Updated November 18, 2020:

What Are Utility Patent Requirements

To meet utility patent requirements, inventions must be novel, not obvious, statutory, and useful. They must also meet the United States Patent and Trademark Office's written description, enablement, and best mode requirements. Utility patent requirements are stiffer than other types of patents, but they also offer the strongest protection. Inventors who hold a utility patent can stop other people and companies from making, using, importing, and selling their inventions.

Meeting the Novelty Requirement

An invention is novel if it's different from other products in the marketplace, which are known as prior art. Prior art includes:

  • Publications and patents published before anyone developed the invention
  • Some patent applications filed before the inventor filed a patent
  • An invention that has an overseas patent

If the invention has all the same features as another product, it is not novel.

Meeting the Statutory Requirement (Promotion Before Approval)

An application may get rejected if the inventor shared information about the invention before filing a patent application. Before filing, it can't be:

  • Known to the public
  • Described in any print publication
  • Described in another published patent application or issued patent.

Under the revised patent requirements of the 2013 America Invents Act, it's acceptable for an inventor, person, or business to file for a patent within 12 months of sharing information about the invention. Anyone who waits longer than that cannot ever get a patent for that invention.

Many other countries do not have this rule. Applying before disclosure is the best way to get patents in the United States and abroad. If this isn't possible, you should speak with a patent attorney who knows about experimental invention use.

Meeting the Statutory Requirement (Types of Invention)

To meet the statutory requirement, inventions must fall under one of the categories outlined in Section 101 of the Patent Act. It states that people may get a patent for:

  • Processes: a means of getting a result through steps concerning physical or chemical interactions
  • Machines: devices that carry out a set task
  • Articles of manufacture: single objects without movable parts
  • Compositions of the matter: mixtures of chemicals or other materials

Some patentable inventions include:

  • Business procedures and methods
  • Machines and electronics
  • Fabrics and fabric designs
  • Sporting goods
  • Medicines
  • Computer hardware
  • Computer software that has "useful, concrete, and tangible" results
  • Man-made bacteria
  • Identified and isolated human genes

Here are some things that would fail the statutory requirement:

  • Data structures claimed without a computer or computer-readable media
  • Musical or literary works
  • Electromagnetic waves or signals
  • Software not connected to a process or physical machine

Courts can also declare "exceptions" to patentable subjects, such as:

  • Abstract ideas (this is important for software)
  • Laws of nature
  • Natural phenomenon

Meeting the Non-Obviousness Requirement

The Patent Act of 1952 made non-obviousness a requirement for getting a utility patent. An invention must be better than past inventions in a way that isn't clear to other experts in the field. The technology and ideas behind it must come from real skill and innovation.

USPTO examiners don't always agree about what is or aren't non-obvious. To make a decision, they often look at other published patent documents and other prior art. But this doesn't always work. One patent examiner may look at an invention and decide that anyone could have thought of it. Another examiner may look at the same thing and decide that it's clever.

If the examiners find that the product is basically just two different things mixed into something new, they likely won't accept it. A good patent attorney will help the inventor by saying that nobody else had ever thought to do that.

The examiner may also think about other factors. If the invention is more popular than similar products, it may count as being non-obvious because other inventors aren't doing as well. It's also likely that an invention is non-obvious if it has been a long time since the other products first came out.

Meeting the Utility Requirement

An invention must be useful to satisfy the utility requirement. Only utility patents need to follow this rule. A useful invention works the way its inventor claims it does, and it's clear or certain that it's useful for an exact purpose. Inventions must meet two types of utility:

  • Specific Utility: this relates specifically to the invention and how well it works compared to others in its category.
  • Substantial Utility: this utility must be real and instantly help the public.

In the past, inventions also needed moral utility, but this is less important now.

Although you don't need to do this, adding a utility statement to your patent application can help you prove to the examiner that your invention meets the utility requirements.

Reasons an Invention Could Fail the Utility Requirements

  • The invention's utility isn't obvious. The applicant might not give enough information to help the examiner see how useful the invention is.
  • The claims of usefulness aren't credible. If an invention claims to do impossible tasks, it won't get patent approval. Patent applications are rarely rejected on these grounds because claims must be believed until they're proven to be false.
  • It's an inoperative invention. Inoperative inventions don't work at all. An invention could still meet the utility requirement if it works poorly or only half as well as it should. It's not easy to prove whether biological and chemical inventions work. For example, a type of medicine may intend to treat a disease, but nobody can test it on a large group of people before it's patented.

Meeting the Written Description, Enablement, and Best Mode Requirements

A patent application needs a specification to prove three requirements:

  • Written description: the inventor can write about the invention in detail to show he or she made it.
  • Enablement: the inventor's description needs to be detailed enough so an equally skilled person can make or use it without too much experimentation.
  • Best mode: the inventor can show what he or she believes is the best way to use the invention.

The specification must explain in detailed, clear language:

  • What the invention is and its attributions using an exact legal definition
  • How it was made
  • How to use it. Test data or hypothetical examples could show this.

Chemical and metallurgical invention applications often show the experimental data because it helps to describe the invention, including its process parameters (time, temperature, pressure etc.) and narrower preferred ranges. It may also have data that shows how well the invention works compared to prior art.

This written material should support any claims the inventor makes in the patent.

Frequently Asked Questions

  • Who can help me decide whether my invention is patentable?

A patent expert can help you decide if it's worth it to spend your time and money on a utility patent. The first thing you should do is get a professional patent search. Next, ask a patent attorney to study the results. Following these two steps is less costly than getting a utility patent.

  • Should my patent application include crude versions of my invention?

Your application should have any plan you had that would have worked, even if it is crude.

