Utility Patent
What Is a Utility Patent?
A utility patent is a patent that covers the creation of a new or improved—and useful—product, process, or machine. A utility patent, also known as a “patent for invention,” prohibits other individuals or companies from making, using, or selling the invention without authorization. When most people refer to a patent, they are most likely referring to a utility patent.
Understanding Utility Patents
Utility patents are very valuable assets because they give inventors exclusive commercial rights to producing and utilizing the latest technology. In turn, utility patents are difficult to obtain. For one, they are hard to write, the process may be time consuming and expensive to undertake, and their complexity may make them difficult to understand.
Utility patents cover the creation of a new or improved—and useful—product, process, or machine and give its inventor exclusive commercial rights to it for 20 years.
The nature of a utility patent is covered in Title 35, Part II, Chapter 10, Subsection 101 of the United States Code, which defines it as any invention for which a patent may be obtained. It reads: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
Utility patents are issued by the U.S. Patent and Trademark Office (USPTO) and last for up to 20 years. However, the patent holder may have to pay maintenance feesover that time period. Individuals who want to search whether a patent for an idea they have already exists can use the USPTO’s patent search feature. Once a utility patent has been issued, inventors have the right to stop others from manufacturing, using, or selling their invention.
For many, the first step in obtaining a utility patent, aside from a unique idea, is enlisting a patent attorney or agent. They can guide an inventor through the complex utility patent filing process. The next step may be hiring a technical illustrator to draft patent drawings. When all the pieces are compiled, a filing may be made. Depending on the complexity of the invention, filing costs can range from a few thousand dollars to tens of thousands of dollars.
Utility Patents vs. Other Patents
A product protected by a utility patent may also obtain a design patent, which safeguards its unique visual elements and requires only drawings of a design accompanied by limited text. Design patents last for 14 years from the date of filing and can be gotten on their own. To get both a utility patent and a design patent, remember that the invention must be useful and serve some practical purpose, not just decoration.
A third type of patent available is called a plant patent, and it is acquired by someone who has discovered or created a new variety of plant. It lasts 20 years from the date of filing and requires no maintenance fees. Plant patents are considerably fewer than utility or design patents.
Examples of Utility Patents
Utility patents, the most common type issued by the USPTO, apply to a broad range of inventions, including:
- Machines (e.g. something composed of moving parts, such as engines or computers)
- Articles of manufacture (e.g. brooms, candleholders)
- Processes (e.g. business processes, software)
- Compositions of matter (e.g. pharmaceuticals)
According to the USPTO, more than 90% of all patents granted are utility patents.
1502 Definition of a Design [R-07.2015]
In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). “[35 U.S.C.] 171 refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
The design for an article consists of the visual characteristics embodied in or applied to an article.
Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.
Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.
1502.01 Distinction Between Design and Utility Patents [R-07.2015]
In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.
While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics.
Some of the more common differences between design and utility patents are summarized below:
- (A) The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the U.S. filing date; or if the application contains a specific reference to an earlier application under 35 U.S.C. 120, 121, 365(c), or 386(c), 20 years from the earliest effective U.S. filing date, while the term of a design patent is 15 years measured from the date of grant, if the design application was filed on or after May 13, 2015 (or 14 years if filed before May 13, 2015). (See 35 U.S.C. 173 as amended under section 102 of the Patent Law Treaties Implementation Act, 126 Stat. at 1531-32).
- (B) Maintenance fees are required for utility patents (see 37 CFR 1.20), while no maintenance fees are required for design patents.
- (C) Design patent applications include only a single claim, while utility patent applications can have multiple claims.
- (D) Restriction between plural, distinct inventions is discretionary on the part of the examiner in utility patent applications (see MPEP § 803), while it is mandatory in design patent applications (see MPEP § 1504.05).
- (E) An international application designating various countries may be filed for utility patents under the Patent Cooperation Treaty (PCT), whereas an international design application designating various countries may be filed for design protection under the Hague Agreement.See MPEP Chapter 2900 for international design applications.
- (F) Foreign priority under 35 U.S.C. 119(a)-(d) can be obtained for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications (see 35 U.S.C. 172).
