An Overview of Utility Patents in the United States

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What is a utility patent?[1]

The definition of a utility patent is a patent that covers “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”[i] Utility patents are the most prevalent type of patent. As of 2016, the United States Patent and Trademark Office estimated that 90% of the issued patent documents are utility patents.[ii] To illustrate, a utility patent (or multiple patents) could be obtained claiming a new type of wheel for a car, including methods of using the wheel.

Who can apply for a patent?

Anyone with an invention—an inventor—may apply for a patent. Additionally, a person or entity to whom an inventor has assigned or is under an obligation to assign their invention, may apply for a patent, with certain exceptions. These persons or entities are known as assignees. While any inventor or assignee may draft a patent application and proceed before the Patent Office, it is advisable that such inventors or assignees retain a patent lawyer to assist with the drafting and/or prosecution of their application before the Patent Office.

What are the contents of a utility patent?

Generally, a utility patent comprises an abstract, drawings, a detailed specification, and the patent claims. The abstract provides a short statement summarizing the invention. The drawings (also known as figures) provide a visual representation of the invention and may include flow charts or diagrams. The specification typically provides the field of the invention, a background of the invention, a summary of the invention, a brief description of the drawings, and a description of the invention. Finally, the claims define the subject matter (or “metes and bounds”) of the invention. For a more detailed review of the contents of a utility patent, see Anatomy of a Patent.

How do you obtain a utility patent?

Individuals seeking utility patents obtain them following successful application to and examination by the United States Patent and Trademark Office (USPTO). An application for a utility patent typically includes the abstract, drawings, and specification that will eventually appear in the utility patent. The application will also include claims, which may be amended as the patent application is examined by a patent examiner during the patent prosecution process by the USPTO. On average, it takes almost two years from the date of application for a utility patent to issue, and typically involves several rounds of back-and-forth communications between the patent examiner and the applicant.[iii]

Does a utility patent give you the right to make your invention?

No. A commonly held misconception is that the owner of a utility patent is entitled to make, use, or sell the patented invention. A utility patent, however, only grants the right to exclude others from making, using, or selling their patented invention. While a patent owner may be able to practice their invention, they must first determine whether they have a freedom to operate in view of others’ patented inventions.

How long is a utility patent good for?

For utility patents filed after June 8, 1995, the patent term is twenty years from the date of filing of the earliest related patent application. Utility patents that were applied for on or before June 8, 1995, and that were in force on June 8, 1995, have a patent term of seventeen years from the date the patent was granted or twenty years from the date of filing of the earliest related patent application, whichever is longer. Utility patents that were applied for between 1836 and 1860 carried a maximum term of 21 years from issuance, and utility patents that were applied for between 1790 and 1835 carried a maximum term of 14 years from issuance.

The actual term of a patent may be shorter or longer than the terms provided above. For example, a patent applicant may file a terminal disclaimer to overcome a “double patenting” rejection during patent prosecution. Terminal disclaimers generally arise when an applicant has an issued patent and is seeking a subsequent application on the same invention with minor improvements. Terminal disclaimers limit the term of a later-granted patent to the expiration of the earlier patent.

Patent terms may also be extended by Patent Term Adjustment (PTA, 35 U.S.C. § 154) or Patent Term Extension (PTE, 35 U.S.C. § 156). PTA extends the term of a utility patent in the event the USPTO delays the examination process beyond certain statutory requirements. PTA is calculated and awarded by the USPTO automatically and printed on the face of an issued utility patent. On the other hand, PTE extends the term of a utility patent for commercialization delays due to premarket regulatory review, such as approvals associated with the Food and Drug Administration. Unlike PTA, PTE is not automatically calculated and awarded by the USPTO and must be applied for by the patent applicant. For a more comprehensive review of PTE, see Introduction to Patent Term Extensions.

What should you do after obtaining a utility patent?

Once you have obtained a utility patent, you must pay maintenance fees to maintain the patent during its term. Maintenance fees are not due during the process of obtaining a patent. Rather, they are triggered only after the patent issues.

Under 35 U.S.C. § 41(b), maintenance fees are due on issued utility patents at 3.5 years after grant, 7.5 years after grant, and 11.5 years after grant. Maintenance fees may be paid at most six months in advance of the due date. A patent owner who fails to pay by the deadline has a grace period of six months to pay thereafter. The patent will expire at the end of the six-month grace period. It is possible, however, to revive a patent by payment of maintenance fees after the six-month grace period has expired if the delay is shown to have been unintentional. For a more comprehensive review of maintenance fees, see Everything You Need to Know About Patent Maintenance Fees.

Next in this series, we will provide an overview of design patents.

[1] This is a follow-up blog post in a series reviewing the different types of patents. See https://www.fr.com/different-types-of-patents/. Later blog posts will review design patents and plant patents.

[i] 35 U.S.C. § 101.

[ii] See https://www.uspto.gov/web/offices/ac/ido/oeip/taf/data/patdesc.htm

[iii] https://www.uspto.gov/dashboard/patents/pendency.html

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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