Including all versions of your work helps to protect your intellectual property. Otherwise, someone else could patent an invention that's similar to your early works. Even if the product is cheaper and not as great as yours, it could become your competition. People might even wonder if your product is worth buying.

You don't need to personally use each part of the patent. You may even decide to license your earlier versions to make extra money while you focus on the latest version.

  • Are there any other types of patents?

There are three types of U.S. patents. Utility patents are the most common.

There are also design patents which protect the way something looks. These are non-functional.

Plant patents protect new plant discoveries, including asexually reproduced plants and sexually reproduced seeds.

  • How long does a patent protect my invention for?

A utility patent protects your invention for 20 years from the date of filing, so long as you pay the maintenance fees. If your invention is a drug, medical device, or additive, you can get a 5-year extension. Related patent filings and the processing time can change how long the patent lasts. Before the Agreement on Trade-Related Aspects of Intellectual Property, utility patents had a shorter 17-year term.

Design patents have a shorter term of 14 years from the date of filing. Plant patents offer protection for 17 years.

A provisional patent is a 12-month patent that gives an invention "patent pending" status. The inventor must apply for a non-provisional patent within that 12-month period or the patent is dropped. An inventor may also apply for a provisional patent before getting a non-provisional patent because:

  • It protects while buying time. During the 12 months, inventors may continue to work on their product, test its commercial potential, or try to raise money.
  • It's cheaper. Under U.S. intellectual property law dating back to 8, June 1995, provisional patents are easier to pay for than non-provisional patents. Many inventors don't have the money to pay for a patent right away. The USPTO filing fee generally costs between $65 and $260, and there is a $50 processing fee.

A person or company may file a provisional patent application up to 12 months after an invention is first sold, used publicly, or written about. It should have:

  • A cover sheet with:
    • The names and addresses of all inventors
    • The invention's name
    • The attorney's name (if there is one)
    • The U.S. government agency interested in the application
    • A statement that this is a provisional patent application
  • A detailed written description
  • Drawings of the invention and its function
  • The filing fee

Provisional patent application forms are available through the USPTO website.

  • How do I apply for a utility patent?
    • Complete a patent application. This will contain:
      • An abstract that summarizes your invention
      • A descriptive specification, including a summary of the invention summary and sketches of the concept, embodiments, variations on these, and earlier technology
      • One or more numbered claims at the end of the specification
      • A declaration that the inventor was the invention's original creator
      • Filing fees
    • Submit the application to The United States Patent and Trademark Office (USPTO). This body grants, issues, and monitors all U.S. patents. Once you've filed your application, prosecution begins.
    • Wait for a USPTO examiner to study your application and compare it to prior art.
    • Receive a response from the USPTO. This could be:
      • Approval and a patent
      • A rejection or some or all of the claims
      • An objection which indicates a problem with the application
    • Decide what to do next. If you weren't successful, you should consider the reasons given by the examiner when planning your next move. You could give up your patent or choose to try again by appealing, either on your own or with the help of a patent attorney. On a second rejection, you can appeal to the Board of Patent Appeals and Interferences. If you're still rejected, you could take your case to the United States Court of Appeals for the Federal Circuit or pursue a civil action under 35 U.S.C. § 145 against the Director in the U.S. District Court for the District of Columbia.

It usually takes an inventor two to five years to get a utility patent.

  • What are the different types of utility patent applications?
    • Direct filed application: the first application filed for an invention.
    • From a provisional application: an application filed within a year of filing a provisional application.
    • From a foreign application: an application filed after filing an international patent application.
    • As a continuation application: a second application related to a first application not yet granted or abandoned.
    • As a divisional application: a second application made because the USPTO claimed your first application concerned two inventions.
    • As a continuation-in-part (CIP) application: a second application with a specification that incorporates the first application's specification and new material.
    • As a national-stage application (or 371 application): a national phase utility patent application filed after filing a Patent Cooperation Treaty application.
  • Can I sell my invention once I secure a utility patent?

A utility patent is a good first step, but it doesn't mean that you can sell the invention. It only makes sure your competitors can't make, use, or sell your invention. After securing a patent, ask an attorney to conduct a freedom-to-operate analysis to check if you can sell your product.

  • What can I do if someone infringes on my patent?

You can bring a lawsuit against any person or business that doesn't obey your copyright. The accused may try to argue that your trademark hasn't been infringed or that your patent isn't valid or true. According to the Patent Act, all patents are assumed to hold true, so the burden of proof is on the accused. It doesn't matter if the person or business didn't know about your patent or feels like he or she made the invention separate from yours.

  • What is the exhaustion doctrine?

The exhaustion doctrine states a patentee can get just one royalty for each patented device. It's meant to stop patentees from collecting too many royalty payments for a single invention. The 2008 case of Quanta Computers v. LG Electronics challenged this doctrine, but it could not change the rule.

  • I'm not ready to file a patent yet. How can I make sure my collaborators don't steal it?

You could get all third-parties to sign a non-disclosure agreement (NDA) before showing your invention's details. This is a legal promise that the other person won't share information about your invention with others or make money from it.

  • I'm not sure if I want an international patent. How long do I have to decide?

Under 1975 amendments to the Patent Act, you have up to 30 months after filing your U.S. patent application before beginning prosecution in another country. This is part of the Patent Cooperation Treaty, which gives you the time you need to judge your invention's technical value and how likely it is to succeed in international markets.

If you aren't sure if your invention meets the utility patent requirements, speak to a patent attorney. Legal matters are always best left to trained professionals. You can post your utility patent needs or other legal needs and get free custom quotes from the top 5% of lawyers with an average of 14 years of experience.