What Is a Utility Patent? How To Get a Utility Patent (2024) – Shopify

Imagine you own a small business that invents an original product. If a copycat comes along and undercuts you, all your hard work goes down the drain and you probably won’t bother trying to invent anything else. Intellectual property law—and patent law in particular—can protect you and mean the difference between profit and a wipeout.

Learn more about the most common kind of patent, the utility patent, what it covers, and what you need to do to obtain one.

What is a utility patent?

Utility patents, sometimes known as patents for inventions, are the most common type of patent in the United States. They cover four general categories of useful and novel inventions: machines, processes, compositions of matter, and articles of manufacture.

Specifically, a utility patent protects how people use an invention and how it functions. For a period of 20 years, it gives the patent holder the exclusive commercial rights to directly sell or license the invention. Patent protection can encourage innovation, giving inventors time and space in the market to profit from their efforts without having to compete with cheap knockoffs.

Utility patent qualifications

Not every new invention is worthy of utility patent protection, says Karan Jhurani, an Atlanta-based patent attorney with the law firm Fish & Richardson. “Something might be inventive, but it might not have a practical use,” he says. To justify utility patent protection, Karan says, an invention can’t just do “something for the sake of doing it.” Under 35 U.S.C. § 101 (the section of the US Code governing patentability of inventions), the key element is “usefulness.”

In addition to being useful, your invention also must be new, or otherwise not known to the public, and non-obvious. Per the United States Patent and Trademark Office (USPTO), if “one reasonably skilled” in the field of your invention could easily formulate a similar invention, it is probably too obvious for utility patent protection. If your invention meets these three formal requirements in addition to falling within one of the four eligible categories (machines, processes, compositions of matter, and articles of manufacture), the USPTO will grant the patent.

What can a utility patent cover?

To qualify for utility patent protection, your invention must fall into one of these four statutorily eligible categories:

Machines

A machine is generally anything composed of moving parts, like engines, as well as computers. An exercise bike, a vacuum cleaner, and a mobile phone would all qualify as machines under patent law.

Compositions of matter

“Compositions of matter” typically refers to pharmaceuticals, but it can also cover new chemical compounds that serve as the basis for artificial materials like synthetic polymers such as nylon.

Processes

A patentable process can be a software application, a digital display, a proprietary technical or industrial process, or even an individual part or subpart included in a machine like a new suction system for a vacuum cleaner or an image processor in a digital camera.

Articles of manufacture

“Articles of manufacture” refers to man-made items that aren’t a sum of various mechanical parts. In essence, an article of manufacture is any product that can’t be designated as a machine, such as an item of clothing, a storage container, or a piece of cookware.

Utility patent vs. design patent: What’s the difference?

Whereas a utility patent protects a product’s function, a design patent is a legally separate protection of an invention’s appearance. Design patents protect visual elements like shape, configuration, and surface decoration. In patent law, these are known as an invention’s ornamental appearance.

Utility and design patents also differ in duration. A design patent expires 15 years after the patent filing date, while a utility patent expires after 20 years.

“Sometimes, overlapping protections are available for the same product,” Karan says. An inventor can obtain both a utility patent to protect an invention’s function and a simultaneous design patent to protect its ornamental design.

How do you get a utility patent?

1. Research
2. Prepare the application
3. Decide on provisional or non-provisional
4. Submit application
5. Pay fees

To obtain a utility patent, you must apply with the USPTO. Here’s how to go about it:

1. Research

Before filing a utility application, conduct a thorough utility patent search to see if anyone has ever patented or otherwise produced a similar invention. You can do this on your own, but it’s helpful to hire an experienced patent attorney to undertake all the necessary due diligence.

“We’ll do all sorts of diligence, competitive diligence, market diligence, a freedom to operate study,” Karan says. Based on such diligence, a patent attorney can generally tell you whether pursuing patent protection is even worth the cost or trouble, and if something similar already exists in the marketplace that would disqualify your application.

2. Prepare the application

Once the patent search is complete and you’ve concluded your invention is initially patentable, an attorney or patent agent (a licensed non-attorney patent professional) can help you prepare the application. Utility patent applications require diagrams to illustrate how the invention works. They also require detailed descriptions of how it works, sometimes down to the part and subpart level. This is another instance in which utility patents differ from design patents: Design patent applications generally require only drawings of the design and brief descriptions, while utility patent applications require a written description that’s detailed enough for another person in the same technical field to readily recreate the invention.

“You’re essentially enabling someone of skill in the art to go and make this invention by understanding your patent drawings and following your written descriptions,” Karan says. According to Karan, it can make sense to hire a patent draftsperson or technical illustrator to capture the intricacies of the invention while also controlling costs.

3. Decide on provisional or non-provisional

You can make a provisional patent application or a final, non-provisional patent application. The provisional patent application is for inventions still in development, whereas the non-provisional patent application is for inventions that are ready for market. The purpose of a provisional application is to preserve an earlier filing date for you, which, in the event of patent litigation, can be an important piece of evidence in proving who came up with the idea first.

4. Submit application

Once the application is complete, the attorney or agent will submit it to the USPTO on your behalf. Based on the type of invention, the USPTO will assign the application to a patent examiner with the appropriate technical background. Patent examiners review applications, conduct their own patent searches on behalf of the USPTO, and, if necessary, make queries or objections about what you claim the invention does. You must adequately respond to these for the patent application to proceed. An attorney or agent will usually do this on your behalf, in a process known as patent prosecution.

“Prosecutors work with the patent office throughout the application process to get the application allowed, at which point it becomes a patent,” Karan explains.

5. Pay fees

Throughout the utility patent application process, you will pay a variety of fees, including a USPTO filing fee and a separate patent examination fee. These fees are usually included in what you pay a law firm prosecuting the patent on your behalf. If the USPTO grants a utility patent, you also will pay an issuing fee, as well as a series of maintenance fees during the course of its 20-year term.