A utility patent protects the way an invention works or is used. It is granted to an inventor or assignee for a “new and useful process, machine, manufacture, or composition of matter or any new and useful improvement.” (35 U.S. Code § 101)
A utility patent is granted by the United States Patent and Trademark Office (USPTO) and provide the holder with the exclusive right to avert others from making, using, selling, or importing the invention for 20 years from the date of filing the patent application.
To be granted a utility patent, the invention must meet specific criteria, including “novelty, non-obviousness, and usefulness.”
The patent application must also meet specific legal requirements and be accompanied by detailed drawings, descriptions, and claims that define the scope of the invention.
Some examples of inventions that may be eligible for utility patents include:
- Articles of manufacture, such as products made from specific materials or configurations.
- Compositions of matter, such as chemical compounds or other substances with specific properties
- Machines, such as engines, tools, and other mechanical devices
- Processes, such as methods for manufacturing products or performing a particular task
A utility patent can be very valuable for inventors and companies, as they provide legal protection for their inventions and help prevent others from copying or using their ideas without permission. However, obtaining a utility patent can be a complex and time-consuming process, and it often requires the assistance of a patent attorney or agent to prepare and file the application.
In addition to meeting the legal requirements for patentability, a utility patent application must also include detailed drawings and descriptions of the invention and claims that define the scope of the invention and its protection. The patent application is then reviewed by a patent examiner at the USPTO, who will determine whether the invention meets the legal requirements for patentability and whether any prior art exists that could prevent the grant of a patent.
If the patent application is approved, the inventor or assignee will be granted a utility patent, giving them the exclusive right to make, use, and sell the invention for 20 years from the filing date. After that, the invention will enter the public domain and be used by anyone without restriction.
What Are the Most Common Reasons For A Patent Application To Be Rejected?
There are several common reasons why the United States Patent and Trademark Office (USPTO) may reject applications for a utility patent. Here are some of the most common reasons:
Lack of novelty
To be granted a utility patent, an invention must be new and not obvious to someone skilled in the relevant field. If the invention lacks novelty, meaning that it has already been disclosed or described in a prior publication or patent application, the USPTO may reject it.
Lack of non-obviousness
In addition to being new, an invention must be non-obvious to someone skilled in the relevant field. The USPTO may reject the application for a utility patent if the invention is a noticeable variation of existing technology.
Insufficient description
An application for a utility patent must include a detailed description of the invention, including drawings and specifications that enable someone skilled in the relevant field to make and use the invention. The USPTO may reject the application if the description is inadequate or incomplete.
Lack of utility
An invention must have some practical application or use to be eligible for a patent. If the USPTO determines that the invention has no practical use or cannot be used in some industry or field, the application for a utility patent may be rejected.
Improper format or filing
An application for a utility patent must be filed correctly and include all necessary documents and fees. If the application is not filed correctly, the USPTO may reject it.
Double patenting
The application may also be rejected if it is found to be seeking to patent the same invention or a substantially similar invention as a previously granted patent. This is known as double patenting, and it is generally not allowed.
Lack of written description
In addition to providing a detailed description of the invention, the application for a utility patent must also include a written description that fully supports the claims made in the application. The application may be rejected if the written description is insufficient or incomplete.
Inadequate enablement
The application for a utility patent must enable someone skilled in the relevant field to make and use the invention without undue experimentation. The application may be rejected if the application does not provide sufficient information to enable someone to do so.
Prior art
Prior art refers to any existing technology or information that could challenge an invention’s novelty or non-obviousness. If the USPTO finds prior art relevant to the invention, it may reject the application on those grounds.
How Can an Inventor Address a Rejection of a Utility Patent Application?
The inventor could work with their patent attorney to:
- Review the prior application for a utility patent cited by the examiner to determine whether it discloses the same or similar invention. If the inventor believes the prior application is irrelevant to their invention, they can argue that the rejection is mistaken.
- Provide additional evidence or documentation to support the novelty and non-obviousness of the invention. This might include laboratory data, experimental results, or expert opinions that demonstrate the uniqueness and usefulness of the invention.
- Amend the application’s claims to define the scope of the invention more precisely. By narrowing the claims to focus on the invention’s most unique and novel aspects, the inventor may overcome the examiner’s objections and obtain a granted patent.
- Request a hearing before the Patent Trial and Appeal Board (PTAB) to present their arguments in favor of the invention’s patentability. At the hearing, the inventor or attorney can make oral arguments and present evidence supporting their position.
