The utility patent: What is it and what does it protect?

When most people talk about patents, they are talking about utility patents. What is a utility patent? A good utility patent definition is "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof," which is how the U.S. Code defines an invention for which a patent may be obtained.

Utility patent applications seek to protect new machines, systems, and other useful inventions. A utility patent is among the most valuable forms of intellectual property, but it comes at a price. The utility patent cost can be enormous. Utility patents for simple inventions can cost a few thousand, with complex technologies costing tens of thousands.

How to get a utility patent

As you begin to describe your invention, break it down into a series of essential and nonessential parts. For example, your new mechanism to drive a 10-speed bicycle may contain most of the parts of a standard bicycle: the gears, the chain, and the pedals. However, it also contains a new design for a tensioner that is inspired from a chainsaw.

Conduct a utility patent search to see if anyone has ever patented or published a similar design. You will readily find most of the elements of a standard bicycle. The trick will be to find a bicycle that uses your new, chainsaw-inspired tensioner as well.

A patent search is critical before you file your patent. If you find a patent that uses the same tensioner, then you are going to have hard time getting a patent. It is better to find out before you go through the cost of filing a utility patent application than afterwards.

Filing a utility patent

Patents are teaching documents. The government grants inventors rights in their inventions so that inventors will tell the public how to use their inventions. A utility patent application has several formal requirements. It contains multiple sections, each with its own rules for formatting. It requires drawings or diagrams to explain how your invention works. These requirements help ensure the public learns how to use your invention.

This teaching requirement is well illustrated by the difference between utility and design patents:

• Design patents require only a drawing(s) of the design and limited text.
• Utility patents require a thorough explanation of how the invention works. The inventor should discuss alternative ways to make the invention and provide enough detail so that another person in the same technical field could readily reproduce the results.

In looking at a utility patent vs. design patent, it is clear how much more work goes into a utility patent.

Staking your claims

Inventors file patents to get issued claims. In return for teaching the public how to use the invention, the patent office issues the inventor the right to stop others from making, using, or selling the inventor's invention. Utility patents contain a series of numbered sentences that claim the invention. If another person makes, uses, or sells the exact thing described in a patent claim, then that person is infringing the inventor's patent.

The claims recite the essential elements of the invention. The patent examiner will argue with the inventor that the combination of elements in the patent claim must be both novel and non-obvious. Returning to the bicycle utility patent example, your bike chain invention will recite all the parts of a chain, the gears, and your chainsaw-inspired tensioner.

• Your invention is novel if all of these elements do not appear in any one published reference. To reject your invention as not novel, the examiner will have to find a patent, patent application, or other publication that includes all the elements of your invention: the bicycle, the chain, the gears, and the chainsaw tensioner.
• Your invention is non-obvious if all of these elements do not appear in any set of published references. This means that if the examiner finds half of the elements in one reference and half of the elements in another reference, then he can combine the two references and reject your invention.

For example, the examiner may not find a bicycle with your chainsaw-inspired tensioner, but he can find the tensioner on a chainsaw. The examiner can combine a bicycle patent along with a patent application for a new chainsaw—that includes the same tensioner—to reject your invention as obvious.

Unlike a rejection based on novelty, you can argue that no one would ever think to combine a chainsaw and a bicycle or that combining the two produces results no one would have anticipated.

Working around rejection

For a rejection based in novelty or obviousness, you can always amend your claims to get around the rejection.

For example, mounting the chainsaw tensioner onto a bicycle might require a particular kind of bracket. If you include the bracket in your claims, and if that bracket is not in the chainsaw patent or the bicycle patent, then you may get around the rejection. Just remember, the more things you put into your claims, the easier it will be for a competitor to get around your patent.

Utility patents are among some of the most valuable assets in the world. They give inventors the exclusive commercial rights to the latest technology, in exchange for which they also are difficult to write, expensive to get, and complicated to understand.

Ready to file a utility patent? LegalZoom can help you file a utility patent online easily and affordably. The process begins by completing a questionnaire and speaking with an expert patent attorney or agent. A technical illustrator will draft up to four pages of patent drawings. Your patent attorney will prepare and file your completed utility patent application with the USPTO.