The canny entrepreneur should have a solid understanding of the importance of IP. Here, Josh Gerben, founder of Gerben Law Firm, PLLC, explains the three different types of patents available to inventors in the US, and outlines how to apply for them.

A patent is a type of intellectual property that gives an owner the right to exclude others from making, using, or selling the invention in the United States or importing the invention into the United States, for a limited period of time. The United States Patent and Trademark Office, or USPTO, issues three types of patents:

  • Utility patents, which generally cover how an invention functions or how an invention is made.
  • Design patents, which cover the ornamental, non-functional features of an invention.
  • Plant patents, which cover certain newly discovered plants.

Utility patents

A utility patent is the most common of the three patent types. In fact, utility patents account for more than 90 percent of patent applications filed with the USPTO each year. The USPTO only issues utility patents for inventions that are both new and not obvious as compared to existing or known products, patents or publications, for example.

To qualify for a utility patent, the invention must fall within at least one of the following statutory categories:

  • Process
  • Machine
  • Manufacture
  • Composition of matter
  • Any new and useful improvement thereof

When filing a utility patent application, inventors have two options, at least initially — a provisional patent application or a non-provisional patent application. A provisional patent application will not be examined by the USPTO, and therefore will not issue as a utility patent, unless a corresponding non-provisional patent application is timely filed, i.e., within one year of the provisional filing date. Provisional patent applications often serve the purposes of a being a placeholder, for example, while you fine tune your invention or raise capital. Importantly, while your provisional patent application is on file, you can claim “patent pending” status for the invention disclosed in the application.

Once a non-provisional application is filed, the USPTO will assign a patent examiner to your case who will conduct a search and examination of the application. The patent application process is often lengthy, and your patent application can remain pending for up to 2 or 3 years. If a utility patent is ultimately issued by the USPTO, it will carry a term of 20 years from the earliest filing date, with maintenance fees due at 3.5 years, 7.5 years and 11.5 years from the date of issuance.

Design patents

Design patents cover the ornamental or non-functional aesthetic features of an invention, or otherwise, the look or shape of the invention. As an example, the non-functional shape of a computer mouse may be the subject of a design patent application, so long as that shape is new and nonobvious.

Design patents are often easier to obtain than utility patents, although the application process is still detailed and sometimes just as lengthy. There is no standardized form for a design patent application, although applicants are required to submit clear and detailed drawings to the USPTO, often showing the invention from all or multiple angles. In some limited cases, black and white photographs may be used in place of drawings, but only if photographs are the only practicable medium for illustrating the invention. Design patents have a term of 15 years from the date of issuance, and no maintenance fees are necessary.

Plant patents

The USPTO grants plant patents to inventors that have invented and reproduced a new variety of plant. The new variety must be “asexually” reproduced, which means not grown from a seed but created through another process, like grafting, budding, or rooting of cuttings. The plant must also be unique and not found in the wild. As just an example, the tree that was created by researchers at the University of Minnesota to grow the popular Honeycrisp apple was covered by a (now expired) plant patent, U.S. Patent No. PP7197.

Plant patents are not as common as utility and design patents, and account for only a small portion of patents issued by the USPTO each year. Because of the extensive examination process required for a plant patent, it can take 2 years or more to gain approval from the USPTO. Similar to a utility patent, a plant patent will last for 20 years calculated from the earliest filing date.

Apply for a patent at the USPTO

As an inventor who has invested both time and money developing your product, you understand the importance of protecting that invention. Oftentimes, the best way to protect what you have created is through a patent application filed with the USPTO. Keep in mind that your invention may qualify for both utility and design patent applications, assuming it has unique functional and ornamental characteristics. As an example, different aspects of a new vacuum cleaner may potentially qualify for both a utility patent application and a design patent application, such that the operation of a unique brush head may fall within a utility patent application, whereas its streamlined handle design may fall within a design patent application.

As the owner of a US patent, you will have the legal right to stop or exclude others from making, using, or selling the invention in the United States, or importing the invention into the United States. You may also want to consider filing similar patent applications in other, foreign countries, particularly if you plan to sell or manufacture the invention outside of the United States. You can do so by filing a patent application directly within each country, or, for purposes of a utility patent application, you can submit an international patent application via the Patent Cooperation Treaty or PCT. Currently there are over 100 member countries of the PCT, although the final decision to approve or reject the patent application is still made by each individual country.

In any case, keep in mind that a foreign utility patent application, including a PCT application, must be submitted within 12 months of your earliest priority date, e.g., your USPTO filing, whereas a foreign design patent application must be filed within 6 months of the earliest priority date.

Work with an experienced IP attorney

You should work with an experienced patent attorney to complete the patent application process and to assist with the various detailed legal decisions that will likely need to be made along the way.

For example, a patentability search is often a recommended first step in the patent application process that can uncover potential prior art patent references that may impact the patentability of your invention. An experienced patent attorney can assist with the patentability search and advise you on the results thereof. For instance, if a patent reference disclosing a similar invention is found, you can work with your patent attorney in an effort to craft a patent application that may be able to focus on the aspects of your invention that are truly unique.

Furthermore, as your patent application is examined by the USPTO, you will likely need to make some amendments to the claims and present legal arguments in response to office actions issued by the assigned USPTO patent examiner. Work with an experienced patent attorney to ensure that this process is done properly and in a timely manner.

Whether you are looking to obtain a utility patent to protect the function of your invention, a design patent for its unique look, or a plant patent for a newly invented plant, begin the process as soon as possible to ensure your unique idea is protected.

Gerben Law website

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