A utility patent, which is the most common type of patent pursued, 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 and useful improvement thereof.  The utility patent is the most common type of patent pursued and can cover virtually anything man-made under the sun including mechanical devices (machines, tools, medical devices, clothing, etc.,), electrical and electronic devices, pharmaceuticals, chemicals, software, and business methods, among others. 

In order to obtain a utility patent, an invention must be new, must be useful, and must be non-obvious in light of the existing technology.  Additionally, certain time lines must be adhered to.  With the full implementation of the America Invents Act, the United States follows a first inventor to file system so that if two or more applications are filed for the same invention, the first inventor to have filed the application will be given consideration for patenting, irrespective of when the other inventors may have conceived of their invention.  Additionally, a patent application must be filed prior to most sales or marketing attempts or before the invention is available tot he public.  While the America Invents Act still gives an inventor a one year grace period for publishing articles about an invention, a public disclosure from an unrelated third party prior to applying for a patent, may prevent an application from maturing into a patent.  Furthermore, in order to pursue international protection under the Patent Cooperation Treaty, an inventor must file an appropriate U.S. patent application prior to any sales or marketing attempt, public use, or public disclosure.

In order to obtain utility patent protection, the basic steps begin with a patentablity or novelty search which seeks to determine whether the invention is truly new and eligible for patent protection.  Although not a legal requirement, a patent search is strongly recommended.  Thereafter, if the search results permit further patent pursuit, a patent application is prepared.  A patent application is a legal and technical disclosure of the invention and usually includes proper patent drawings of the invention.  A patent application may include variations of the invention.  Once the application is prepared, it is filed with the United States Patent and Trademark Office (USPTO) and the invention is considered patent pending.  Sales and marketing of the invention is generally encouraged at that time.  Once the application is filed, it is examined by the USPTO and may either be approved or rejected.  Such an examination occurs several months to several years after filing.  A patent application may be rejected for various reasons, typically because too much protection has been sought, although other reasons for rejection may be presented.  If a rejection occurs, a response is filed seeking to overcome the rejection and if the response is successful, the application is then approved to issue as a patent.  The grant of a patent is never guaranteed.

Typically, utility patents are good for twenty years from the original date of filing of the utility patent application subject to the patent owner paying maintenance fees at prescribed times after the patent's issuance.

Provisional versus non-provisional patent applications

There are two types of utility patent applications that can be filed: provisional applications and non-provisional applications.  A provisional application is essentially a scaled down version of a non-provisional patent application which does not contain all of the sections of the non-provisional application, especially, the claims or the legal description of the invention.  A provisional patent application is not examined, cannot mature into a patent, and is good for one year at which time the provisional application must be converted to a non-provisional application or the provisional application expires.  A provisional application cannot be renewed or extended past this one year mark.  Although a provisional application is less expensive than a non-provisional application, the filing of both a provisional application and non-provisional application increases the overall costs to the inventor. 

A non-provisional application is a complete application that is examined in due course and may mature into a registered patent.  It is not necessary to file a provisional application prior to the filing of a non-provisional application.  Most start-up inventors go directly to a non-provisional patent application.

Please contact our office so that we can confidentially discuss these issues further.