This article is written by Shreya Patra of Xavier Law School, Xavier University, Bhubaneshwar. This article broadly covers all aspects of utility patents, including but not limited to what utility patents are, the uses of such utility patents, what are the different types of utility patents, how they differ from patents, the steps to file utility patents in the United States., and the tenure of a utility patent, before ending it with a few notable judgments in the United States
It has been published by Rachit Garg.
Recently, the trading company Moomoo obtained a unique utility patent. Their utility patent allows its users to draw out charts as per their needs and has multiple tools to choose from. It helps users build a proper routine, understand their investment contributions, and understand the stock market better.
Another growing sector contributing to the rise in utility patents is that of equines. From breeding to saddles and other tools, there have been great developments in this industry. The equine industry has quickly evolved to take advantage of the valuable asset that is a utility patent and put it to good use by protecting their inventions, which can be classified under it. Now it becomes important to understand what utility patents are, which we will be discussing elaborately in this article.
Utility patents are an important part of the US patent system. They provide exclusive rights to inventors over their inventions and protect them from infringement. In this article, we will be taking a comprehensive look at utility patents in the US, including what they are, different types of utility patents, examples, requirements to file a Nonprovisional Utility Patent, steps to file a Nonprovisional Utility Patent, how long do they last, benefits of filing a utility patent, tips for filing a utility patent application, and the cost of filing a utility patent application.
The United States Patent and Trademark Office (USPTO) covers three types of applications for patents namely utility patents, design patents, and plant patents. We will be specifically covering utility patents in this article. Before moving on to understand what utility patents are, it is important to keep in mind three factors that are required for patents to be fulfilled and that apply to utility patents as well. The most important factors that determine whether a patent will be granted or not are simply its utility, novelty, and nonobviousness.
What is a utility patent
A utility patent is a type of patent granted by the US Patent and Trademark Office (USPTO). It gives the inventor exclusive rights over their invention for up to 20 years. The inventor can then prevent other people from making, using, or selling the invention without their permission. Utility patents are granted for any new and useful process, machine, article of manufacture, or composition of matter.
The scope of a utility patent is much broader than that of a design patent, which is limited to the appearance of a product. Utility patents cover the functionality of an invention, including how it works and how it is used. Utility patents also give the inventor the right to sue someone who infringes on their patent rights.
Factors that determine patentability
The first factor for patentability is utility, which refers to the use and practicality of the patent (if granted) in our lives. Under Section 101 of Title 15 of the United States Code, utility refers to its use and purpose in the real world; if no such purpose is served, it would be discarded from being granted a patent.
The second factor for patentability refers to novelty described under Section 102 of Title 35 of the United States Code. It refers to the fact that the patent being granted should show a known resemblance to any prior art.
The third factor for patentability is non-obviousness. Section 103 of Title 35 of the United States Code deals with nonobviousness. According to this Section, any obvious invention would not be granted a patent; it has to be unique and more than just a step up from the current invention or even just an improvement.
A utility patent, as the name suggests, is centered around an invention’s or creation’s place and use in society. It can be said that it is highly dependent on putting into good explanation the first factor of patentability, that is, use and practicality, well defined under Section 101 of Title 35 of the United States Code. It can be quite simply understood that all utility patents are patents, but not all patents are utility patents; this sets them apart. A utility patent must contain one of the following aspects in order to be recognized as one:
- A new improvement;
- A useful improvement;
- A new and useful process;
- A new and useful machine;
- A new and useful manufacturer; or
- A new and useful composition of matter.
Features of utility patent
Some features of utility patents are:
- Absolute right
A utility patent provides the owner with the absolute right to the process of invention. Protecting the process of the invention becomes important in order to prevent the invention from being taken advantage of commercially and allow the owner to have full and true access to its use and creation.
- Product and process
A utility patent protects two things, the invention and the process of the invention. This allows for overall protection for the inventor’s invention.
- Low novelty
A utility patent does not necessarily have to be novel, but it has to be novel to some extent. It could be an improvement on something that is already available to consumers. The public domain could already have the invention, and the utility patent could be a slight change to it.
- Marginal improvement
A small improvement allows inventors to claim a utility patent. A utility patent is not required to undergo a great deal of change.
Difference between a utility patent and a patent
A utility patent is quite simply a patent, but it can be distinguished from other categories of patents as it focuses on the steps, process, or functioning of a patent, which makes it unique in that regard. This step, process, or functioning does not have to be inventive, which is the case for patents. Patents protect the ideas behind the invention or creation, whereas a utility patent protects the process behind such ideas.
Types of utility patents
Utility patents can be divided into three categories: process, machine, and composition of matter. A process patent covers a process or method of doing something, while a machine patent covers a device or machine. A composition of matter patent covers a composition or mixture of components.
Composition utility patent
A composition utility patent refers specifically to a chemical composition or a chemical mixture of different ingredients and compounds. Such composition utility parents are required to list out all the ingredients that have resulted in such a chemical composition, along with the scope of the function this chemical composition performs.
Machine utility patent
A machine utility patent refers to all the machines we use in our day to day activities, like phones and laptops. These machines basically contain several parts that are programmed for movement or allow them to move and help us by making our daily tasks easier.
