Utility Patent Questions

What is a utility patent?

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A utility patent, may be granted for new and useful processes, machines, manufacturing, compositions of matter and business methods and improvements of the foregoing. Compositions of matter include chemicals, drugs and life forms.

What rights are conferred by a utility patent?

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A utility patent grants the patent owner the right, in the case of a product patent, to prevent others from making, using, selling and importing products that includes the invention and, in the case of a process patent, the right to prevent others from using a process and to import products which were made by the patented process. Owning a patent does not mean the owner can make a patented product or use the process covered by the patent because there may exist earlier patents that would be infringed by such activities, for example, if it is necessary for the newly patented invention to include features of the existing product, which are covered by an earlier patent. A “right to use” search should be conducted prior to investing significant capital to bring a product or process to market.

Are all utility inventions patentable?

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Not all utility inventions are patentable. Generally, in order to be patentable, an invention must be novel, unobvious and useful.

Are pending United States patent applications kept secret?

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The United States patent and trademark office keeps secret all information concerning pending design patent applications and utility patent applications filed before November 29, 2000. If a patent is not issued, the application is never available to the public from the USPTO unless it is referenced in another patent. All utility patent applications filed on or after November 29, 2000 are published with two exceptions – first, U.S. patent applications with no foreign counterpart re not published provided a request is made by the applicant and, second, if a patent is granted within 18 months of the application filing date, the application is not published.

When are utility patent applications published?

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United States utility patent applications are published 18 months after the earliest United States filing date or foreign priority date, whichever occurs first. An inventor can request that the application be published earlier. publication will not be required if the inventor states that he does not intend to appy for a patent in a foreign country.

What is the effect of the publication of a utility patent application?

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A published utility patent application is accorded provisional rights to recover royalties from infringing parties who, with actual notice, use the claimed invention between the publication and grant dates, provided that substantially the same claims are contained in both the published application and the granted patent. In addition, published applications have the same prior art effect as an issued patent.

What is a provisional patent application?

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A provisional patent application provides the means for an inventor to obtain an early filing date and claim “patent pending” without a formal patent claim, oath or declaration, or any information or prior art disclosure. It provides simplified filing with a lower initial cost with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent. The filing begins the Paris Convention priority year. Within one year, a non-provisional application must be filed. If the inventor takes no further action, the provisional application will automatically be abandoned 12 months after the provisional application for patent’s filing date by operation of law or upon failure to correct informalities (e.g., pay filing fee or correct cover sheet error).

What is a statutory bar?

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A United States patent will be “barred” by statute, that is, a patent cannot be granted, if before the application filing date:

  • the invention was described in a printed publication
  • the invention was in public use
  • the invention was on sale

The “on sale” bar can be triggered by almost any commercial activity, in the United States or elsewhere, including offers to sell or providing a prototype or drawings to a potential customer or manufacturer.

A statutory bar will also arise from the prior patenting of the invention, or if the invention is made by another before the patent application.

How long does it take for a patent to be issued?

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The timing of the issuance of a utility patent will depend upon the things that occur during the processing of the application. In general, most utility patents are being issued within one to three years of the filing date. Procedures are available for expediting the issuance of a utility patent.

What is the duration of a United States utility patent?

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A utility patent has a term beginning on the date on which the patent issues and ending 20 years from the filing date of the application for the patent. Utility patents that were in force on June 8, 1995, and utility patents issued from applications filed before that date, will expire either 20 years from the filing date of the patent application or 17 years from the issue date, whichever is later. The owner of a utility patent must pay a government “maintenance fee” at three times during the life of the utility patent. If the fee is not paid, the utility patent will expire earlier.

What are patent maintenance fees?

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All utility patents which issue from applications filed since December 12, 1980 are subject to the payment of maintenance fees which must be paid to maintain the patent in force. Maintenance fees are due 3 ½, 7 ½ and 11 ½ years from the issue date of the patent. The maintenance fees may be paid up to six months before the due date. There is a grace period of six months after the due date during which a maintenance fee may be paid with a surcharge. If the maintenance fee and any surcharge are not paid, the patent will expire as of the end of the applicable grace period.