Utility Patent: Everything You Need to KnowPatent Law ResourcesStartup Law ResourcesIntellectual PropertyHow to Patent an IdeaProvisional PatentPatent PendingDesign PatentPlant PatentUtility Patent
Utility patents are the most common type of patent that is used to protect new machines, systems, and other inventions. It is typically used for any type of IP.7 min read
2. Utility Patents: What Are They?
3. Why Are Utility Patents Important?
4. Reasons to Consider Getting a Utility Patent
5. Reasons to Consider Not Getting a Utility Patent
6. Common Mistakes
8. Frequently Asked Questions
9. Steps to Apply for a Utility Patent
What Is a Utility Patent?
A utility patent is the most common type of patent. The United States Patent and Trademark Office (USPTO) gives patents for:
- Machines and devices;
- Manufacturing processes or business systems;
- Compositions of matter or chemical compounds; or
- Improvements on earlier patents
that are new, functional, and non-obvious.
Utility Patents: What Are They?
Utility patents make up about 90 percent of USPTO-approved patent applications and are among some of the most valuable patents in the world. Utility patents:
- May be electrical, mechanical, or chemical.
- Provide broad protection for intellectual property.
- Can protect product variations with only one patent.
By definition, utility patents protect functional and new inventions and systems. Claims in a utility patent recite the essential part of the invention. To qualify for a patent, a patent examiner must find that the invention meets the following requirements:
- Useful: The invention must have a purpose and work properly to do that function.
- Novel: The invention must be new. All of the claims that make an invention unique can't appear in an existing patent or in multiple existing patents that a reasonable person could combine. To reject your invention as not being novel, the patent examiner will have to find a patent, a patent application, or a publication that includes all elements of your invention.
- Nonobvious: The invention shouldn't be obvious to a reasonable person. If the invention combines claims from existing patents, it should argue that no one would think to do so or that combining them produces surprising results. If a patent examiner discovers that half of some elements exist in one reference and half exist in another reference, the examiner can combine the two references and reject your invention.
Keep in mind that the more items you put into your claims, the easier a competitor can get around your patent.
Why Are Utility Patents Important?
Inventors file patents to receive issued claims. Utility patents teach others and promote innovation. They describe how to make inventions or create systems. In exchange, the USPTO gives the patent holder the right to stop others from profiting from the invention.
Patent holders have exclusive rights to prevent others from selling, making, or using their inventions. They can also protect against the import of their inventions into the United States, which make utility patents incredibly valuable. Utility patents carry a series of numbered sentences that claim the invention. Those who make, sell, or use the exact product described in a patent claim may be sued for infringing the inventor's patent.
Utility patents differ from design patents, which cover a product or invention's appearance. They can cover all or part of an invention's look or ornament. Design patents:
- Don't protect an invention's function.
- Don't offer wide-ranging protection, since an inventor can design around them.
- Don't usually protect multiple variations of a product.
Utility patents also differ from plant patents, which cover new, asexually reproducible plants. These patents last for 20 years. Plant patents:
- Can protect hybrid plants or newly discovered seedlings.
- Prevent others from creating or profiting from the plant in question.
Reasons to Consider Getting a Utility Patent
- You want to license your patent. Getting a utility patent is a good idea even if you don't want to sell your invention. You can license your rights to manufacturers and earn money in the process.
- You want to improve how a product works. Your invention does not have to be completely new, but it can be an improvement on an existing product's function, such as an electric toaster. Any improvement must have a notable benefit for the user.
Reasons to Consider Not Getting a Utility Patent
- You need a design patent instead. A design patent protects an invention's appearance. This type of patent is easier, faster, and less expensive to file. The application only needs a drawing of the design and a short text description. You can usually get a design patent in one to two years.
- You don't plan to protect your patent. Filing a patent application doesn't automatically prevent others from using your invention. You must prevent others from infringing upon your rights through a cease-and-desist letter or a lawsuit.