Process utility patent
A process utility patent is the way in which any activity is carried out. It includes novel ideas, information, and other steps that help ensure a successful outcome for the activity. Process patents can be further divided into two subcategories: product-by-process and method-of-use patents. Product-by-process patents cover the process of making a product, while method-of-use patents cover the process of using a product.
The types of utility patents can be represented as follows:
Utility patent examples
One of the most famous utility patents is for the telephone, which was granted to Alexander Graham Bell in 1876. The patent covered the process of transmitting sound over wires. Another famous utility patent is for the light bulb, which was granted to Thomas Edison in 1880. This patent covered the process of generating and controlling electric light.
Other examples of utility patents include the process for manufacturing semiconductors, the process for producing synthetic rubber, and the process for producing gasoline.
An example of a composition utility patent is Patent Nos. US8822524B2 and US9896668B2, known as Substrate Mimetic Akt Inhibitor, granted to Yale University in 2014 and the University of South Florida in 2018, respectively. The purpose of granting such a utility patent is that both of these patents create a new composition that allows for the detection of several diseases such as ovarian cancer, breast cancer, colon cancer, and thyroid cancer.
An example of a process utility patent is the computer software that is created. Patent No. US20200019892A1. This patent was granted to Airbnb Incorporation in 2022. This patent helps to automatically determine the bookings available on the basis of the bookings that have already been accepted and confirmed. This helps out by filtering the bookings available for the users to book and providing probabilities for the same.
We can understand the difference between a product by process utility patent and a method of use by process utility patent using a simple example. Suppose a new process for producing a product that can be used as a spoon, fork, and knife is created; this would be a product by process utility patent. However, the steps for using this same product as a spoon, fork, and knife would be termed a method of use process utility patent. The method of use process utility patent guides us on how we can either remove or add parts or do anything else to convert the product as per our needs and requirements to make use of it as a multi-functional product.
An example of a machine utility patent is patent no. US79247S1, granted to Lenovo Beijing Limited. This patent is for a machine found and commonly used in all households; a laptop computer. Another example of machine utility patent no. US20220226532A1, granted to Seoul Viosys Co. Ltd., which provides filtered air wherever placed by removing harmful particles like dust, bacteria, etc., is commonly known as air purifiers.
Provisional utility patent
A provisional utility patent application might be the stepping stone to you obtaining your utility patent, but it does not immediately grant the utility patent to you. Once you file a provisional application, you have a period of 12 months available to you. Within this time period, you have to file a provisional application. It is important to note that such an application is not available for design inventions. The applicant should not be under the misconception that if they are granted the provisional utility patent, they will be granted a utility patent at the end. A provisional utility patent only allows you to claim a non-provisional utility patent at a later date.
Non-provisional utility patent
A non-provisional utility patent is issued by the United States Patent and Trademark Office (USPTO). An application for a non-provisional utility patent ultimately provides the applicant with the patent after successfully clearing all the stages in the patent application process. A non-provisional utility patent goes through examination and screening by the examiners at the United States Patent and Trademark Office (USPTO) office. A non-provisional utility patent is the first choice for applicants who wish to protect their utility patents and prevent any infringement or violation of their utility patents.
Requirements to file a non-provisional utility patent
In order to file a nonprovisional utility patent, you must meet certain criteria.
- First, you must be a US citizen or resident. You must also have an invention that is novel, non-obvious, and useful.
- Your invention must be eligible for patent protection under US patent law.
- Your invention must also be described in detail in the patent application. This includes a description of the invention and how it works, drawings of the invention, and a description of any prior art related to the invention.
- Finally, you must also provide a legal basis for the patent application, such as a claim of priority or originality.
Steps to file a non-provisional utility patent
A non-provisional utility patent application can be filed online on the official website of the United States Patent and Trademark Office (USPTO), or it can also be filed by hand or mail delivered to the official address available on the website. Applicants must keep in mind that if they opt for the non-electronic method, they are levied an additional $400 fee ($200 for small entities as per Section 1.27(a) of the Electronic Code of Federal Regulations and for micro entities as per Section 1.29(a) or (d) of the Electronic Code of Federal Regulations). Usually, applicants apply online on the official platform to avoid such additional costs.
How to apply
Checklist for non-provisional utility patent applications
- Utility patent application transmittal form
The non-provisional utility patent application transmittal form is an important document that is to contain all the basic details, such as the summary of the invention, the inventors involved in the creation of the invention, etc. This form is also to contain the details related to the assignment of power of attorney to one inventor in the presence of multiple inventors to ease the process.
- Fee transmittal form
The non-provisional utility patent application is also accompanied by the fee transmittal form. This form contains all the details related to the fee payment. The fee payment is a necessary step you need to carry out in order to obtain your patent. The fees differ from application to application. In the case of filing an application in person or by mail, you are usually levied an additional charge. Such a measure has been taken up by the United States Patent and Trademark Office (USPTO) in order to promote filing applications online.
- Application data sheet
The application data sheet is another document that is an important part of the application filing process. This document has to contain details about the inventor, the applicant, and the assignee in case they wish to assign the rights to another. It also provides the option of whether they want to keep their application hidden or publish it. This form should be filled out if the patent applicant wishes to assign the rights to the patent to an assignee. The details of the assignee have also been filled out accordingly in the form. Such details also contain the correspondence address for the United States Patent and Trademark Office (USPTO) to send notices and other status updates about the application.
