What type of patent application is right for me?

by Mark Malek

Generally speaking, a patent is a grant, by the government, for a fixed period of time, of the right to exclude others from making, using, selling, or offering for sale an invention as defined in the claims of a patent.  (For more information, check our our Overview of U.S. Patent Protection.)  Of course, the first step in the patent process is filing a patent application.  There are several different types of patent applications that can be filed by an inventor.  What follows is a brief outline of the types of patent applications that can be applied for, as well as the differences between them all.  The patent applications that will be discussed below are Provisional Patent Applications, Utility Patent Applications (sometimes called Nonprovisional Patent Applications), Design Patent Applications, and Plant Patent Applications.

Provisional Patent Applications are a great way for inventors to get the patent process started.  It troubles me, however, that there are so many scam services out there that lead inventors on by letting them think that the filing of a provisional patent application will lead to the issuance of a patent.  For the record – the filing of a provisional patent application alone will never lead to the issuance of a patent.  A provisional patent application is a disclosure to the Patent Office that provides an inventor with a filing date.  The provisional patent application is good for 12 months and must be converted to a utility patent application (which will be discussed below) within that time in order for the application to have any chance whatsoever of becoming an issued patent.  If it is not converted within that timeframe, the application will be abandoned.  We are often asked if an extension can be filed in order to preserve the provisional patent application.  Unfortunately, the answer is no.  Accordingly, in order to keep the process going, a utility patent application must be filed.

The benefit of the provisional patent application is that it is an inexpensive way for inventors to get the patent process started.  This provides an inventor with 12 months to determine whether or not it will be worth it for them to continue with the patent process.  They may mark their invention “Patent Pending” while presenting to potential investors, effectively communicating that there may be consequences (e.g., an infringement suit) if someone decides to rip the idea off.  As such, it acts as a substitute for having everyone sign a nondisclosure agreement before letting them see your technology.

Utility Patent Applications are the types of applications that can be filed in order to obtain patent protection on an invention that has some sort of use, i.e., on the functional elements of an invention.  The provisional patent application can be a precursor to the utility patent application, but does not necessarily need to be.  In other words, filing a provisional patent application is not a necessary step.  The utility patent application can be filed without filing the provisional patent application.  The claims in a utility patent application set forth the scope of the invention.  The limiting relationship between utility patent applications and provisional patent applications, however, is that the claims of a utility patent application must be fully supported by the disclosure in the provisional patent application, in order to claim the benefit of the provisional patent application filing date.

A patent granted based on the filing of a utility patent application can last for 20 years from the date of filing, or even longer.  There is a slight backlog at the PTO with respect to the examination of patent applications.  Recognizing these shortcomings of the examining system, the PTO sometimes grants patent term adjustments based on the length of time that was taken during examination of the patent application.  In order for the patent to remain valid for its full term, maintenance fees must be paid – yes, yet another governmental filing fee.  The maintenance fees are due at 3.5 years, 7.5 years and 11.5 years.  If the maintenance fees are not paid, then the patent will be abandoned.

A Design Patent Application is just what it sounds like – it is an application directed to protecting an inventive design of a product.  A design patent does not protect the utility, or function, of a product.  Design patents can be very valuable and can be used in conjunction with utility patents in order to enhance patent protection.  This can be especially valuable for inventions that have a unique look.  With the Federal Circuit’s decision in the Egyptian Goddess case, design patents have become rather valuable.  The test set forth for infringement of a design patent is now known as the ordinary observer test.  In other words, infringement of a design patent can be proved by showing that an ordinary observer would find the accused design substantially the same as the patented design.  Design patents last for 14 years from the date of issue.

A Plant Patent Application is directed to a new variety of plant that can be that can be asexually reproduced.  Plant patents last for 20 years from the date of filing.  Plant patent protection is limited to a plant in its ordinary meaning:

• A living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype, which can be duplicated through asexual reproduction, but which can not otherwise be “made” or “manufactured.”
• Sports, mutants, hybrids, and transformed plants are comprehended; sports or mutants may be spontaneous or induced.  Hybrids may be natural, from a planned breeding program, or somatic in source. While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area.
• Algae and macro fungi are regarded as plants, but bacteria are not.

I hope this helps you determine which type of patent application is right for you.  If not, give us a call and we’ll try to talk you through it.