You can't afford the cost. Utility patents cost at least a few hundred and up to several thousand dollars. Basic USPTO fees for filing and maintenance include:
Small Entity Fee
Utility Paper Filing Fee
Non-Electronic Filing Fee
Utility Electronic Filing Fee
Utility Search Fee
Utility Examination Fee
Utility Issue Fee
3 1/2-Year Maintenance Fee
7 1/2-Year Maintenance Fee
11 1/2-Year Maintenance Fee
- Not filing a provisional utility patent application. Since the United States is a first to file nation, you should file your patent application as soon as possible. The easiest way to do this goal is to file a provisional patent application as you develop your invention. The USPTO first offered provisional patent applications in 1995, which hold the applicant's place in line for one year and offer a priority filing date. These applications are much easier to file and don't need USPTO review. They can also help you market your product and get funding for the non-provisional application process.
- Not maintaining your patent. To keep your patent effective, you must maintain that patent. Your patent can end if the statutory period expires.
- Not protecting the look of your invention. If the appearance is important to your product's sales, consider a design patent. This type of patent can ensure that your product looks distinctive and can help drive consumer purchasing decisions.
No firm deadline exists to file a utility patent application. However, you should always file as early as possible to protect your invention or system.
Frequently Asked Questions
- How long does it take to get a utility patent? Getting a utility patent takes an average of two to three years.
- How long does a utility patent last? A utility patent lasts for 20 years after issue. You must pay maintenance filing fees at 3 1/2, 7 1/2, and 11 1/2 years to keep the patent active. In contrast, a design patent lasts for 15 years if you filed after May 12, 2015. A design patent does not require maintenance fees.
- How can you get patent-pending status? File a provisional patent to get patent-pending status. This filing also gives you some protection from other inventors.
- Can a provisional patent become a non-provisional patent? You must file a non-provisional patent application separately. A provisional patent does not automatically become non-provisional and expires after one year.
- Can you file a utility patent and a design patent for the same invention? Yes, if an invention's function and appearance are novel and non-obvious, you can get a utility and a design patent.
- How can you prove design patent infringement? An ordinary observer test can show whether another party has infringed upon a design patent. If an average person thinks a knockoff object is substantially the same as the product in a design patent, this situation would be infringement.
- Do I need an attorney to file a utility patent application? You can file an application on your own. However, hiring an attorney will improve your success rate and make the process easier. A lawyer can do complete patent searches, help you make a strong application, and respond to the USPTO for you. Since utility patents are complicated, expensive, and difficult to get, having a lawyer on your side is helpful.
How much do lawyers charge for patents? In addition to the USPTO fees, lawyers charge fees for their time and practice experience. Average fees include:
Board games, toothbrushes, flashlights
Power hand tools, cell phones
Basic RFID devices
Software systems, satellite technology
$15,000 and up
Steps to Apply for a Utility Patent
- Do a patent search. Use the USPTO's online patent databases to look for similar, pre-existing patents. You may need to break your invention into parts to look for examples of the essential aspects.
File a provisional patent application. This step is optional, but if you choose to file this application, file it before the non-provisional patent application.
- Title of Invention: The title should be short and specific.
- Background of the Invention: This part should discuss the field and provide context. It should also mention earlier patents or technology that your invention references.
- Specification: This section should include a written description of the invention and explain how to make and use the invention. A reasonably skilled person should be able to make and use the device after reading this section.
- Claims: Claims should be as specific as possible to prove novelty. Follow the USPTO's preferred language and phrasing to word and number this series of sentences correctly. If someone makes or sells the invention specified in your claims, you can claim infringement.
- Drawings: Drawings should be as detailed as possible. You can include several drawings from different angles to reveal many details. You can file the claims and drawings later (as of Dec. 18, 2013). However, you can't add new material to the application and must support what you have already included.
- Compile your utility patent application. Use the USPTO's online patent application system to submit your materials and pay the filing fee.
- Respond to the patent examiner. In most cases, your application will receive a rejection, which means it needs changes before approval. After you receive a notice from the patent examiner, make the necessary amendments. This response may include removing claims or changing wording in the description to make sure the invention is novel and non-obvious.
- Receive a Notice of Allowance. This notice means that the patent examiner has approved your patent.
- Pay the issue fee. To complete the patent application, you must pay the issue fee.
- Receive your patent. After paying the fee, you will receive an issued patent. This receipt usually happens within three months.
If you need help filing a utility patent application, you can post your job on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies such as Google, Menlo Ventures, and Airbnb.