Protecting Innovation: Utility Patent Applications

The patent application process is far more than a legal formality. Getting it done and getting it done right have strategic consequences for how companies develop and grow their businesses.

Utility patent applications are important for any business built around intellectual property. The way in which you file a utility patent application can have far reaching consequences on where your innovation receives protection.

The Application Process

When most people talk about filing a patent application or having a patent application pending, generally they are referring to a “utility” application. A utility application is directed to an invention that is a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.

In order for a utility application to mature into a patent, it must meet several criteria:

  • Be novel and not obvious.
  • Clearly and fully describe the invention.
  • Enable someone working in the same area of science or engineering to be able to make and use the invention.
  • Present the best way the inventor knows of making the invention.

There are two ways to file a utility application. The first is to file an application in the country in which protection is desired. For example, if protection for the invention is only desired for the United States, then a utility application can be filed directly with the United States Patent and Trademark Office (USPTO). Similarly, if protection is also desired in Taiwan, then an additional application can be filed with the Taiwan Intellectual Property Office (TIPO).

Once filed, the application is reviewed by an Examiner who is knowledgeable in the area of science/engineering for that invention and who conducts a search of world-wide patents, patent publications, scientific literature, etc. For example, if a utility application is for a new cancer drug, the Examiner reviewing the application will be knowledgeable about cancer drugs. Similarly, if a utility application is for a new silicon chip power supply, it will be assigned to an Examiner with knowledge of silicon chips. The Examiner then issues his/her assessment of whether the invention is patentable.

Global Patent Protection

It is important to understand that there is no such thing as an “International patent.”

If a larger degree of International protection is desired, a utility application can be filed under the Patent Cooperation Treaty (PCT) – an international patent law treaty that provides a unified procedure for filing patent applications in each of its contracting states. Currently, 148 countries participate in the PCT.   A patent application filed under the PCT is called an International application, or PCT application.

When a PCT application is filed, a single copy of the application is sent to a Receiving Office (RO) in one language. The search of the patent and scientific literature is then performed by an International Searching Authority (ISA) and a written opinion assessing the patentability of the invention is generated. The search report and written opinion are ultimately sent to each of the contracting states in which protection is desired.

While the PCT application establishes a filing date in all contracting states, this must be followed by entering the “National Phase” in each of the countries in which protection is sought at the appropriate time, which is generally 18-30 months later. Here, the typical application fees for that country are assessed and then each country processes the application in the same way that it would any application initially filed in that country. For example, if a PCT application were filed and then entered the National Phase in the United States, it would be assigned to an Examiner and proceed just as described above.

So why pay the costs associated with filing a PCT application when you have to pay the country fees when entering the National Phase anyway, instead of just filing applications in each of the countries where protection was desired?

While it may seem counter-intuitive, the most common reason is cost. The cost of filing in each desired country can be very expensive and oftentimes an entrepreneur or start-up does not have a large budget for filing patent applications. Filing a PCT application postpones the costs of additional filings while preserving the option of obtaining some international protection should additional funding or investment become available.

Another reason that PCT applications are useful is that it allows more time to analyze where it makes the most sense to seek protection. Most often this is in countries that have the greatest desire for the invention and those countries that could most easily counterfeit the invention.

For instance, let’s say that the invention is for a device that identifies and locates underwater explosive mines using a complex hi-tech computer system. The primary market for that product would be in countries that have a seacoast. So if one had a limited budget for patent application filings, seeking protection in a land-locked country like Lichtenstein would not be sensible. Similarly, seeking protection in a country that did not have the ability to manufacture such a complex, hi-tech device would probably not be worthwhile.

As another example, consider a drug and treatment for sickle cell anemia. The incidence of that disease is much higher in individuals whose families come from Africa, South or Central America, the Caribbean islands, Mediterranean countries (such as Turkey, Greece, and Italy), India and Saudi Arabia.  Consequently, with a limited budget for patent application filings, it would not make sense to seek protection in, for example, Iceland. Likewise, if a country like Afghanistan does not appear to have readily available resources to produce the drug, then seeking protection in that country would likely not be a wise decision.

Deciding whether to file a utility application only in the USPTO or via the PCT is an important decision for an entrepreneur, a start-up company or a mature company because this will ultimately determine the regional extent of protection that the application can obtain.

Protecting Innovation

To protect the innovation at the core of your business, make sure you conduct a comprehensive assessment of all your intellectual property early and often. By analyzing your IP from both a legal and business perspective, companies can transform their existing intellectual property into a powerful competitive tool and better position themselves to take advantage of ongoing innovation.

Susan Gorman, Ph.D., Esq., is principal of Gorman IP Law, a law firm focused on helping companies leverage intellectual property assets to maintain a competitive advantage, enhance market share, plan for growth and better manage resources and expenses. Through a proprietary process, Gorman IP Law helps businesses build a formal IP strategic plan that defines your business goals, establishes benchmarks and allows you to better project costs. Dr. Gorman can be reached at susan.gorman@gormaniplaw.com.