- (G) Utility patent applications may claim the benefit of a provisional application under 35 U.S.C. 119(e) whereas design patent applications may not. See 35 U.S.C. 172 and 37 CFR 1.78(a)(4) .
- (H) A Request for Continued Examination (RCE) under 37 CFR 1.114 may only be filed in utility and plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, while RCE is not available for design applications (see 37 CFR 1.114(e)).
- (I) Continued prosecution application (CPA) practice under 37 CFR 1.53(d) is only available for design applications filed under 35 U.S.C. chapter 16 (see 37 CFR 1.53(d)(1)).
- (J) Utility patent applications filed on or after November 29, 2000 are subject to application publication under 35 U.S.C. 122(b)(1)(A), whereas design applications filed under 35 U.S.C. chapter 16 are not subject to application publication (see 35 U.S.C. 122(b)(2)).
Other distinctions between design and utility patent practice are detailed in this chapter and MPEP Chapter 2900 for international design applications. Unless otherwise provided, the rules for applications for utility patents are equally applicable to applications for design patents (35 U.S.C. 171 and 37 CFR 1.151 and 1.1061).
Utility Patent Cost: Everything You Need to Know
Patent Law ResourcesUtility Patent
The utility patent lasts 20 years from the date of the original application filing and includes maintenance fees that are billed every few years.10 min read
The utility patent cost includes a $540 patent search fee, a $220 examination fee, a $330 application filing fee, and possibly a patent lawyer's legal fees which can exceed $10,000. The utility patent lasts 20 years from the date of the original application filing and includes maintenance fees that are billed every few years as follows:
3.5 years - $980
7.5 years - $2,580
11.5 years - $4,110
If your patent application has more than three claims on it, you'll be charged an extra $220 per claim. If you have more than 10 claims on the application, the fee is only $52 per claim.
The United States Patent and Trademark Office (USPTO) might also include additional fees including post-issuance fees, extension of time fees, and trademark processing fees, among others.
Since utility patents are the most valuable, the costs to patent them at the USPTO can range anywhere from $6,000 to $15,000. The more complex the invention, the higher the cost. The most affordable patent application is restricted to "micro-entities," which is a small inventor that has not been previously named on more than four patent applications.
Next, you have the "small entity," which are usually independent inventors, small businesses, and nonprofit organizations. Corporations fall under the umbrella of "large entities," and as such, they are charged the most expensive filing fees.
What Is a Utility Patent?
A utility patent is granted for a new machine, process, matter composition, drug, chemical, lifeform, business methods, and manufacturing. This is one of two main patent types the USPTO grants. The other is a design patent, which protects an invention's design but not its functional features. Companies that specialize in intellectual property must protect their inventions carefully to ensure that they are solely able to manufacture and profit from these creations. Patent protection is an essential part of proving your company's value and attracting investors.
What Are Other Fees Associated With a Patent?
The cost to apply for a patent is only one part of the process. As an inventor, you must consider the costs associated with prosecuting, revising, issuing, and maintaining the patent. Doing some of the steps on your own, such as filling out the provisional patent application, can help keep your total patent costs down.
You can also request expedited handling to get your patent decision from the USPTO within 12 months from the date of your application. This expedited request costs an additional $4,130 for large entities and $2,070 for small entities. Conditions also apply. See the USPTO's Federal Register announcement for more information.
Before the USPTO grants a patent, you will need to pay an issue fee. Currently, the issue fee for a utility patent, including the publication fee, is $2,070 for large entities. For small entities, the issue fee is $1,185.
In addition to the fees, it's important to consider the ongoing cost of maintaining your patent. This includes prosecuting those who infringe on your intellectual property. The right to do so is the main protection provided by the patent process.
The USPTO charges ongoing maintenance fees for active patents in the third, seventh, and eleventh years after the patent is issued. These are currently billed at:
$575 for a small entity and $1,150 for a large entity after 3.5 years
$1,450 for a small entity and $2,900 for a large entity after 7.5 years
$2,405 for a small entity and $4,810 for a large entity after 11.5 years
What Is a Patent Search?
Although a patent search is likely one of the most expensive aspects of protecting your invention, it's important to be comprehensive and thorough. This is not an area in which you should consider cutting costs. Doing a patent search uncovers prior art related to your invention to determine whether or not the creation is truly unique before seeking patent protection. Only inventions that are novel can be patented.