- Small and micro entity status
If the applicant is filing on behalf of any small or micro entity, the applicant may note that there are reductions in certain fees subject to the fact that you qualify to be referred to as such an entity. On successful qualification, you can simply select the entity status in the utility patent application transmittal form, claim a reduction in fees, and submit it accordingly. In order to claim this status, one has to fill out the form called PTO/SB/15A or PTO/SB/15B.
If the applicant is filling out Form PTO/SB/15A, they have to ensure that they meet the requirements to claim the reduction. The requirements can be listed as follows:
- Satisfy requirements to be recognized as a small entity;
- The inventor must not have been named in more than four other non-provisional applications filed before this one in the United States itself;
- They are entitled to transfer the rights of this micro entity to another micro entity and not any other non-micro entity; and
- For the year before the application fee is deposited, gross income must not be thrice the median household income, as that would be violation of micro entity status. The applicant can refer to Section 1.29 of the Electronic Code of Federal Regulations and Section 509.03 of Manual of Patent Examining Procedure for more details and information.
In case the applicant is filling out Form PTO/SB/15B, they must ensure that they meet the following requirements to avail themselves of the benefit of reduction:
- Meet the requirements to be referred to as a small entity;
- The applicant’s employer, who provides the applicant with their income, must fall under higher education institutions as per Section 101(a) under the Higher Education Act of 1965, which can also be found under Section 1001(a) as Title 20 of the United States Code; and
- They are entitled to provide the rights in form of an assignment, license or transfer to another micro entity but not to any other non-micro entity.
- Specification (find preferred order of specifications here)
The non-provisional utility patent application must contain the specification. The specifications are basically a collection of documents that help to describe the invention using accurate terms in a crisp manner, as if an expert in the field would be able to understand them. They must only mention things related to its history and usage, and they must not include any irrelevant details.
The elements of a specification are:
- Invention title
The invention for which the application has been filed has to contain the title. The title cannot refer to any brand or name but must be able to describe the invention technically. It can be anywhere from 2 to 7 words but must not exceed the 500 character limit. If an application data sheet is used, then it should be on the topmost part of the first page of it. The title of the invention has to comprehensively and accurately contain the gist of what the creation is. The inventor may be required to change the title of the invention if it does not satisfy the examiner and examination requirements. You can refer here to find a more detailed list of guidelines to follow.
- Cross-reference to related applications
In case the applicant wishes to claim the benefit of a previously filed provisional/non-provisional application for recognition by the United States Patent and Trademark Office (USPTO), they must mention the same in the application data sheet. Such a cross-reference to related applications helps to better understand the invention.
- Federally sponsored or development research (to be mentioned)
In cases where the invention is made using federally sourced funds, the individual may be required to retain domestic United States patent rights, and this must be stated as a statement at the start of the application. It must be stated that such an application was made with the support of the Federal Government and that this would allow the Federal Government to acquire some of the rights to it. If it isn’t mentioned, then there has to be a statement headed “Government License Rights” specifying the same.
- Reference to sequence listing
Information about some patents cannot be put on a sheet of paper and at times requires some help electronically. Then, it may be submitted on a compact disc(s). These compact disc(s) that are submitted can only contain either gene sequencing listings, computer program listings, or tables of information that are more than 50 pages. The specification being provided for the application must mention the compact disc(s), including the number of them and their duplicates, and list them out accordingly.
- Invention background
The invention’s background is a great way to convey the context of the invention to the examiner. It can contain an explanation of the definition and be worded accordingly. It can include details about the technology and/or subject matter involved in making the invention. It can also refer to other documents specifically, and it can also take ideas from prior art and highlight the problems and refer to them.
- Invention summary
The summary of the invention should contain a brief and crisp explanation of the invention. The summary should precisely present to the examiner the general idea of the invention. In addition to all this, the summary also contains, in short, the answers to issues with the previous art that were not addressed. The summary can also state the purpose of the invention.
- Drawings description
The specifications are usually accompanied by drawings to present a clear idea of the invention through visual representation. Each of the drawings that are put in the application must be described. In the case of multiple drawings, which is usually the case, they must be labeled accordingly and described as per the different depictions.
- Invention’s comprehensive description
The invention must be described in a detailed manner, including its step-by-step functioning, in order to clearly distinguish it from other inventions and highlight its distinctness and uniqueness. It can use any method of description as long as it is accurate and clear in doing so. If the invention is an improvement of a prior invention, then it should highlight the issues with the prior invention and how this invention is resolving such issues and acting as an improvement. It can skip out on other details and must focus on the factors of improvement.
The most important benefit of filing the application is to ensure that it gets legal protection. The granting of the patent entitles the applicant to invoke legal protection for the patent, and this is largely dependent on the scope of the claims. The claims cover the areas that the inventor wishes to claim to be an invention and must describe them. A non-provisional utility must contain a minimum of one claim. The claim(s) must be mentioned on a separate sheet, ordered consecutively, and presented in the form of a single sentence to prevent any confusion. The nature of the claims may differ and could be independent, dependent, or limited. If there are dependent claims for the invention, then they must be put together with all other dependent claims. An application is free to contain three individual claims and may extend up to 20 claims in total, with no additional fees being levied on the application.
