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Utility patents cover inventions that produce a useful, tangible, concrete result and are filed under 35 U.S.C. 111. Examples include new drugs, new bacteria, new animals, new methods of transmission and anything that has the "hand of man" in its production. The term of a utility patent is usually 20 years from the earliest filing date.

CONDITIONS FOR PATENTABILITY

The purpose of examination it to make sure the patent application meets various conditions of "patentability." In the U.S., the invention must satisfy the "novelty" and "unobviousness" requirements of patent laws. In addition, utility inventions must also be in a "statutory class" and be "useful" (35 U.S.C. 101) and "enabled" (35 U.S.C. 112).

Requirements for a utility patent:

1. the invention must have utility (35 U.S.C. 101);
2. the invention must be novel (35 U.S.C. 102) and non-obvious (35 U.S.C. 103).
3. the application must enable the practice of the invention with sufficient written description and must disclose the best mode of practicing the invention (35 U.S.C. 112, 1st paragraph); and
4. the claims must be definite (35 U.S.C. 112, 2nd paragraph);

If the patent office believes that the requirements are met, the government will grant the inventor certain rights.

The concept of "utility" requires that an invention must have a patentable utility - it must perform some beneficial function as "intended", and that utility must be specific and credible. It is not a measure of how useful an invention is. It just requires the invention to have a tangible and concrete use.

To satisfy the "novelty" requirement, the invention must be novel. It must be different from what is already known in the "art" and must not have been publicly known or publicly used in the U.S., or described in a printed publication anywhere prior to the applicant's date of invention.

In addition to being novel, the invention must also be "non-obvious" to "one of skill in the art" at the time the invention was made. This is best shown by unexpected or surprising results or by showing improved or superior efficacy compared to previously known inventions or prior art.

Furthermore, the invention, as disclosed in the specification, must enable one to "make and use" the invention "over the full scope of the claims," and the specification must contain sufficient "written description" and reveal the "best mode" of practicing the invention. The disclosure or specification is not required to spell out what is already known to "one of skill in the art" through the "state of the art." In addition to these factors, the examiner considers other factors such as the "quantity of the experimentation necessary" and the "predictability of the art" in determining whether the claims are enabled by the specification as disclosed at the time of the invention.

The second paragraph of 35 U.S.C. 112 requires the claims to "particularly point out" and "distinctly claim" the subject matter of the invention. If the language used in the claims is not definite and clear, the examiner will reject the claims as being "indefinite" and appropriate amendments to the claims, frequently as suggested by the examiner, are necessary to satisfy this requirement.

GENERAL FORMATO OF A UTILITY PATENT APPLICATION

In general, an application contains a description of the invention and what the inventor "claims." The patent attorney prepares the patent application as specified by the U.S. Patent Office for all U.S. applications. The basic requirements of a non-provisional application include the following:

1. Specification that includes at least one claim
2. Drawings, if necessary
3. Oath or declaration
4. Fee

NOTE: A provisional patent application, however, does not need to have a claim or an oath/declaration, but does require authorization by the inventor.

1. Title of the invention,
2. Cross-reference to related applications,
3. Statement regarding federal funding
4. Reference to a "sequence listing", a table or a computer program listing appendix submitted on compact disc, and an incorporation-by-reference of the material on the compact disc
5. Background of the invention
1. Field of the invention
2. Description of related art
6. Brief summary of the invention
7. Brief description of drawings
8. Detailed description of the invention
9. Claims on a separate sheet
10. Abstract of the disclosure on a separate sheet
11. Drawings
12. Sequence listing, if on paper

DEADLINES AND DUE DATES TO KEEP IN MIND

In the U.S., the government grants the inventor "the right to exclude others from making, using, offering for sale, or selling" the invention. The U.S. patent system is based on the concept of "first to invent" (or "first to file" as generally referred to). By default, the application filing date is considered the date of invention, unless proven (or required to be proven in some cases) otherwise. The U.S. system is the most lenient in that it grants the inventors a one-year "grace period" to file for a patent after the date of "public disclosure." Most other foreign countries are not so lenient: If an applicant waits to file for a patent until after the invention was publicly disclosed, most of the "foreign patent rights" are lost. Some countries, such as Canada, also have a grace period to file for a patent after public disclosure.

Initially, a provisional patent application can be filed with the U.S. Patent Office, granting the applicants a twelve month period in which to file a non-provisional patent application. This allows the applicant to claim the filing date of the provisional application in the subsequent non-provisional patent application. After the twelve month period, if no non-provisional application was filed claiming priority under 35 U.S.C. 119(e) to the provisional application, the provisional application will automatically be considered abandoned and cannot be revived.

For other deadlines to be followed during the prosecution phase, please see the section General Flow of Patent Prosecution.

Once a patent application is allowed, an initial "issue fee" needs to be paid before the patent can be issued. Thereafter, a maintenance fee is due at 3.5 years, 7.5 years and 11. 5 years after issuance to keep the patent valid for the full term.

Patent for a Bannana Protective Device

Utility patents are by far the most common form of protection that OIPA & WSURF engage in; these cover devices, processes, materials and in some cases computer programs. Most generally, anything that has the "hand of man" in its production can be covered by a utility patent. The key questions are: is it already in the public domain? and will the patent have sufficient value to recover the investment associated with preparation and prosecution?