U.S. PATENT LAW

PROTECTION OF INTELLECTUAL PROPERTY IN A GLOBAL ECONOMY

The United States Patent and Trademark Office (USPTO) issues three different kinds of patents, namely utility patents, design patents, and plant patents. Utility patent is considered as the most common type of patent because most patent applications filed with the USPTO falls under utility patent. Under the patent law of the United States, a utility patent protects "any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof." A utility patent grants the inventor the right to prevent any other individual from making, selling, using or importing the invention without the consent of the inventor. In short, a utility patent protects function. Utility patents are divided into mechanical, chemical and electrical categories. There are three main factors to review in order to determine the utility of an invention. These factors include the operability of the invention, a beneficial use of the invention, and practical use of the invention.

Utility patent applications are more expensive than design patent applications. However, a utility patent commonly protects a person’s invention better than a design patent. More specifically, some of the major benefits or advantages of utility patents include the following—(a) Protects the functional aspects of an invention; (b) Can provide broad patent protection making it hard for a competing product to avoid patent infringement, and; (c) Capable of protecting many different variations of a product with a single utility patent. On the other hand, some of the disadvantages of utility patents include the following—(a) More expensive than a design patent; (b) Takes longer period to receive patent protection, which averages from two to three years; and (c) Does not protect the ornamental features of an invention. 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. In addition, maintenance fees are required for utility patents, unlike for design patents which require no maintenance fees. In addition, utility patent applications can have multiple claims.

The patent guidelines require that a patent application expresses a specific, credible, and substantial utility. Without which, the application for a utility patent may be rejected by the examiners. In order for a particular invention to qualify for a utility patent, it must be—(1) a process or method for producing a useful, concrete, and tangible result. Examples of this kind include a genetic engineering procedure, an investment strategy, computer software, or a process for conducting e-commerce on the Internet, among others; (2) a machine, which include a cigarette lighter, a sewage treatment system, a laser, a photocopier, or  any other invention which commonly have moving parts or circuitry; (3) an article of manufacture. Examples of this include an eraser, a tire, a transistor, or a hand tool, among others; (4) a composition of matter, such as a drug, a chemical composition, soap, or a genetically altered life form; and (5) an improvement of an invention that fits within one of the first four categories already mentioned above.

If the invention fits into one of the five categories mentioned above, it is deemed to have passed the first test to qualify for a patent. It is known as “statutory subject matter”. However, after passing the first test, the invention must also overcome several other requirements before the USPTO will finally issue a patent to the inventor. The other requirements include the following—(1) the invention must also have some usefulness or utility; (2) the invention must also be novel which means that it must be different from all earlier inventions; and (3) the invention must be nonobvious, which means that it should be able to introduce a significant development to any person who understands the technical field of the invention.

A utility patent can be filed together with the other kinds of patents. For an instance, there are situations when an invention can receive adequate patent protection with a utility patent and a design patent. This happens when said invention has a unique structure or function (which qualifies it to receive a utility patent) tied with a unique ornamental design (which qualifies it to receive a design patent), then you should consider filing both a utility patent application and a design patent application.  

In filing for an application for a utility patent before the USPTO, a specification is required. The specification refers to a written detailed description of the invention and how to make or create and use the said invention. Accordingly, the said specification requirement must be written in full, clear, concise, and exact language that an individual who have the knowledge and skills in the technology involved in the said invention could make and use it. To determine if said invention qualifies, the patent office examiner should be skilled and with adequate knowledge in the technology involved with the invention. Patent specifications are also required to be written at an expert's level of understanding. The patent specifications should have the following section headings—(a) Title of invention; (b) Cross-reference to related applications; (c) Statement regarding federally sponsored research or development; (d) Reference to a sequence listing, a table, or a computer program, listing compact disc appendix; (e) Background of the invention; (f) Brief summary of the invention; (g) Brief description of the several views of the drawing; (h) Detailed description of the invention; (i) Claim or claims; (j) Abstract of the disclosure; (k) Drawings, when necessary; (l) Oath or declaration; and (m) Sequence listing, when necessary. The required formatting and numbering the pages should also be strictly followed.

An international application naming various countries may be filed for utility patents under the Patent Cooperation Treaty (PCT). Foreign priority can be attained for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention.