Utility Patents

The technology underlying a company’s competitive advantage is nothing less than a crown jewel. Thus, it should be protected accordingly.

The owner of a U.S. utility patent has the powerful right to exclude others from making, importing, using, selling, and even offering to sell the claimed invention in the U.S. This right becomes active when the patent issues, and lasts 20 years from the effective filing date of the utility patent application. It is a constitutionally-based right, granted by the government in return for the inventor’s public disclosure of the invention. According to the U.S. Congress, a patent may be obtained on “anything under the sun that is made by man.” However, the invention must satisfy the requisite statutory criteria.

In particular, the invention must be useful, novel, and non-obvious. Most inventions are found to be “useful” under U.S. patent law. Novelty essentially means that the invention cannot already be publicly known or used by others in this country. Nor can the invention be patented or otherwise published anywhere in the world. Non-obvious is the most difficult hurdle, as it tends to be a more subjective determination based on a perceived level of “ordinary skill” in the invention’s technology. Patent laws of other countries have similar requirements when international patent protection is appropriate.

The contents of utility patent must also pass muster. The description of the invention must enable those skilled in the field to practice the invention, and disclose the inventor’s best mode of practicing the invention. It must also convey with reasonable clarity to those skilled in the field that the inventor was in possession of the claimed invention at the time of filing.

Once a utility application is filed with the U.S. Patent Office, then all specimens of the invention, drawings, specifications, marketing literature, and product information can be labeled "patent pending" to indicate that patent protection is being sought.

Patents can be used offensively, defensively, or simply to build company image, and may be a key component of a robust business strategy. Other forms of intellectual property, including trademarks, copyrights, and trade secrets, may also be used to protect valuable company assets. Published applications and issued patents may be viewed, and more information obtained, on the patent office website at www.uspto.gov.

Additional Patent Information:

• Design Patents protect the ornamental shape or external design of an article of manufacture.
• A Primer on the Utility Patent Process in the United States. This is a narrative description of what a client might experience in working with a patent attorney to obtain a utility patent in the United States.
• Patent Screening Search for assessing patentability of an invention.
• Patent Opinion: The patent opinion concludes with its “opinion” as to the patentability of the invention based on the patent search results.
• Patent Plant: Plant patents are a relatively rare, specialized type of patent for protecting new and non-obvious species of plants.
• Patent Prosecution: Patent prosecution refers to the process of applying for a US patent and having the patent examined by the US Patent Office
• Patent Validity: The first step in determining the validity of a patent is to check whether the patent term has expired or the maintenance fees have not been paid.
• Provisional Applications for Patent: A provisional application for patent is a temporary application that offers a relatively quick and less expensive way (relative to a utility patent application) to officially file an invention disclosure with the U.S. patent office.
• Invention Disclosure Form for Utility/Provisional Patent
• Invention Disclosure Form for Design Patent