- Abstract of disclosure
The abstract is the opening, i.e., the introduction to the invention. It contains an explanation of the invention in the form of a narration, is usually just a single paragraph, and is usually limited to just being as short as 150 words. The abstract provides the United States Patent and Trademark Office (USPTO) and the public with a glimpse into the technicalities of the invention.
All patent applications are to be supported with drawings of the invention in order to get a visual understanding of the invention. The drawings must focus on the salient elements of the invention and show all aspects of the invention. The drawing should be provided at the time of filing and cannot be added later after the application has been filed. The drawing must help give the examiner a clear idea of how the invention would look and function.
- The inventor’s oath or declaration
The inventor’s oath or declaration is contained under Section 115 of Title 35 of the United States Code, and under Section 1.63 of the Electronic Code of Federal Regulations the inventor’s Oath or Declaration is taken by the inventor, who states that they are the original or joint original inventor, whatever the case may be, and that they accept any punishment laid down under Section 1001 of Title 18 of the United States Code. The punishments under the above mentioned Section include imprisonment of up to 5 years, a fine, or, in some cases, both, in the event that any fraudulent statements are made in the declaration. The declaration must contain only the truth. The declaration is used instead of an oath. The oath is usually taken by the inventor before an officer has the authority to administer it or in the presence of a notary’s officer, depending on either’s availability for this process. An oath differs from a declaration as a declaration requires no notarization or witness, and therefore it is usually taken up by most applicants as there are no additional processes to obtain it.
The oath or declaration must contain the name of the inventor, without whom it cannot be taken or even signed, which is required to certify the process. In the absence of an Application Data Sheet (ADS), mailing address, inventor’s residence, and other details are required to be included in the oath or declaration. In form PTO/AIA/01, one can find the utility application declaration for use with the application data sheet.
In cases where the inventor cannot provide an oath or declaration in English because they do not have understanding of it, they may take the oath or declaration in the language of their understanding and knowledge. After doing so, they are required to attach a translated copy of whatever they have said as an oath or declaration in English. This must be done if they are not using a United States Patent and Trademark Office (USPTO) translation form, which has an English translation available for all applicants to use.
The oath or declaration that is taken by the inventor is invalid unless and until it is signed by the inventor. But in certain cases, instead of the inventor, a substitute may sign the application. The cases in which this may be allowed are as follows:
- The inventor refuses to sign the oath or declaration;
- The inventor cannot be found after several efforts to sign the oath or declaration;
- The inventor cannot be reached after several efforts to sign the oath or declaration;
- The inventor is deceased, making it impossible to get the oath or declaration signed; or
- The inventor, who is required to sign the oath or declaration, is incapacitated.
In such cases, a substitute statement has to be filed along with the oath or declaration of the inventor, and this must be signed by the applicant.
In the case of multiple owners of patents, i.e., joint inventors, it is not possible to have all of them sign or keep track of all correspondences between all of them. In that case, Form PTO/AIA/81 is filed. This form allows all the joint inventors to appoint a single person using power of attorney to file the application on their behalf. In order to do so, a signature is required by all the joint inventors, including the one being appointed by them. This signature acts as their consent to this process being carried out. After getting all the signatures, the inventor being appointed through power of attorney is empowered to sign all the correspondence addressed to them on behalf of all of the inventors, and all of them are not required to sign anymore. However, if no such representative inventor is appointed amongst the joint inventors, then in that case, all of the joint inventors, whatever the number may be, have to sign the patent application correspondence that is being filed at the United States Patent and Trademark Office (USPTO).
Filing the application (online/offline)
The process for filing a nonprovisional utility patent is relatively straightforward. The first step is to prepare a patent application. This includes a detailed description of the invention, drawings of the invention, and prior art related to the invention. In addition to this, while submitting the non-provisional utility patent application, we have to ensure that it is in English only; if it is presented in any other language, it should be supplemented by a translation that has to provide an accurate translation of all the facts stated in the local language to prevent any discrepancies, and it must also fulfill the checklist as elaborated above. Once all the documents are ready and the application is filled out and ready to be filed, it can be done in two ways. It can be filed either electronically (through the Patent Center or the Electronic Filing System Web – EFS Web) or non-electronically (by mail or hand-in delivery).
Patent Center is the newest advancement in technology that aims to combine all the processes related to filing a patent and become a one-stop destination to address the applicant’s needs and concerns. It aims to take the place of the Electronic Filing System Web – EFS Web currently being used to do so. The Parent Center has lots of interesting features, including real time tracking of the status of the patent, provided you fill in certain additional information. The additional requirements to get full access to all the features of the Patent Center are as follows:
- The login ID and password of USPTO.gov have to be kept at hand to login in and have access to your application;
- Have a profile that is referred to through a customer number; and
- Either be a registered patent attorney, a patent agent, a practitioner supporting individuals, or an individual and independent inventor.
Types of users
There are two types of users, guest users and registered users.
Guest users, as the name suggests, have fewer features available to them due to the nature of their registration on the website. Guest users have fewer features available to them and some restrictions on the modes of payment available to them. Guest users do not have the option to activate any two-step verification in order to protect their accounts. They also cannot provide any additional documents, and such hurdles might impact their online application process experience.
