A utility patent protects the way an article is used and works per 35 U.S.C. § 101. To obtain a utility patent, an inventor must file an application with the United States Patent and Trademark Office (USPTO) setting forth certain property claims to be examined. Utility patent applications can have multiple claims.
The patent application is accompanied by figures to illustrate the invention along with certain support documents required by the USPTO. These support documents can include a Utility Patent Application Transmittal sheet, a Fee Transmittal for the appropriate fiscal year, a Patent Application Fee Determination Record form, a Power of Attorney form, an Information Disclosure Statement with references, a Recordation Form Cover Sheet, an assignment, filing fees, a Declaration of Mailing, and a postcard for confirmation of receipt.
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; or if the application contains a specific reference to an earlier application under 35 U.S.C. 120, 121, 365, or 386, 20 years from the earliest effective U.S. filing date. Maintenance fees are required for utility patents per 37 CFR § 1.20.
Utility and design patents afford legally separate protection.
An owner of a valid patent, the patentee, a successor in title to the patentee, or an exclusive licensee of the patent at issue, can bring an action when they believe the patent has been infringed. A purported exclusive licensee must show they possess all substantial rights in the patent.
In invalidity and infringement actions, the party asserting the claim must give notice to the other party in the pleadings or in some other writing at least thirty days before the trial, of the country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in the proceeding, as showing the state of the art, and the name and address of any person who may be relied upon as the prior inventor or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. In the absence of this notice, proof may not be presented at trial except as permitted by the court.
Generally, a claim for infringement of a utility patent arises under federal Patent Act. Such a claim arises when any person without authority makes, uses, offers for sale, or sells any patent invention, within the United States or imports into the United States any patented invention during the term of the patent.
A claim for utility patent infringement is brought in federal district court. Jurisdiction for patent infringement claims is proper under 28 U.S.C.A. § 1338. Venue for patent infringement actions is governed by the general federal venue statute which provides that “an action may be brought only in a judicial district where any defendant resides or a judicial district in which a substantial part of the events or omissions, giving rise the claim occurred.”
[Last updated in October of 2021 by the Wex Definitions Team]