase the chances of patenting any invention, it is strongly advisable that you retain a registered patent practitioner (agent or attorney) to author and prosecute the patent application.
Generally two types of Initial Applications for Utility Patents
Generally speaking, there are two types of application for a utility patent an inventor may choose to file, governed by 35 U.S.C. § 111: A provisional application for utility patent (filed under § 111(b)) and a nonprovisional application for utility patent (filed under § 111(a).
Filing a Provisional Application for Utility Patent
A provisional application for utility patent (often incorrectly called a “provisional patent”) is a temporary, incomplete filing used to secure a filing date for an invention.
A provisional application allows an inventor to establish a filing date for their invention even while more research and development may be required.
It’s important to understand that a provisional application is not initially examined comprehensively by the United States Patent and Trademark Office – after a brief pre-examination process to ensure the application meets the requirements set forth by 35 U.S.C. § 111(b) (essentially that the application includes all the necessary parts required to enter it as a provisional application for utility patent), the provisional application will be maintained in a non-public, confidential database for a period of one year. After twelve months, the provisional application will go abandoned (that is, it will no longer be active in the system or usable to establish a priority date for the invention) unless a nonprovisional application is filed to claim the benefit of the provisional application’s filing date.
When filing a provisional application, it is imperative to bear in mind that a nonprovisional application must still be filed within the year to claim the benefit of the provisional application’s filing date.
Otherwise the provisional application abandons; it is as if the provisional application were never filed at all.
It’s also important to consider that provisional applications must include enough information so that the subsequently filed nonprovisional applications don’t introduce new material into the disclosure. For this reason it is very important that a provisional application be written with mind to the future filing of a nonprovisional application – the provisional application must include enough scope to accommodate the future filing of the nonprovisional application, and, at the same time, not unduly limit the future filed nonprovisional application.
Filing a Nonprovisional Application for Utility Patent
A nonprovisional application for utility patent is the full blown patent application filed at the United States Patent and Trademark Office, containing enough information that a “person of ordinary skill in the art” to which the patent application pertains would be able to understand, and therefore “practice”, the invention after a competent reading of the patent application.
Describing the invention in enough detail that a person of ordinary skill is able to practice the invention is called “enablement”. The law requires that an invention must be “enabled” in a nonprovisional application for utility patent. That means the disclosure in the application must be detailed enough that a person of ordinary skill could build the invention.
Once filed, a nonprovisional application for utility patent will be assigned an examining unit at the United States Patent and Trademark Office and, ultimately, an examiner will be appointed to review the application. Examination of patent applications at the USPTO is called “prosecution” (as opposed to “litigation” of patents in a Federal Circuit Court), a complex process that may require arguments and amendments be entered against prior art cited by the examiner.
It is strongly recommended that a registered patent practitioner author and prosecute nonprovisional applications for utility patents at the United States Patent and Trademark Office. Depending on the field of art of the invention, prosecuting a nonprovisional application takes around eighteen to thirty-six months.
Which Application for Utility Patent Should I File?
Provisional patent applications are useful for inventors in highly competitive fields seeking to secure a filing date as soon as possible. Provisional patent applications allow inventors to gain a priority date for their invention while accommodating some further research and development or reduction to practice. You might want to file for provisional patent protection if you are seeking funding or investment and expect there will be additional steps in finalizing the inventive concept before filing the nonprovisional application.
Some of the drawbacks of provisional filings include:
• A provisional application, although substantially less expensive than a nonprovisional application, is actually an additional expense: A nonprovisional application for utility patent still needs to be filed.
• Since utility patent terms are calculated from the filing date, a provisional application may reduce the term of the patent in force after issuance (since it takes a year off the front end of the term, depending on when the subsequently filed nonprovisional application for utility patent is actually filed).
• Provisional patents go abandoned unless a nonprovisional application is filed to claim the benefit of the provisional application’s filing date. Thus, if a nonprovisional application is not filed, public disclosure of the invention under the provisional application’s pendency can create serious issues. If a competitor can prove that you publicly disclosed your invention more than twelve months previous to filing for patent protection, any patent ultimately attained my be invalidated under the public disclosure statutory bar. (This period varies in other countries and between patent types, thus if you are considering provisional patenting for your invention, please call us today to discuss.)
• If you are considering international patent protection, a provisional application needs to be contemplated with mind to the international filing as well.
If you already have a very good understanding of how your invention operates, and can enumerate and articulate the inventive step or concept, then a Nonprovisional patent application is probably preferable.
A nonprovisional is more expensive than a provisional, but is nonetheless necessary to patenting an invention. If you are seeking international protection for your invention, a nonprovisional application allows you more time to file a Patent Cooperation Treaty application, which may then offer strategic benefits in reentering the United States via filing of continuing applications, for example, enabling articulation of special use claims and the like relative the domestic filing. Discussion of this topic is beyond the scope of this website, however if you are interested in international filing or just have questions, please feel free to give us a call.
Both provisional applications and nonprovisional applications for utility patent have their place in patent prosecution. In the end, each case ultimately depends on the particular invention at hand. We’re happy to assist you in devising a comprehensive patent strategy that works for you and your invention with mind to you or your company’s overarching intellectual property portfolio needs.
International Patent Protection
The Patent Cooperation Treaty
International patents are filed through the Patent Cooperation Treaty (the Paris Accord). For more information on international filing under the Patent Cooperation Treaty, please click here.