But registered users have more features available to them. Registered users have the option to review their applications and even enable a two-step verification to authenticate their accounts. They can also set the viewing of their account to either private or public, as per their preference. They can also provide additional documents that are required for patents and ongoing applications.
Electronic Filing System Web – EFS Web
The Electronic Filing System Web was used by the United States Patent and Trademark Office (USPTO) until it was replaced by the Patent Center. It is an online web-based system that allows applicants to file their application, submit the documents required, and fulfill all the items on the checklist required in the process of filing an application for a patent.
The major advantage of such a system is that it allows applicants to file anytime and anywhere as long as the applicant has internet and web-based access to their device, and there is no additional software or changes required to be made to your device in order to access such a feature. It is free to register, but you will be prompted to pay the required filing and other costs for the application.
The Electronic Filing System Web allows users to take advantage of the online mode of submission and provides multiple formats of documents to be submitted, ranging from PDF to ZIP files. It also provides an electronic receipt that acts as an acceptance for the date of submission.
The advantages of filing online/electronically (through the Patent Center or the Electronic Filing System Web – EFS Web) are as follows:
- Lower fees are levied;
- It can be filed by anyone having access to the internet;
- It does not require downloading any additional software or making any other changes;
- Applications are quickly filed online and one does not have to wait in queue to do so;
- Easy and simple process of filing online;
- Multiple formats of documents are allowed to be submitted on the portal;
- It can be accessed by anyone;
- It has minimal steps and is a step-by-step process;
- Protection safeguards are incorporated to alert users about flexible submission, multiple payment modes, and other options; and
- Option to submit compressed (.ZIP) files as well.
The application fee for the patent can be found here. The accepted payment modes are check or money order, credit card or debit card, deposit account, Electronic Funds Transfer via ACH Debit, EFT via ACH Credit, wire transfer, etc. If the applicant is filing online, they will be prompted to pay the required fees online. If the applicant is filing offline, then they are required to pay by fax or mail. In the case of payment by credit card, the form for credit card payment has to be attached.
In case the applicant wishes to file offline, they can do so with the help of the United States Patent and Trademark Office (USPTO). In order to file offline by mail or by hand, they can head over to the United States Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia.
If you opt for an offline filing method by mail or by hand, then the filing or deposit date is the date the United States Patent and Trademark Office (USPTO) receives the correspondence receipt and not the date on which you mailed it.
If you are filing offline, i.e., the non-provisional utility application by hand or by mail, you have to pay an additional amount of $400 and $200 for smaller entities. This has been levied to encourage applicants to file online and use the Patent Center or the Electronic Filing System Web – EFS Web.
Once the patent application is prepared, it must be filed with the USPTO. The USPTO will then review the application and determine whether it meets all the requirements for a patent. If the application is approved, it will be granted a patent
Submitting your application
After ensuring all your documents are in place for submitting your application, make sure to do some final checks so that you have not missed anything, all the documents that require your signature are signed, and all details are filled out, as you will not be able to add any additional information after the filing of the application.
When the United States Patent and Trademark Office (USPTO) receives the application, it will review it for any errors or incompleteness. In case this happens, the applicant is alerted through a notice that highlights such inconsistencies, and you will be prompted to complete it. There are two types of notices that are sent to an applicant in this regard, they are the notice of missing part and the notice of incomplete application.
- Notice of missing part
An applicant receives a notice of missing parts when they have failed to fill out all the details in the application or when certain information that is mandatory to be filled out is missing. Such a notice prompts them to fill out such information at the earliest.
- Notice of incomplete application
An applicant receives a notice of incomplete application when their non-provisional application is incomplete. As we’ve discussed in the checklist for non-provisional applications, small and micro entity status, and the utility patent application transmittal form, these are important documents without which you cannot proceed with the filing of the application. In the absence of such important documents, you receive a notice of incomplete application, which provides and mentions the time to complete it and may prompt you to pay an additional fee.
It is important for you to promptly respond to this notice by filing the required documents in the time period provided to you and keeping track of other dates and correspondences to prevent abandonment of your application
If your application is abandoned but you still want to obtain the patent, then you have to file a petition. This abandonment usually takes place when there is a lack of reply to an office action or the failure of the office action to provide a notice to the application, missing information or missing parts, or failing to pay the fees on time. The petitions are of four different kinds. The following petitions can be filed:
- Petition to withdraw holding of abandonment of the patent application
This is present under Section 1.181(a) of Title 37 of the United States Code. The petition to withdraw the holding of abandonment of the patent application must be filed within two months of the date of receiving the notice of abandonment, and if not, it will be dismissed under Section 1.181(f) of Title 37 of the United States Code. It should be addressed to the headquarters of the United States Patent and Trademark Office (USPTO) in Alexandria, Virginia. The following are required:
- Certificate of mailing under Section 1.8 of Title 37 of the United States Code;
- Priority Mail Express mailing under Section 1.10 of Title 37 of the United States Code;
- Postcard receipt as prima facie evidence under Section 503 of Manual of Patent Examining Procedure;
- Petition to withdraw holding of abandonment based on failure to receive office action
When the applicant files an application, they are required to receive a Notice of Allowance and Issue Fee Due. In the absence of receiving such an original notice or issue, they can file a petition highlighting the lack of office action, which was an obstacle in their way of obtaining a patent.