Because it's impossible in some industries to uncover every possible aspect of prior art, you should strive to be 80 percent confident after your patent search that your invention does not copy existing prior art. To be completely confident would require an undue investment, often in the hundreds of thousands or even millions of dollars. In addition, patent applications filed in the last 18 months are not currently searchable.
The more thorough your prior art search, the more thorough your patent application will be since you will be able to illustrate exactly how your invention is distinguished from other inventions. For this reason, many inventors opt to have their patent attorney do a professional search. While costs for this service vary depending on the industry, the average ranges from $1,000 to $3,000 depending on your desired level of written analysis, the depth of the searchable prior art, and the complexity of your invention. This will also prevent you from investing many more thousands to apply for a patent for which your invention is ineligible.
How Much Does a Patent Attorney Cost?
Getting and maintaining a utility patent is a time-consuming, expensive process. Not only are you stuck with mandatory fees from the Patent Office, but you'll also need to pay your lawyer and patent draftsperson (the professional who draws your patent illustrations). The type of invention and degree of complexity both influence the cost of legal services for your patent application.
When deciding how much to spend on a patent, you must consider whether market opportunities exist for your invention. If you do expect to be able to market your product, it's important to invest in a qualified attorney who can ensure that your intellectual property is protected.
When hiring a lawyer to complete the patent application process, you should discuss his or her method of billing. Many patent lawyers bill by the hour, and since a complicated utility patent application can take a long time to complete, the cost of the lawyer's time alone could end up being $10,000. Attorney fees for a non-provisional patent application can range from $5,000 to more than $15,000 depending on the complexity of the intellectual property involved. Approximate industry-based costs reported in 2008 by Alan Kasper of the American Intellectual Property Law Association (AIPLA), based on data from the AIPLA 2007 Report of the Economic Survey are as follows:
$8,500 for a basic patent application
$11,500 for a complicated mechanical patent
$13,700 for complicated computer or electrical patents
$15,500 for a complicated biotechnology or chemistry patent
Other sources break down the estimated costs by complexity as follows:
$5,000 to $7,000 filing fee and $1000 patent search fee for a very simple invention such as a coat hanger or ice cube tray
$7,000 to $8,500 attorney and filing fees and $1,000 patent search fee for a relatively simple invention, such as a board game or flashlight
$8,500 to $10,000 attorney and filing fees and $1,500 patent search fee for a minimally complex invention, such as a camera or power tool
$10,000 to $12,000 attorney and filing fees and $1,500 patent search fee for a moderately complex invention such as a basic cell phone
$12,000 to $14,000 attorney and filing fees and $2,000 patent search fee for a relatively complex invention such as a shock-absorbing medical device
$14,000 to $16,000 attorney and filing fees and $2,500 patent search fee for a highly complex invention such as satellite technology or MRI imaging machine
$16,000-plus attorney and filing fees and $3,000 patent search fee with an opinion for software-related patents
Software patents are particularly costly because they require extensive technical detail to prove that the invention is unique and novel compared to other available software programs.
Some attorneys do work for a flat fee, but you'll need to make sure the lawyer will complete all the work in detail rather than do the bare minimum. Capped fees are also an option at some law firms, which are essentially hourly rates with a limit; you cannot be billed more than the agreed-upon cap. You should always compare your options.
Why Is a Patent Attorney So Costly?
When you file a patent application and seek attorney assistance, you are paying for his or her time in researching and preparing the patent, as well as the time of specialists and experts that he or she employs. Patent attorneys have technical training in addition to their legal training, such as doctoral degrees in the software, computer, biotech, or other areas in which they specialize. He or she may also hire additional subject matter experts based on the type of invention, paraprofessionals to complete the clerical work associated with filing a patent, and illustrators to create drawings, figures, and diagrams as needed.
In addition to preparing and filing your patent applications, your patent attorney will negotiate with the USPTO on your behalf. You have a right to appeal their decision on your patent, but each new submission may cost in the thousands of dollars if additional research and claims are required. If you need to appeal your patent to the internal review board or federal court, legal costs will be even higher.
