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What is Utility Patent: All You Need to Know

A utility patent is granted by the United States Patent and Trademark Office (USPTO) to protect the way an invention works or is used. It provides the patent owner with exclusive rights to make, use, sell, and import the invention for up to 20 years from the filing date. It also bars anyone else from making, using, selling, or importing your invention.

While you can file a utility patent yourself, gathering what you need to get a patent and preparing the application is a complex and time-consuming process. 

The USPTO rejects most utility patent applications, but hiring a patent attorney to prepare and file your application guarantees you will meet all of the requirements. Keep reading to learn how to file a utility patent.

How to Get a Utility Patent

To be granted a utility patent, your invention must be a “new and useful process, machine, manufacture, or composition of matter or any new and useful improvement,” and meet specific criteria, including “novelty, non-obviousness, and usefulness.” (35 U.S. Code § 101)

The utility patent application must meet specific legal requirements and be accompanied by detailed drawings, descriptions, and claims that define the scope of the invention.

A patent examiner at the USPTO then reviews the patent application. They 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 utility patent application is approved, the inventor or assignee will be granted exclusive rights 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.

Provisional Patent vs. Patent

Utility patents have two types of application processes:

  • provisional patent applications (PPA)
  • non-provisional patent applications (NPA)

The NPA, discussed above, is what you typically think of when filing for a patent. 

The PPA supersedes the utility patent application in order to secure an early filing date. It is much easier to file a PPA because it does not undergo an investigation by the USPTO, giving inventors time to protect their ideas while still refining the non-provisional application. 

Once a PPA is filed, you have one year to file a non-provisional utility patent application for your invention.

Top Reasons Why Utility Patent Applications Are 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

An invention must be new 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 also 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

Utility patents must include a written description that fully supports the claims made in the application. If the written description is insufficient or incomplete, the USPTO may reject the application.

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 Attorney Help You After a Patent Rejection?

Utility patent attorneys specialize in rejection and patent review and will work with you to find additional evidence to improve patent claims and amend your application.

Review the Application

If a patent examiner cites your application for double patenting or prior art, have an attorney review the prior utility patent application to determine whether it discloses the same or similar invention. If the prior application is irrelevant to your invention, you can argue that the rejection is mistaken.

Provide Additional Evidence

If your application is rejected on grounds of novelty, provide additional evidence or documentation to support the 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

Work with a patent attorney to amend the application’s claims to define the scope of the invention more precisely. By narrowing the claims to focus on your invention’s most unique and novel aspects, you may overcome the examiner’s objections and obtain a granted patent.

Request a Hearing

Request a hearing before the Patent Trial and Appeal Board (PTAB) to present arguments in favor of your invention’s patentability. At the hearing, your patent attorney can present evidence and argue in defense of the originality, non-obviousness, and usefulness of your invention.

Utility Patent Protection and Strategy From Expert Attorneys

If your utility patent application has been rejected, it is not the end of the road. Tatonetti IP has helped countless clients win their utility patent applications and more.

Contact us for guidance at any stage of the process. We are intellectual property attorneys specializing in patents, copyrights, and trademarks who understand the stringent requirements set forth by the USPTO and can help you protect your valuable intellectual property.

Schedule a consultation today to perfect your utility patent application.

Filing a Utility Patent: Frequently Asked Questions

What are the fees associated with filing a utility patent application?

The costs for filing a utility patent application can vary widely depending on several factors. For a non-provisional patent application, anticipate government filing fees ranging between a few hundred to a few thousand dollars, depending on entity status and whether expedited processing is requested. Additionally, you may need to budget for an intellectual property attorney, whose fees can vary based on the complexity of the invention.

How long does the utility patent application process typically take?

The utility patent application process can be lengthy, typically taking several years from initial filing to approval or rejection. On average, the process can take two to four years. However, factors like the backlog of applications at the USPTO and whether any objections or rejections are raised during the examination can prolong the process. Work with a patent lawyer to discuss any expedited processing options available.

What are the 4 eligibility requirements for a utility patent?

While filing a provisional patent application is often recommended, there are potential risks and downsides to consider. A major risk arises if the provisional application does not adequately disclose the invention’s details. Additionally, during the interim period between filing the PPA and NPA, the invention’s details may become publicly disclosed or commercially exploited, potentially impacting the novelty or patentability of the invention. Carefully assess whether filing a provisional patent application aligns with their overall patent strategy and seek guidance from a qualified patent attorney.

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