In order to file such a petition, a statement from a practitioner saying there was no office communication and nothing was received is required, and the records serve as evidence of the same fact. In addition to that, a copy of such a record where it would ordinarily have been entered but has not been must be attested and cited in the statement of the practitioner. No fee is required to file this petition, and such a petition must be addressed to the headquarters of the United States Patent and Trademark Office (USPTO) in Alexandria, Virginia.
- Petition to revive an abandoned application
When there is no question as to the fact that the application has been abandoned and the applicant’s contentions state clearly the reasons for the abandonment of such an application, a petition is filed as per the provisions contained under Section 1.137(a) of Title 37 of the United States Code. You can also refer to Section 711.03(c) of the Manual of Patent Examining Procedure. In order to revive the application swiftly without any delay, it must also contain the reply, terminal disclaimer if any, statement stating that the whole delay was unintentional, fees for the petition, etc., which are important to make the application status active once again. Additional rules for this can be found here. This petition should be addressed to the headquarters of the United States Patent and Trademark Office (USPTO) in Alexandria, Virginia.
- Petition for revival of an application for patent abandoned unintentionally under Title 37 of CFR Section 1.137(b)
The form for this petition can be found here. In case the patent has been abandoned unintentionally, you can opt to file this petition.
Prosecution of application
At this stage of the application process, you might find that having a patent attorney or a patent agent eases the stage of prosecution. The United States Patent and Trademark Office only corresponds with one person, which is either the applicant or the attorney, but not both of them. At this stage, your patent application is examined by the office.
Examining patent applications is a huge task and is divided amongst various technology centers working under the office itself. Each of these technology centers is headed by individuals addressed by directors who lead the examiners and support staff. Each technology center has its own area of specialization, broadly covering a certain category/class of patents, and thus this helps to divide the work between different technology centers. On ascertaining the type of patent application, it is assigned to a technology center for further examination.
The examination process includes reviewing all the details provided to determine whether the patent complies with all legal provisions, whether there must be no such patent granted, which is determined through a comprehensive patent search in its existing exhaustive database, and whether it fulfills the basic requirements of being a patent, i.e., uniqueness, non-obviousness, and practicality. The examiner carefully reviews all the above mentioned points and arrives at a decision.
On arriving at a decision, the examiner’s decision is notified to the applicant through an office action, which is provided in writing. In the case where you have a patent attorney or agent, it is mailed to them directly, and in the absence of a patent attorney or agent representing you, it is mailed to you directly. Such office action explains in detail and in writing whether or not your application meets all the requirements to be granted a patent and the reason why your patent is or is not (whatever the case may be) being granted a patent. The legal requirements that are to be met by all patents that aim to be granted such patent status by the United States Patent and Trademark Office (USPTO) are as follows:
- Novelty under Section 102 of Title 35 of the United States Code;
- Utility under Section 101 of Title 35 of the United States Code;
- Eligibility under Section 101 of Title 35 of the United States Code;
- Non-obviousness under Section 103 of Title 35 of the United States Code; and
- Written description under Section 112 of Title 35 of the United States Code.
As an applicant who wishes to be granted the patent, you would have to write back asking for reconsideration of your application by highlighting all the errors and points that have been elaborated in the form of grounds or reasons for objection or rejection of the patent. The replies to each of these filed by the applicant must be in good faith to ensure that they hope to get over this obstacle and make sure that their application is granted a patent. It must also be supported by evidence, if any, that would further substantiate the applicant’s grounds.
The applicants are provided the option to amend any statements that they have presented before the examiner as arguments, with no extra costs imposed on them. In case the applicant hopes to amend the application in reply to a rejection, they must elaborate on why they wish to amend such claims, why such claims are patentable with reference to the previous claims made by them, and how such claims are free from any objections and rejections.
It is important for the applicant to keep in mind that they have to follow the deadlines set by the office and not delay them in any regard. In case of any delay, they might be imposed some additional fees if they file after the application expiration period has set in or the application is at the stage of abandonment. The fees paid are generally non-refundable. The office action contains the time at which the reply is provided.
Applicants also have the option to engage in an interview with the examiner in order to shorten the process of examination and showcase their proactiveness towards obtaining the patent. Your one-on-one meeting with your examiner can be scheduled in person or on a call, and such details can be found at the end of the office action document. This is referred to as an “interview”.
After providing an appropriate response to the first office action, your response is examined by the examiner, and if the examiner is still not satisfied by the reasons you have stated, then a second office action is provided that is final but provides applicants with the opportunity to amend and argue but is more restricted in comparison to the first office action.
An office action is often considered the final part of your application in the prosecution stage, but the applicants have several options available to them, which are as follows:
- Filing for a reply after final decision under Section 1.116 of Title 37 of the United States Code;
- Filing After Final Consideration Pilot 2.0, addressing all such objections;
- Filing request for continued examination – This allows the applicant’s application to be examined continuously; and
- Filing before the Patent Trial and Appeal Board a Notice of Appeal.
