util

Utility Patents

What can a utility patent cover?

A utility patent can cover a useful process, machine, article of manufacture or composition of matter. Getting a utility patent usually involves arguing that the invention is adequately described and that it is both new and non-obvious. The requirement that the invention be "useful" is almost always easily satisfied. Patent law does not require that the invention be more useful, more economical or somehow more attractive than something already on the market. When it comes to usefulness, the marketplace provides a much more severe test than does a patent examiner.

Some things are excluded from utility patent protection, but may qualify for other sorts of intellectual property protection. The list of excluded items, and the definition of each of those items varies from one country to another, and often from one year to the next. Generally speaking, the list includes laws of nature (which usually includes mathematics), textual or graphical works, and things that allege to be perpetual motion machines. Software is one of the more interesting and financially important technologies that can run into "non-statutory subject matter" problems even though patents for inventions in which the only innovative feature is software have been granted for years (Arguably, the first software patent was issued in 1841 to Samuel Morse whose code turned the already-known combination of a battery, a switch and a buzzer into a telecommunication system). Although US law allows patents on many types of software inventions, the laws elsewhere are, of course, different. If you think your invention may be in, or close to, an excluded area, your best bet is consulting with a patent agent or attorney.

Patent = A license to sue

A patent grants its owner the right to stop others from "infringing" the patent by making, selling, or using the claimed invention without permission. Coverage does not rely on the accused infringer having copied or derived a product from what was patented – i.e., someone who thought the same thing up independently can still be an infringer. Conversely, someone who copies the basic idea behind a patented product but who comes up with another way of providing the end user with the same benefit is NOT necessarily an infringer. Patents only cover what they claim, and every patent is a challenge to other clever people to figure out a different, non-infringing, way of reaching the same goal..

What is worth patenting?

Many things that meet the basic legal tests of utility, novelty and non-obviousness, can be patented but are not worth the time and expense involved. Some things to consider before proceeding with a patent are:

Market size -- Patent enforceability ultimately relies on the patent owner's right to file a civil suit in the courts of the country that granted the patent. This motivates applicants to focus on seeking protection in large markets protected by reliable judicial systems.
Market timing -- The entrepreneur who introduces a new fad can make a lot of money out of a product that everybody has to have today and that nobody will want tomorrow. A patent will do little, if anything, to add to that success. If the market has come and gone before the patent issues, the patent will only cover something that no one wants any longer.
Cost of copying -- If copying the patented product or process is cheap and simple, the patent owner may be 'ripped off at retail' by a large numbers of small operators. Unless some of the copycats make a lot of money, the cost of recovering damages from any one of them can be prohibitive. If there are substantial set-up costs, copying is less likely. The money spent for tooling, molds, etc. is often a source of financial pain to a product developer, but it can be a blessing later on.
Ease of avoidance -- Designing around a patent is unquestionably legitimate. If it is easy to see how to avoid the broadest claim that you or your agent or attorney thinks is allowable, the patenting exercise might not be worthwhile. It is a good idea for an inventor to think about ways to get around his or her own claims before even starting the patent process. Sometimes the process of attacking one's own idea leads to a broader statement of the invention and to a patent more effective at blocking competition.

A discussion of the steps involved in getting a patent in the US appears elsewhere on this site.

David A. Kiewit
Registered Patent Agent
5901 Third St. South
St. Petersburg FL 33705-5305
+1 (727) 656-0669 voice

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