Monthly Archives: January 2020

Utility Patent

What it is

Patents may be obtained for useful inventions, thereby including machines, articles of manufacture, processes, and compositions of matter. A utility patent is distinguished from a design patent in that the utility patent covers the functional aspects of the invention, while the design patent covers the ornamental aspects of a useful device.

Accordingly, utility patents are much stronger and more difficult to design around than are design patents. For example, if one could obtain a utility patent for a platform with a means for support (i.e., a table), such a patent claim would effectively prevent anyone else from making almost any table. Such would be an extremely powerful patent as explained in post.


The essential requirements for a utility patent are that it be useful, novel and non-obvious.

1. Utility – the device or process must have a purpose. Since nearly everything is useful, nearly everything meets this patentability requirement.

2. Novelty – the device or process cannot have been done before. This basically means that it cannot have been described in a single patent or other publication.

3. Non-obviousness – the device or process cannot have been an obvious invention to one who is skilled in the field of art that the device or process falls into. This is typically the most difficult rejection to overcome. However, to reject on this basis, the patent office must find two or more patents or other publications that would have been available to one who practices in the field of the invention that when taken together disclose all the elements claimed in your patent application.

Term (life)

The term of a utility patent filed on or after after June 8, 1995 is 20 years from the date of filing of the application or its earliest priority date. Derivative applications such as continuations, continuations-in-part, and divisional applications will typically be limited to the same 20 years from the filing date of the original application as to any common matter. A patent application in process on June 8, 1995 still retains the former term of 17 years from date of issue.

Types – parents and children

The initial patent application is often called a “Parent” and applications that are filed that take priority to it are often called “Children”. As mentioned above certain derivative child applications can arise from a parent patent application, but may be restricted to the term of the original patent as described on

Continuation – this is essentially the same application with a new set of claims to the original invention.

Continuation-in-part – this application is similar to a continuation, but includes some matter that wasn’t in the original application and claims to some or all of the new matter.

Divisional – when the patent office determines that there is more than one invention in a patent application, it will require restriction to one of the inventions. This is done by withdrawing (and eventually cancelling) the claims to the other invention(s). The applicant can re-file the application as a second application called a divisional with the claims that were withdrawn from the first application.

Maintenance fees

Except for plant and design patents, and reissues of patents that weren’t required to pay maintenance fees, all patent filed on or after December 12, 1980 require maintenance fees.

For small entities (individuals and small companies) the fees are:

  • From 3 to 3.5 years, or up to 4 years with surcharge
  • From 7 to 7.5 years, or up to 8 years with surcharge
  • From 11 to 11.5 years, or up to 12 years with surcharge

Large entities pay double the small entity fee.

Patents for Processes, Business Methods, and Software

The U.S. statutes authorizing patents include patenting for processes, acts or methods. Where originally such patents were largely envisioned and used for manufacturing and chemical or industrial processes, this patent category has been extended to include business process methods and computer algorithms.

There is still a lot of controversy in this category concerning what is simply an idea versus what is an invention. Precedents are being established more frequently in court cases than by legislation. The cases arise when a patent holder brings a claim of infringement on a rival, and the rival counterclaims that the patent is invalid because the “invention” is not patentable as described in post.

Patents for Plants

Competition for plant patents is high within the horticulture industry where commercial plant growers strive to create new and popular varieties that they can patent. With a plant patent, the grower can enjoy a 20-year monopoly on the protected variety.

The requirements and restrictions concerning what plants can and can’t be patented are very technical. If you have a plant you think is worth patenting, please refer to the web site for more detailed information.

Patents on Compositions of Matter

Compositions of matter are specifically patentable. These generally refer to chemical compounds, metal alloys or even formulas for protective coatings, but can also refer to pharmaceuticals and newly created components of living cells.

Design Patents

A design patent applies to the ornamental appearance of a useful article. Coca Cola’s original bottle shape was covered by a design patent. The design patent did not apply to the function of the bottle, but merely to its shape. Design patents provide protection from being copied for a period of 14 years and you can learn more about them on

Atomic Weapons, Laws of Nature and Physical Phenomena Excluded

Unfortunately, if your new and non-obvious invention is useful only in an atomic weapon, the Atomic Energy Act of 1954 makes it unpatentable.

Patent statutes also specifically disallow patents covering laws of nature and physical phenomena.

If Isaac Newton, Ben Franklin and Albert Einstein had made their discoveries today, it would have taken an incredibly gifted team of patent attorneys to carve out any basis for patent protection for the laws of gravity, the principles of electricity and the theory of relativity.