In order to prevent this, the applicant has to ensure they address all the objections and satisfy the examiner with their arguments, or the examiner will reopen the prosecution. Otherwise, the application becomes abandoned within 6 months from when the final rejection has been mailed to the applicant.
Grant of patent
After all these stages have been completed and your patent has successfully passed through all the obstacles, the examiner will grant you your patent. This is done by providing you with a Notice of Allowance, which conveys your entitlement to the patent. You may be prompted to pay an issue fee and a publication fee, which might be included in the Notice of Allowance. Both the issue fee and the publication fee must be paid in order for the applicant to receive the patent and prevent the abandonment of the application. This payment must reach the United States Patent and Trademark Office (USPTO) office within three months from the date the Notice of Allowance has been mailed to the applicant, and such a patent is not subject to any extension whatsoever.
On being granted the patent, the applicant is now free to prevent others and exclude them from using such an invention/creation as this right solely rests with them. Patent applications generally last for a period of 20 years that begins from the date the application was filed. In the case of patents claiming the benefit of earlier filed application(s) in the United States, the date begins with the earliest application that has been filed before the office.
You can also provide additional documents in case your application is an improvement of an invention and the prior invention has not disclosed such things. These must be filed before or during the payment of the issue fee for the parent application. The United States Patent and Trademark Office (USPTO) also provides eGrants for all the patents having an issue date on or after April 18, 2023, and they are available to the applicants to access through the Patent Center itself.
Ensuring your patent is legally secure and protected
Once the patent is granted, the inventor must pay the patent maintenance fees in order to keep it in effect. The patent maintenance fees must be paid every 3.5, 7.5, and 11.5 years after the patent is granted. These years are accompanied by additional fees 6 months from the beginning of the above-mentioned years, those dates having the anniversary dates ending on the 4th, 8th, and 12th years, respectively, which are also the deadline to make such a payment to the USPTO office.
The applicant would not receive any reminders for due payments of maintenance fees, and therefore they are required to keep track of such deadlines and pay the maintenance fees promptly. A grace period is provided to make such a payment, which is accompanied by additional fees. In case the applicant fails to make payment on the basis of the original deadline and grace period, the patent will expire on the date the grace period comes to an end.
How long does a utility patent last
A utility patent typically lasts for 20 years from the date of filing. However, the patent can be extended in certain cases, such as for a patent that covers a medical device or drug. In addition, the patent can be terminated early if the patent holder fails to pay the required patent maintenance fees.
As per the United States Patent and Trademark Office (USPTO), any patents filed on or before June 8, 1995, or that will be in force on or after the said date are allowed to hold the patent for a period of 17 years starting from the date the patent is granted or 20 years starting from the date the earliest application is filed; the longer one is preferred and granted accordingly. A utility patent cannot be renewed, but it can be maintained. Patent terms can also be extended by filing an application under Section 156 of Title 35 of the United States Code, which is available to patents that have been filed before the United States Patent and Trademark Office (USPTO) no more than within the past five years.
Benefits of filing a utility patent
There are several benefits to filing a utility patent. First, it provides exclusive rights to the inventor to prevent others from making, using, or selling their invention without their permission. This allows the inventor to control how their invention is used and reap the financial rewards of their invention. Filing for a utility patent and being granted such a right allows the owner to control and examine its use to their benefit and comfort with no worries about the possible violations that it could face.
Second, a utility patent can also be used as a bargaining chip in negotiations. For example, the patent holder can license their patent to another company in exchange for royalties or other compensation. Patents that have been granted by the United States Patent and Trademark Office (USPTO) are accredited and thus more likely to receive license requests from the patent owner.
Finally, a utility patent can also be used as a deterrent against infringement. If another company is infringing on the patent holder’s rights, the patent holder can take legal action to stop the infringement. Being registered under the United States Patent and Trademark Office (USPTO), a utility patent can avail of the benefits and protection granted to it, including the benefit of suing those who infringe upon it in order to protect your patent.
Tips for filing a utility patent application
When filing a utility patent application, it is important to make sure that all the requirements are met. This includes preparing a detailed description of the invention, providing drawings of the invention, and providing prior art related to the invention. In order to ensure that you, as an applicant, have not missed out on anything, you can create a checklist of important documents for your patent. You can refer to the above-mentioned checklist to find a list of all the documents required for the same.
It is also important to make sure that the legal basis for the patent application is sound. This includes claiming priority or originality for the invention. It is important to ensure that your patent is novelty under Section 102 of Title 35 of the United States Code, has utility under Section 101 of Title 35 of the United States Code, is eligible under Section 101 of Title 35 of the United States Code, is non-obvious under Section 103 of Title 35 of the United States Code, and has a written description under Section 112 of Title 35 of the United States Code.
Often, inventors get stuck with the fact that there is a requirement to have an already built and working model to get a patent, and that is just a misconception. What is more important is the fact that the applicant is able to accurately describe to the examiner in the form of a written description how and why their prototype has been designed and that such an invention is unique, non-obvious, novel, and eligible for being granted the patent.
Finally, it is important to make sure that the application is filed with the USPTO in a timely manner. The USPTO has strict requirements for filing a patent application, and failing to meet these requirements can delay the process. You can refer to the table here to find the estimated timeline and procedure for the utility patent application. The applicant is required to keep track of the deadlines and timelines, as they are not provided reminders and notifications for all such stages in the process of a utility patent application.
