What Is a Utility Patent and What Does It Protect?

What is a utility patent?

When most people talk about patents, they're talking about utility patents. Also referred to as "patents for invention," utility patents are the most common type of patent granted by the USPTO.

According to the U.S. Code, "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement [of the above]" is eligible for utility patent protection. Put simply, a utility patent protects the functional aspects of an invention, such as a product or processes. However, the invention must be novel, non-obvious, and useful.

Utility patents cover the following categories of innovation.

• Machines: an invention using mechanical power and has moving parts, such as a clock or an engine.
• Articles of manufacture: a tangible and man-made item with few or no moving parts, such as a screwdriver or bolt.
• Processes: a series of purposeful actions or operations, such as software or a method of doing business.
• Compositions of matter: compounds and mixtures that make up a substance, such as pharmaceuticals or fiberglass.

How to get a utility patent

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.

While utility patents give inventors the exclusive commercial rights to the latest technology, they're also difficult to write, expensive to get, and complicated to understand. Here's how it works.

Step 1: Conduct a patent search

First, conduct a utility patent search to see if anyone has ever patented or published a similar design. A patent search is critical before you file your application. If you find a patent that's too similar to your invention, you're going to have a hard time getting a patent examiner to approve your application. It's better to find out before you go through the cost of filing.

Note: Patent examiners will also conduct their own search when reviewing your application. 

Step 2: Collect documentation

Utility patents require detailed drawings and descriptions of your invention as well as claims on the scope of the patent protection. 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.

As you begin to describe your invention, break it down into a series of essential and nonessential parts. Distinguish it from other inventions or—if your patent is for an improvement on an old invention—distinguish it from the old parts. Completely describe the process, machine, manufacture, composition of matter, or improvement invented. Then, detail how best to carry out the invention.

Step 3: Complete an application

Once you have the necessary documentation, submit a nonprovisional utility patent application through the USPTO. The easiest and most affordable option is to file online rather than by mail. Start by creating an online account with the USPTO. Then, fill out the following forms.

1. Application transmittal form: identifies the documents you'll submit with your patent application.
2. Fee transmittal form: calculates the required fees. You can pay these online instead when you submit your application.
3. Application data sheet: summarizes the key details of your application. You can also generate this information if you file online rather than by mail.
4. Specification: provides a detailed description of your invention, including its title, how to make and use it, and the scope of its protection.
5. Drawings: shows all of the features of the invention specified in the claim, if necessary to understand the subject matter.
6. Executed oath or declaration: a formal statement of belief that you're the inventor of the claimed invention and that you either completed the application or authorized its completion.

LegalZoom also has a utility patent registration service that can guide you through the process.

Step 4: Undergo review

Once you or your patent attorney submits your application, a group of examiners from the appropriate technology center will review your application to determine its patentability. Essentially, they're examining if your claimed invention is new, useful, and non-obvious, and if it complies with legal requirements. If everything checks out, you'll receive your patent!

If your application is missing any important information, you still have an opportunity to communicate with the examiners via an official notice from the USPTO. Make sure to send the missing information by the deadline listed on your notice so that they can proceed with the review.

Again, if the examiners find your application insufficient, you'll receive an official correspondence explaining why it was rejected. At this stage, you still have an opportunity to amend your application or argue against the examiner's reasoning. If you're able to prove your case, they'll publish your patent. If not, you still have two more chances to appeal through the "Final Action" and subsequent "Patent Trial."

Step 5: Receive your patent

If your application successfully makes it through the examination, you or your attorney will receive a fee for issuing the patent and (in some cases) for publishing the application. Pay these fees within three months so that the USPTO can issue your patent. You’re officially a patent owner, congratulations!

This is just a basic overview of the process, which can be more nuanced depending on the specifics of your invention. A patent attorney can offer more tailored advice.

How much does it cost to get a utility patent?

While a utility patent is among the most valuable forms of intellectual property, the cost can be enormous. Utility patents for simple inventions can cost a few thousand, with complex technologies costing tens of thousands. Individuals or smaller organizations may pay less depending on their income and number of previous patent applications.

That said, protecting your invention can save you much more in the long run. There's a reason around 90% of recent patent documents issued by the USPTO have been utility patents.

Here's a look at the basic initial costs.

• For a standard entity: around $3,000 or more 
• For a small entity: around $1,000 or more
• For a micro entity: around $650 or more

Additional costs depend on multiple factors such as late fees, the size of the application, and the need for translations. For a more detailed breakdown, read this article on the cost of patent applications. 

How long do utility patents last?

Once approved, a utility patent prohibits others from making, using, or selling your invention (without permission) for up to twenty years from the application filing date. That said, you may need to pay maintenance fees after 3.5, 7.5, and 11.5 years to keep your claimed invention patented.

Utility patent vs. design patent

The United States Patent and Trademark Office (USPTO) recognizes three main types of patents: utility, design, and plant. The essential difference between utility and design patents is that a utility patent protects the functional aspects of an invention, while a design patent protects the ornamental design.

In other words, a utility patent differs from a design patent in that it must be useful, where a design patent cannot be useful. New design patents offer protection for up to fifteen years from the date of grant and don't require maintenance fees. 

Pros and cons of obtaining a utility patent

A utility patent offers undeniable advantages to those who can obtain them, but applying for, maintaining, and enforcing them can be challenging and costly.

Pros

• Exclusive rights. Patent protection prohibits others from making, using, selling or importing your invention without permission.
• Competitive advantage. A utility patent enhances the credibility of your businesses, attracting investors and potential customers.
• Additional revenue streams. Patent owners can license use of their invention in exchange for royalties or other fees.
• Legal protection. Claims from patent applications can provide a legal framework to pursue infringement cases.

Cons

• Costly. Applying for and enforcing your patent can be time-consuming and expensive.
• Complex. Proving the invention meets all patentability requirements can be challenging, potentially requiring a strategic approach.
• Possible Infringement. ​Even if you have a patent for your invention, it's your responsibility to challenge infringers in court. 

Protect your patent with LegalZoom

If you believe you have an invention that's eligible for a patent but you're daunted by the process, LegalZoom can help. Our utility patent registration service is broken up into two steps to simplify the process.

First, you'll meet with a USPTO-registered patent attorney or agent on the phone for an initial consultation. A technical illustrator will create professional drawings based on your description and sketches, and you'll have the option to include a search for prior art (previously published patents and applications in your field).

Then, you'll meet with your attorney or agent for a follow-up consultation. They'll work with you to complete your application and then submit it online with the USPTO. You may find it easier to start and complete your application with someone experienced guiding you through the process.

FAQs

Can I file a provisional utility patent first?

Yes, in fact, there are several benefits to filing a provisional application first. For example, filing a provisional application allows you to claim "patent pending" status. Doing so can help you secure priority over subsequent applications and allow you to extend your protection by discouraging infringement while you prepare a nonprovisional application.   

How long does it take to get a utility patent approved?

Utility patent applications take an average of 26 months from the filing date to the date the application has reached final disposition (approved or dismissed). This time frame includes waiting for and replying to any official notices from the USPTO.

Can I sell or license a utility patent?

Yes, you can sell or license a utility patent during the 20-year period that you have exclusive rights to your invention. 

Do I need a lawyer to file a utility patent?

No, you don't need to hire a lawyer to file a utility patent. However, the USPTO highly recommends that you do seek legal assistance when preparing your application due to its various complexities. 

Joe Runge, Esq. contributed to this article