You may also be required to file an amendment to your patent application. According to AICPA, average amendment costs are as follows:
Minimal complexity = $2,244.00
Relatively complex biotechnology/chemical case = $4,448.00
Relatively complex electrical/computer case = $3,910.00
Relatively complex mechanical case is = $3,506.00
Should I File a Patent Myself to Save Money?
Trying to file a utility patent application on your own requires extensive research and understanding of the patent application process itself, not to mention an understanding of patent databases and patent search engines, both of which can help you make sure your idea is patentable.
Failing to research the patent process may result in costly mistakes. The worst-case scenario is that you lose your patent rights. A patent attorney can ensure the process is completed correctly and efficiently.
Fortunately, you do have some time to decide. The first step in the patent-filing process is called the provisional patent application. This is an unofficial application you can fill out on your own and submit to the patent office. It will give you "Patent Pending" protections for one year, but you must file the official non-provisional patent application before the provisional expires.
If you choose to go this route, you can use this year to save the money to hire a professional and pay the patent fees to get your invention patented on time.
While hiring a professional is almost always recommended, you may be able to complete the patent application yourself if you have:
Plenty of free time to devote to the process
The writing skills needed to articulate your invention in the application
A highly organized, project-minded brain
Unless this describes you, hiring a patent lawyer if your best bet.
What Is the Difference Between a Provisional and Non-Provisional Patent Application?
There are two types of patent applications: provisional and non-provisional. The provisional application is generally considered a placeholder because it protects your invention with a "Patent Pending" protection, but it is not the official patent application. The official application is the non-provisional form.
The provisional patent application gives you a filing date but doesn't begin the USPTO review process. In fact, the USPTO doesn't even look at your provisional patent application. The application will essentially start the clock on the time limit to file the non-provisional patent application.
Filing a provisional patent application gives you the right to claim "patent pending" status on your invention. You can then show it to whomever you wish without worrying about someone stealing the idea. You also won't lose your international patent rights.
The provisional patent application gives you a full year to develop your product and research the market before deciding whether to file an official patent application. While you can file the provisional application yourself, it helps to have some sort of guidance, particular from a registered patent lawyer.
When writing your provisional patent application, keep these tips in mind:
Be sure the application meets the enablement and written description requirements of 35 U.S.C 112. You should adequately describe the components, their connection, and the invention's operation in detail.
Avoid using restrictive language in the description such as "necessary," "must," "essential," etc.
Be accurate but broad. For example, if your invention uses a nail to hold together two components, you can refer to the nail as a "fastener," or state that one piece of wood is "coupled" with the second piece.
While you can fill out the provisional patent application yourself or even skip it altogether, the non-provisional application is far more demanding. The USPTO will use the non-provisional patent application to review your invention, assess its value and functionality, and make a decision whether to award a patent. Because it's an official document, the non-provisional application is more expensive than the provisional, and it must be done according to exacting standards, which is why most inventors hire a patent lawyer.
To begin the patent application process, you can file the less expensive provisional patent application first, which protects your invention for a year. During this time, you can meet with investors and financial institutions to raise funds for the non-provisional patent application and lawyer fees. You will generally need a breakdown of these costs to show to any party interested in lending you money for the patent.
Will I Make Money From a Utility Patent?
There is no guarantee you will make money from patenting an invention. In fact, as much as 97 percent of patents earn less revenue than they cost to obtain.
How Can I Save Money on the Patent Application Process?
You can file your applications electronically on the USPTO website. When you file by paper, you're looking at an extra $400 fee – no exceptions. If you're feeling up to the task, you can also do some of the research and application processes yourself.
Are All Inventions Eligible for Patent Protection?
In short, no. A utility invention must be non-obvious, new, and useful in order to be patentable. The USPTO examiner will compare your invention to prior art, which describes the previous inventions in your industry. He or she will determine whether your invention is unique based on precedents set by the U.S. Court of Appeals, Supreme Court, and Patent and Trademark Office. The better description of your invention and more detailed the claims you provide in your application, the easier it will be to prove that your invention is unique and thus patentable.
Are Patent Pending Applications Private?
Yes. The Patent Office keeps all patent applications secret until the patent has been granted. Granted patent applications are made public 18 months after the earliest filing date.
How Long Does it Take for a Patent to Be Issued?
