To begin with, what distinguishes a utility patent from other types of patents? A patent is a type of property that gives the patent holder the right, for a limited period of time, to exclude others from making, using, selling, offering to sell, or importing the subject matter that is within the scope of protection granted by the patent. If the subject matter is a new and useful process, machine, article of manufacture or composition of matter, or any new and useful improvement thereof, then the patent is referred to as a ‘utility’ patent. In other words, a utility patent grants a property right in an inventive method, apparatus or composition. By contrast, a ‘design’ patent may be granted for a new, original and ornamental design for an article of manufacture. The word ‘ornamental’ means that the property right is directed to the appearance of the article, rather than the functionality of that article. Accordingly, an owner of a utility patent could stop another person from making a product that provides the patented functionality regardless of the appearance, but an owner of a design patent could only stop a person from making a product with the patented appearance. A plant patent may be granted to whoever invents or discovers and asexually reproduces any distinct and new variety of plant. How broad can the invented process covered by a utility patent be? Does this breadth of coverage vary significantly between sectors? The term ‘breadth of coverage’ is often used to refer to the scope of the claims in an issued patent. Since it is the written words of the claims that describe the scope of the property right conferred by the patent, the breadth of coverage of a utility patent is determined by interpreting the scope and meaning of the claims. Drafting an appropriate set of claims requires experience, skill and strategy in order to accomplish two critically important and competing objectives. The first objective is to write claims that describe features that are new, useful and non-obvious relative to existing publicly available information (aka ‘prior art’) so that the claims will be allowed to issue in a patent. The second objective is to write those same claims without any unnecessary details so that the Choosing an Attorney for a Utility Patent 58 LAWYER MONTHLY APRIL 2023 Strong patents form the backbone of intellectual property protection. When it comes to filing for utility patents in particular, certain considerations must be taken into account that differ from other patent filings. Jeff Streets, a highly experienced IP attorney, speaks with us on the necessary steps involved in obtaining a utility patent and the requisite skills to look for in hiring a patent attorney for the job. Expert Insight
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