What Is A Patent?

A patent is the grant of a bundle of rights to the owner of an invention. The owner of a patent is granted, for a limited period of time, the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. 

 

In exchange for this limited monopoly, the owner of the invention agrees to disclose his invention and to give his invention to the public domain upon expiration of the patent period.

 

The underlying policy of the patent system is to encourage invention and the contribution of inventions to the public domain.

Three Types of Patents

A UTILITY PATENT may be granted to anyone who invents or discovers any new, useful and non-obvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Typically, when a person thinks of patenting an invention, they are envisioning a utility patent. 

 

A DESIGN PATENT may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.

 

A PLANT PATENT may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

 

A PROVISIONAL PATENT APPLICATION is sometimes improperly referred to as a 'provisional patent'.  It is not a patent.  Rather, it is a limited-purpose application for patent used primarily to establish an invention priority date prior to filing a non-provisional application for patent.  This tool is particularly important as the United States awards patent rights to an invention to the first party to file a patent appllication for that invention.

 
Utility Patents

A utility patent may be granted to anyone who invents or discovers any new, useful and non-obvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.

 

The process of obtaining a patent generally requires 24 to 36 months, or even longer depending primarily upon the responsiveness of the United States Patent and Trademark Office and the number of Official Actions received against the patent application.  The following is a typical timeline:

  1. Prior Art Search and Patentability Opinion: 3-6 weeks

  2. Patent Application Preparation: 4-6 weeksPatent

  3. Prosecution of the Application Before the USPTO: 18-30 months

  4. Patent Issuance Process: 3-6 months

 

Once a patent is granted by the USPTO, the patentee is required to mark the articles with the word “patent” and the number of the patent. The phrase “patent pending” or “patent applied for” may be used once an application for patent is filed with the USPTO, however patent rights do not begin until the actual grant of the patent. 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, 20 years from the earliest effective U.S. filing date. After the patent issues, the USPTO requires payment of maintenance fees at fixed periods over the life of the patent. Patent maintenance fees are required 3.5 years, 7.5 years, and 11.5 years from the date the patent is granted. Warning: Failure to pay a maintenance fee on time may result in the expiration of the patent.

 
Provisional Patent Applications

The USPTO offers the option of filing a provisional application for patent.  The provisional application is a limited-purpose application for patent used primarily to establish an invention priority date prior to filing a non-provisional application for patent.  The provisional application offers specific benefits (including that they are relatively inexpensive and may be prepared/filed quickly), but also carries attendant risks and limitations.

 

Benefits:

  • Establishes a constructive reduction to practice date and an official United States patent application filing date. The provisional application can also be used under the Paris Convention to establish a priority date for foreign applications.

  • Reserves the invention’s priority date for one year. A non-provisional patent application must be filed prior to the expiration of this one-year period. Accommodates assessment of the invention’s commercial potential for up to one year prior to committing to the cost of a non-provisional application for patent

  • The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application.

  • Permits disclosure of the invention without potential loss of rights due to public disclosure bars.

  • Simplified application preparation and filing process. Claims and oath or declaration are not required.

  • Lower initial cost than a non-provisional application.

  •  “Patent Pending” notice may be used in connection with the invention for the one-year period of the provisional patent. 

  • Enables commercial promotion of the invention with greater security against having the invention stolen.

  • Provisional patents are not published by the USPTO, thus preserving the invention in confidence.

  • Multiple provisional applications may be consolidated in a single non-provisional application for patent.

  • Some inventors file a provisional patent application, or a series of them, if they want to establish their inventorship but believe that their invention, and particular embodiments of their invention, will continue to mature and/or evolve. These one or more provisional patent applications may then be rolled into a non-provisional utility application that may capture the full maturity of the invention.

 

Risks & Limitations:

  • A provisional application automatically becomes abandoned, by operation of law, when its pendency expires 12 months after the filing date.

  • Failure to file a non-provisional patent within the 12 month provisional application pendency period will result in the loss of the provisional application priority filing date.

  • An applicant whose invention is “in use” or “on sale” during or before the one-year provisional application pendency period will lose the right to ever patent the invention if the applicant allows the provisional application to become abandoned and does not either convert the provisional application into a non-provisional application or file a corresponding non-provisional patent application for the invention within one year of the use or offer for sale.

  • A claim for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date – whichever is later.

  • A provisional application cannot result in a U.S. patent unless one of the following two events occur within 12 months of the provisional application filing date: 1) a corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or 2) a grantable petition to convert the provisional application into a non-provisional application is filed.

  • Provisional applications are not reviewed on their merits.  Filing of a provisional patent does not guarantee that any patent rights will issue from a subsequent non-provisional filing.

  • The benefit of a provisional application is only applicable to subject matter that has sufficient support in the provisional application.

  • Some invention promotion firms misuse the provisional application process, leaving the inventor with no patent.

  • Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.

  • Provisional application is not available for design inventions.

Design Patents
 

A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. In general terms, a utility patent protects the way an article is used and works, while a design patent protects the way an article looks. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics. 

 

The requirements/tests for patentability of a design are:

  1. Subject Matter - Must be the ornamental design or configuration, not functionality. A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter. Similarly, a design for an article of manufacture that is hidden in its end use and whose ornamental appearance is of no commercial concern prior to reaching its end use, lacks ornamentality and is not proper statutory subject matter. Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a Design Patent Application. 

  2. Originality – not derived from a source other than the inventor. Clearly a design which simulates a well known, or naturally occurring object or person is not original.

  3. Novelty – the design must be new. The standard for evaluating the novelty of a design is the "average observer test:"  the overall appearance of the design in the eyes of an average, or ordinary, observer must be different from the appearance of any other single prior design.

  4. Non-Obviousness - whether "a designer of ordinary skill of the articles involved" or other closely related object would have found the design as a whole obvious at the time the design was invented.

  5. Ornamentality – the shape or configuration of a functional object may be protectable by a design patent if the shape or configuration is not dictated by the function of the object.

 

The term of a design patent is 14 years measured from the date of grant. The periodic maintenance fees associated with utility patents do not apply to design patents.