The timeframe for getting a patent varies. Most utility patents are issued within one to three years of the non-provisional filing date.
How Long Does a Utility Patent Last?
In the United States, a utility patent will expire either 17 years from the patent issue date or 20 years from the patent application filing date, whichever happens later.
What Is a Design Patent?
Although it can be more efficient and less costly to seek a design patent than it is to get a utility patent, the scope of coverage of the latter is much broader. Design patents, on the other hand, provide protection only for the appearance of an item, such as an item of clothing, a medical device, a user interface layout, or any other manufactured product. Only items that look exactly like your invention can be considered infringing.
If you need help with utility patent cost, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.
Utility Patents
A utility patent is the most common type of patent that people seek. This type of patent covers processes, compositions of matter, machines, and manufactures that are new and useful. A utility patent can also be obtained for new and useful improvements to existing processes, compositions of matter, machines, and manufactures. Processes refer to any acts or methods of doing something, usually involving industrial or technical processes. Compositions of matter are basically chemical compositions, which can include a mixture of ingredients or new chemical compounds. Machines include things that are generally defined as a machine, such as a computer, while manufactures are defined as goods that are manufactured or made.
A U.S. utility patent, explained above, is generally granted for 20 years from the date the patent application is filed; however, periodic fees are required to maintain the enforceability of the patent. A design patent is generally granted protection for 14 years measured from the date the design patent is granted.
A U.S. trademark generally lasts as long as the trademark is used in commerce and defended against infringement.
Copyright protection is for a limited term. For works created after January 1, 1978, copyrights last for 70 years after the death of the author. For works "made for hire" (covering the usual type of work owned by a small business), the copyright lasts for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first. For more detailed explanation of copyright terms, visit the Copyright Office webpage or consult this guide on Duration of Copyright provided by the Copyright Office.
A trade secret can be protected indefinitely as long as the secret is commercially valuable, its value derives from the fact that it is secret, and the owner take reasonable precautions to maintain its secrecy.
Patent Pending Infringement: Everything You Need to Know
Patent Law ResourcesPatent Pending
Once you submit a patent application and it is pending, you can protect your patent. If someone steals, sells, or uses your invention it is infringement. 8 min read
What Is Patent Pending Infringement?
As soon as you file a patent application with the U.S. Patent and Trademark Office (USPTO), your invention is "Patent Pending." Once your application is submitted, nobody can steal, sell, or use your invention without your permission. If this happens, they are infringing on your patent, assuming it gets issued. However, you cannot sue until your patent gets issued.
Say you invent something and want to sell it. You need to apply for a patent to prevent others from stealing your work and using it as their own. A patent is the only way to stop others from infringing on your work. The sooner you file a patent application, the better. You are protected from patent pending infringement from the day that your application is submitted.
Inventors in the U.S. used to worry that others could steal their work during the period between filing a patent application and having the patent issued. The American Inventors Protection Act of 1999 (AIPA) granted patent pending infringement protection. The only catch is that inventors must wait to file a lawsuit until the patent issues.
How Long Do Patents Last?
You can sue anyone infringing on your patent if it is active. Utility patents last for 20 years. Design patents last for 14 years. Note that patents can expire if the patent holder does not pay the maintenance fees. Fees are due at 3 years, 7 years, and 11 years.
What Are My Patent Rights?
Before the patent application
You have no rights until you file a patent application. If you share your idea or product with others before filing, they can steal it without any repercussions.
Patent pending status
As soon as you submit a patent application, you have rights. You can place a patent pending notice on your products. This warns others that they will be sued if they steal your idea and the patent gets issued.
Patent approval
You have the most rights when you have a patent on file. Nobody can steal or use your idea without approval. These rights last for the duration of your patent. This is between 14 and 20 years, depending on the type of patent issued.
After patent expires
All exclusive rights are gone once your patent expires. You can no longer sue companies for using and selling your products. The exception is if the infringement happened during the active period of your patent.
How to Get Your Invention "Patent Pending"
When someone says, "Patent Pending," what they really mean is that they have submitted a patent application to the USPTO. The invention typically stays pending for between one and three years. Then, either a patent gets issued, or the application is abandoned.
