CHAPTER 7 - § 7.04

• Jurisdiction: United States

§ 7.04 UTILITY PATENTS

Utility patents provide protection for new, non-obvious, and useful inventions, such as machines, devices, chemical compositions, and manufacturing processes.³⁸ In this respect, utility patents are fundamentally different from both design patents and trade dress, both of which are limited to protecting ornamental, non-functional features. Utility patents protect the useful or functional features of an invention without regard to the invention's ornamental appearance.

Like design patents, utility patents are granted as a means of encouraging innovation and discoveries.³⁹ As a result, patent holders are granted a limited monopoly for the term of the patent, during which time a patent holder may exclude others from making, using, selling, offering to sell, and importing the patented item.⁴⁰ This type of protection is quite different from trade dress protection, which, as discussed above, protects the public from confusion and protects the goodwill of a trade dress owner. Unlike patent protection, however, trade dress protection provides no comparable right to exclude.

Procuring a utility patent requires the filing of a patent application (at the USPTO) that includes a written description and precisely claims an invention.⁴¹ Drawings are not necessary but are typically included in the application to help illustrate and describe the claimed invention. In this respect, utility patent applications are similar to design patent applications. The major difference between utility and design applications, aside from the subject matter covered by each, lies in the comparative importance of the written description, the drawings, and the claim language.⁴² With utility patent applications, the description and the claims are of the utmost importance. The claims (as interpreted by the written description) define the scope of a patent holder's rights. In the case of design applications, the reverse is true.⁴³ That is, the description and claims are secondary, and the scope of protection is defined by the drawings.

Once a completed patent application is properly filed, the USPTO considers whether the claimed invention is novel (i.e., new), non-obvious, and useful in the context of existing technology. If the USPTO determines that these requirements have been met, a patent will be granted and ultimately issued, thereby marking the commencement of the patent holder's limited monopoly and right to exclude. Notably, trade dress protection requires no such...