Cost of filing a utility patent application
The cost of filing a utility patent application varies depending on the complexity of the invention and the number of claims. Generally speaking, filing a utility patent application can cost anywhere from a few hundred dollars to several thousand dollars.
In addition to the filing fee, there are also other costs associated with filing a utility patent application, such as attorney fees, patent search fees, and patent maintenance fees. You can head here to find a detailed breakdown of the costs related to the patent. The cost of filing a utility patent differs as there are additional charges that are levied, like late fees on account of failure to meet deadlines, filing petitions, etc.
Cases on utility patents
United States v. Teletronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988)
In the case of United States v. Teletronics, Inc., a patent was issued to Carl and others. The most important question here, which also paved the way for the test of enablement, was whether someone skilled in art can make use of the disclosures present related to the invention and incorporate information into it that is known without any undue experimentation. It was held that it should satisfy the trait of enablement, which is a requirement in addition to experimentation to some extent. Thus, the district court has made an error in its judgment regarding non-enablement.
Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361 (Fed. Cir. 2005)
In the case of Callicrate v. Wadsworth Mfg.,Inc., it was held that the specification contained in the documents for the patent could support an enabling disclosure, and even TrafFix Devices Inc. v. Marketing Displays Inc. (2001) elaborates on a background section and even depreciates the subject matter of the patent in question.
Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995)
In the case of Elmer v. ICC Fabricating Inc., the validity of a utility patent that was infringed was in question. It was finally decided that even if the United States Patent and Trademark Office (USPTO) has granted the patent, it is invalidated by the fact that it was in public use for at least one year before the date the application was filed in the United States.
TrafFix Devices Inc. v. Marketing Displays Inc., 532 US 23 (2001)
In the case of TrafFix Devices Inc. v. Marketing Displays Inc., it was questioned whether the functional feature of the utility patent was ruled out because it could not draw any trade dress protection from the infringement it is facing. It was held that the functionality of the invention gives it the right to protection as a utility patent, and in order for it to claim that it requires trade dress protection, it would require the party to show that such an invention was merely decorative (for trade dress) and not functional.
Utility patents are an important part of the US patent system. They provide exclusive rights to inventors over their inventions and protect them from infringement. In this article, we have taken a comprehensive look at utility patents in the US, including what they are, different types of utility patents, examples, requirements to file a nonprovisional utility patent, steps to file a nonprovisional utility patent, how long do they last, benefits of filing a utility patent, tips for filing a utility patent application, and the cost of filing a utility patent application.
Filing a utility patent can be a complicated process, but it can be worth it in the long run if it helps protect your invention and your rights as an inventor. Utility patents being granted by the United States Patent and Trademark Office (USPTO) provide security and assurance that the patent is protected from infringement, and if infringement still occurs, you will have the option to take swift action against such infringers and violators in order to protect your patent.
If you have any questions about filing a utility patent application, please contact a patent attorney. They can help guide you through the process and ensure that your rights as an inventor are protected.
Frequently Asked Questions (FAQs)
How is a utility patent different from a patent?
A utility patent is not to be confused with a patent and greatly differs from it in many aspects. A utility patent protects how an article or invention essentially works and functions in society (Section 101 of Title 35 of the United States Code), whereas a patent protects the idea and often the design behind the article or invention (Section 171 of Title 35 of the United States Code).
How many types of utility patents are there?
A utility patent is broadly divided into three types. They are process utility patents, machine utility patents, and composition of matter utility patents. A process utility patent refers to those patents that focus on the process or even the method of doing something, which majorly covers the functioning process of machines and devices. It includes the ideas and steps of the process to make it function and give us the outcome we desire. It is further divided into products by process and method of use. Product by process focuses on how the product is made for our use. Often, it includes how a new process has been developed to make use of the utility patent. The method of use focuses on how to use that particular patented product. Oftentimes, we have to add or remove parts to use it as per our needs and requirements, as the whole product may not be helpful for us or satisfy our needs.
A composition utility patent focuses on the composition or mixture of different components. It can be made up of two or more different substances. The substances could be compounds, elements or even radicals and can be in any state of matter, solid, liquid, gas, etc.
A machine utility patent refers to machines that are part of our everyday lives. From washing machines to air purifiers and laptops, they have become a part of us, and we cannot function without them. They simplify our everyday tasks with the help of simple programming and never fail to make our lives easier.
How can one file for a utility patent?
One can head over to the United States Patent and Trademark Office (USPTO) in order to register a patent. The steps are as follows:
- Create a USPTO.gov account
- Download and fill out the forms for Patent Electronic Verification and Customer Number Verification, and after notarizing them, mail these original notarized documents to its HQ in Alexandria, Virginia.
- After receiving email from USPTO, you can now authenticate your account. After doing so, you can gain access to the Patent Center.
For further details in this regard, you can head to this website.
In case you want to file it offline by visiting the center, you can do so by having it delivered to headquarters in Alexandria, Virginia. For further details, visit here to learn more about it.
- https://www.uspto.gov/sites/default/files/documents/aia0015.pdf https://www.uspto.gov/sites/default/files/documents/sb0017.pdf
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