You should always have patent pending status before sharing your product or idea with anyone. However, keep in mind that it is illegal to say your product is patent pending unless you have already filed the application.
Why File a Provisional Patent Application?
Filing a provisional patent application is the fastest way to achieve "Patent Pending" status for your invention. A provisional patent doesn't lead to the issuance of a patent. Instead, it just says that you were the first person to come up with an idea. You have 12 months from the date you file a provisional patent application to submit either a utility patent application or a design patent application.
The USPTO is required to publish provisional patent applications 18 months after they are submitted. Up to this point, you can only see the title of the patent application when performing a patent search.
There is a balancing act between the right of the marketplace and the right of the inventor. The marketplace has the right to know about inventions and improve upon them. The inventor has the right to profit from an invention. This is why the USPTO publishes the application before a patent is issued.
A provisional patent application is useful because it:
Grants your invention "Patent Pending" status. This deters people from trying to steal your idea.
Gives you more time to perfect your invention. You have 12 months from the time you file a provisional patent application to file a nonprovisional patent.
It costs less and has fewer requirements than a nonprovisional patent.
Why File a Nonprovisional Patent Application?
You don't have to file a provisional patent before filing for a utility patent or a design patent. If you have finished research and development on your product, you can move ahead and file a utility patent or a design patent. This way you don't have to spend the extra cost on a provisional patent application. Provisional patent applications have their place. But you must submit one of the nonprovisional patent applications to actually get a patent.
Suing for Patent Infringement
You cannot sue anyone for patent infringement until your product is no longer in "Patent Pending" status. However, once the patent is issued, you can sue for damages starting at the date that your patent application was submitted to the USPTO.
The USPTO is not an enforcement agency. It only reviews patent applications and approves or denies them. If you want to sue someone for infringing on your patent, you need to file a lawsuit. A patent attorney can improve your chances of winning the case.
Provisional Rights
Under U.S. law, you can receive a reasonable royalty from products that infringe on your patent application. The royalties only begin from the time your patent application is published or the time you notify the infringer. You cannot receive back royalties until the patent issues. The biggest obstacle to overcome is proving your product is "substantially identical." A patent attorney must negotiate this problem with a patent reviewer, and it's unusual to actually receive the back royalties.
What to Do If Someone Steals Your Product While It Is Patent Pending
There are some things you can do while you're waiting for your patent application to get reviewed and your patent issued. You can contact the company that is stealing your product with a cease and desist letter. In the letter you can issue a warning that you plan to file a lawsuit when your patent issues if the company does not stop its behavior. You can also provide a copy of your patent application.
It is possible that the company using your product is not aware that it is infringing on your patent. When your patent is issued, you can decide to license your patent to the company, if you desire. However, you can also follow through with your lawsuit to stop the company from infringing on your patent anymore.
If you do not get a response from the company involved in patent pending infringement, and the company does not stop the behavior, you should consult an attorney. An attorney can help you build a case against the company infringing on your patent and draw up plans to sue. As soon as your patent issues, you can file the lawsuit.
If you can prove a company willfully infringed on your patent, you can get triple damages. That's why it's important to write a letter and start building a case as early as you can. For most companies, the patent pending notice on your product packaging is enough to deter theft. But it still happens sometimes.
False Marking
If you're worried that another company will try to infringe on your patent, you need to make sure to include "Patent Pending" on your product, product packaging, and marketing material. Without this notice, it is hard to prove that you duly notified the infringer of your patent.
It is tempting to write, "Patent Pending," on your product before you have filed a patent application. Resist the urge because it is against the law. This false marking comes with a fine of up to $500 per offense. That can add up quickly because each offense refers to each product.
How Is Patent Infringement Determined?
Each patent lists different elements that show how an invention is unique. To sue someone for patent infringement, you must prove that one of the elements listed in your patent has been stolen. There are two types of infringement cases — Literal Infringement and Doctrine of Equivalents.
Literal Infringement: This is when an accused invention has all the same elements as your patent. It is essentially an exact copy.
Doctrine of Equivalents: This is when an accused invention has some of the same elements as your patent or functions in a very similar way.
What Happens During a Patent Infringement Case?
The accused infringer can turn to a number of defenses. They can argue:
The patent was not disclosed prior to the patent application.
Their product does not actually infringe.
The patent is not valid.
The patent was wrongfully issued by the USPTO.
The case usually boils down to whether the patent holder can prove that the patent is real. It's sometimes risky to sue because the patent holder can potentially lose all exclusivity rights. Many patent holders decide to settle for a lump sum payment or a royalty instead of going to court.
Frequently Asked Questions
When can I file a lawsuit for patent pending infringement?
You cannot file a lawsuit until your patent is issued. Your invention could be in "Patent Pending" status for one to three years. During this time, you should gather information. This will hep you file quickly when the patent issues. The person infringing on your patent is liable for damages from the date that you first applied for a patent and made them aware of the infringement.
Can you license a patent pending product?
You cannot license a product without a patent. But that doesn't mean you cannot approach companies about the possibility. Licensing is particularly useful when you find a company that is infringing on your product. Many companies would rather pay the licensing fee than get sued. Product development and distribution costs a lot of money. It hurts more to quit manufacturing than it does to pay a royalty or license fee.
How much money am I entitled to if I sue someone for patent infringement?
Every patent infringement case is different. Therefore, it is impossible to know how much money in damages you can receive. However, if you can prove that someone willfully infringed on your patent during the patent pending interim, you can be awarded triple damages. Typically, you are awarded a portion of sales.
How long does a patent infringement case take?
Complex infringement cases can take several months to resolve. You can make a case happen faster by hiring an experienced patent attorney.
Steps to File a Patent Infringement Case
Document what the infringer is doing.
Before you can file a patent infringement case, you must describe how your product or idea is being stolen. Make sure to note the date when the infringement started. The more information you can include, the better.
Send a cease and desist letter to the infringer.
It is important to notify the company infringing on your patent, even if your product is still in patent pending status. You are not able to receive damages if the accused infringer does not know they are doing anything wrong. That's why most inventors include a patent pending notice on products. It is also helpful to send a cease and desist letter.
Wait for your patent to get issued.
It is frustrating when someone is infringing on your idea. However, you cannot legally do anything about it until your patent is issued. Luckily, you can sue for damages from the date you submit your patent application to the USPTO and notify the infringer.
Work with an attorney to file a lawsuit.
You can file a patent pending infringement case without the help of an attorney. However, this is not a good idea. An experienced patent attorney can ensure that you have the proof you need in order to be awarded money. They can also make sure that you are fairly compensated.
If you believe someone is infringing on your patent, you need legal counsel to sue for damages. You can post your legal need here to find a competent lawyer from UpCounsel's marketplace. Only the top five percent of lawyers with an average of 14 years of experience are accepted. You need one of the best patent attorneys on your side to help you file a case and win damages.
Utility patents are one of the three kinds of patents present in the USA . A utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture or composition of matter or any new or useful improvement.
In other words, a utility patent is an exclusive right granted for an invention, which allows the right holder to prevent others from commercially using the protected invention without his authorization for a limited period of time. These are also known as 'petty patents' or 'innovation patents' or 'minor patents' or 'small patents'.
Salient features of the utility patent are as follows:
Utility patents confer exclusive protection rights for the product and not process.
Novelty is a norm but the standards of novelty are different in different jurisdiction for Utility patents.
The standards of non-obviousness and inventive step are much lower and differ according to the jurisdictional area.
Utility patents are more appropriate for incremental invention.
In most of the jurisdictions only a preliminary procedural examination is required for the grant of utility patents. There is no substantive examination for utility patent grant.
The rights conferred for the utility patents are similar to those granted by patent laws but have a shorter term.
The span of protection usually varies from 6-15 years; contrary to patents in which the term of protection is 20 years.
Utility Patents are cheaper to maintain and obtain.
The duration of registration of utility patents is less compared to patents since in most of the jurisdictions the applications for utility patents are not examined prior to registration.
When do you need to apply for the Utility Patents?
Utility Patents can be advised in following conditions:
For inventions with minor improvements;
If there is a requirement of faster registration;
For invention with low inventiveness;
For the inventions which are incremental in nature;
For the inventions which are tangible in nature;
When the budget allocated is less and patenting cost is more.
Countries offering Utility Patent Protection:
Not all countries offer the utility patent protection. India is one of them. In India the provision related to utility patent grant is not present. Some of the countries offering utility patent protection are Brazil, China, Greece, Georgia, Italy, Japan, Korea, Kuwait, Malaysia, Spain, Portugal, UAE, Poland, Peru etc.
Utility Patent protection in India:
India does not offer protection under Utility Patents, therefore the Indian companies and startups which seek utility patent protection can apply in the above mentioned countries only. India too requires utility patent protection provision because of its numerous benefits mentioned above. Apart from those utility patent protection also benefits Small and Medium Enterprise Businesses since they lack funds for conducting tests & trials and paying hefty patent fees.
An estimate shows that there are more than 48 million SME's in India providing employment to billions of people. For such SMEs utility patent protection can prove to be a boon, since they fail to protect their inventions and hence suffer losses in terms of business growth.
Utility patent protection proves to be an effective safeguard for protection of inventions of MSMEs. This can further boost the business growth for MSMEs and would further act as an encouragement to the MSMEs under the 'MAKE IN INDIA' initiative of Government of India.
All in all this is the most important type of patent, and thus requires a lot of skill in drafting and prosecution of the patent application before a patent office. You can also learn about the Difference between Patent and Utility Model.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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:
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.
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.
Design Patents vs. Utility Patents
The essential distinction between design and utility patents is the difference in protecting “How it looks” (design) vs. “How it works” (utility). If you’re concerned about competitors copying the appearance of your concept, then apply for design patents. If you want to protect the functional features of your concept, then apply for utility patents. In some cases, it may be appropriate to file design and utility patent applications.
For example, design patent protection would be appropriate for three-dimensional product shapes (e.g., something that looks cool), but beware of any features that serve functional purposes. Design patents are meant to protect only non-functional, ornamental features. This is where consulting with a patent attorney would help.
Here’s a table broadly summarizing differences between design and utility patents:
| Design Patent | Utility Patent
(non-provisional)
| |
| Protects | How it looks | How it works |
| Attorney’s fees for initial filing | less than $1,000 | more than $5,000 |
| Office Action rejections | low probability | high probability |
| How much time does it take? (average pendency to issuance or abandonment) | 19 months | 33 months |
| Patent term | 15 years from grant date | 20 years from filing date |
| How to determine infringement (point of reference) | drawings | written claims |
Cost Differences: Design patents vs. Utility Patents
As shown above, a design patent costs a fraction of a utility patent application which can easily get into the tens of thousands from start to finish. Two primary factors lead to the higher costs of filing utility patent applications:
- The initial filing of a utility patent application requires greater effort in drafting the specification and claims; and
- Ongoing Office Action rejections, each requiring a thorough written response.
Differences in Protection
Claim Scope
Since a design patent covers merely the ornamental appearance of an invention, it’s not difficult to imagine the ways in which a competitor may easily design around a patented design by creating a product that simply looks different. Utility patents are tougher to design around. Since utility patents claim the function or structure of an invention, the outer appearance of a product is less relevant to issue of infringement. A competitor may introduce a product with a very different appearance from that of a patented product and still infringe a utility patent.
How to determine infringement
To infringe a design patent, you need to do a side-by-side comparison of the design patent drawings with the accused product. The question is whether the two designs would look substantially similar in the eye of an ordinary observer, namely that the resemblance is such as to deceive the observer inducing him to purchase one supposing it to be the other.
To infringe a utility patent, you must look to the patent claims and determine if each claim element is found in the accused product.
Probability of Rejection
Utility applications have a significantly higher rate of initial rejection (approx. 80-90%) whereas design applications may often receive a first action allowance. This is due in part to the differences in the claimed subject matter. Whereas the claim in a design application is primarily visual and more limited in scope, the claims in a utility application are textual and generally broader in scope. Broader claims have a higher probability of being rejected over prior art that discloses the claimed subject matter.
Length of Application Process
It takes much more time to get a utility patent than a design patent. Since utility applications have a higher rate of rejection, they also endure a longer application process (average: approximately 3 years) than that of a design application (average: approximately 1.5 years).
Patent Term Differences
Design patents expire 15 years from the issue date and require no maintenance/renewal. Utility patents generally expire 20 years from the filing date and three maintenance fees must be paid to keep the patent alive.
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