Camille L. Martinez
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Patent Basics Guide
You have probably heard someone say that a company has a patent on something or that some new widget is “patent pending”, but what does all of that mean? Contrary to popular belief, there are actually three different types of patents (Utility Patent, Design Patent, and Plant Patent). Each type of patent has unique application filing requirements and protects different aspects of a new invention, design, or plant.
If you are thinking about filing a provisional or utility patent application, it is usually a good idea to perform a patentability search, either yourself or professionally, before you file a patent application. Generally, the cost for a full professional patentability search and an opinion or patentability report will cost from about $800 to about $1500 or more, depending on the area of technology (i.e. computer software and technical electronics are often more expensive than a basic mechanical invention). A search is not required but it will give you a better sense of your chances of success in obtaining an issued patent.
In general, a U.S. patent is an intellectual property right granted by the United States Government to the patent’s owner. Once something is patented, the owner of the patent can exclude others from making, using, offering for sale, selling or importing within the United States an invention or design for a limited amount of time (typically 20 years from filing date for a utility patent or 15 years from grant for a design patent). This exclusive grant is given in exchange for the inventor disclosing how to make and use the invention. Because your patent will automatically be published the day it issues as a patent, once your patent protection expires, it is open to the public free of charge and anyone can then make, use, sell, or import the invention without paying you anything.
Simply because you filed a patent application and paid the required patent office fees does not mean that you are automatically entitled to a patent. Provisional patent applications will never issue as a patent because they are applications that automatically expire after 12 months (more info below) and are not actual issued patents. The patent office rejects most of the other, non-provisional, patent applications at least once, and the majority of those are rejected two or more times. Sometimes, you will argue with the patent office until you are blue in the face while you point out the various reasons why you believe that your patent application should be allowed. Right now, on average, the patent office never agrees to allow about 35% of the utility patent applications that are filed, and those applications are thus eventually abandoned. But, don’t let this number deceive you, it is the total average of all pending applications and it does not show that some types of patent applications are rejected at a far higher rate than others (computer software patent applications for example). This percentage also does not explain that the remaining 65% to 70% of all pending applications also includes all currently-rejected applications – even those that have been continuously argued back-and-forth with the patent office for several years but have not actually been abandoned.
Once a patent application is filed, you cannot add new matter to it. For example, if you file a patent application for your invention and then you figure out some really great improvement or useful change to the invention, you cannot amend your patent application to add that new information. The only way to have those improvements included in a patent application is to file a new patent application that includes those improvements.
The Four Different Types of Patent Applications
1) Provisional Patent Application
I said that there are three different types of patent applications, but actually, there is a fourth type that does not count as an actual patent called a “provisional patent application.
A provisional patent application is the only patent application that cannot ever become an issued patent without taking other steps. This is because a provisional application is a quick and inexpensive way for inventors to establish a U.S. filing date and have “patent pending” status for their invention. The inventor can then later file a nonprovisional application (a.k.a., a “utility patent application”), which can eventually mature into a utility patent. A provisional patent application is merely a placeholder – not a patent. A provisional patent application automatically expires twelve months after its filing date. It is not substantively examined by the patent office. It is not an actual “patent” and it can never become a patent on its own – it must be converted to a non-provisional application or you must file a non-provisional application within one year of the filing date of that provisional application and claim the benefit of that provisional application. Further, because it is an application and not an issued patent, it is impossible for anyone to infringe it and you thus cannot sue anyone for making and/or selling an invention as described in your provisional patent application. Rather, a provisional application is a placeholder for a formal utility application and provides you with a comparatively inexpensive way to obtain an early filing date. An inventor who decides to initially file a provisional application must file a corresponding utility patent application, or a patent-cooperation treaty application, within 12 months of the filing date of the provisional application in order to obtain any benefit of the provisional application.
Because a provisional application is a less formal placeholder for a utility patent application that is to be filed at a later date, and because it is not substantively reviewed by the patent office, even the most hastily-thrown together and the poorly-drafted provisional application will usually pass muster and be accepted by the patent office. And, the instant that the provisional application is filed, the invention is official “patent pending.”
The entire point of filing a provisional application is so that you can establish a date of filing for a non-provisional patent application that you will file within the following 12 months. However, you only receive the effective filing date of the provisional application for information that was actually disclosed in your provisional application. So, if you tossed some information about your invention together at the last minute and sent it off as a provisional application, but you didn’t have time to include all of the different aspects of your invention, then your provisional application is likely to be only marginally useful in the long run. Thus, even though a provisional patent application is low-cost and can be very informal, you should nonetheless spend time to make sure that it is as comprehensive as is reasonably possible.
2) Utility Patent Application
A utility patent is the most common type of patent. A utility patent is granted to a person who invents a new and useful article, device, or process. For example, a new type of electrical or mechanical device can be protected by a utility patent. New processes or methods can also be protected by a utility patent – such as a new method for desalinating water. A utility patent application is examined by a patent Examiner and may be issued as a utility patent if all the requirements for patentability are met. A utility patent application protects a new and useful article, device, method of manufacture and/or process. This type of patent is typically in force for 20 years from the filing date of the utility patent application.
There are two main parts of a utility patent application, the specification and the claims. The specification includes the written description of the invention and drawings. One of the patent office’s requirements for the specification is that it must be written with sufficient detail to “enable a person of ordinary skill in the art to which the invention pertains, to make and use the invention.” The specification should be full, clear, and concise. The claims are the portion of the patent application that define the scope of your invention and are primarily what you will end up arguing back-and-forth with the patent office about. The claims constitute only a short list of some text at the end of your patent application, the exact wording of your claims is immensely important and highly legalistic. The decisions relating to patents of all past court cases before the court of appeals for the federal circuit and the U.S. supreme court determine how each of your claims are interpreted. The claims portion of the patent applications is the section that is the most in flux and requires the most skill in drafting. Because the patent rules and laws are always changing, particularly regarding the claims, you should hire a competent patent attorney to draft at least the claims portion of your patent application.
Once your application is completed, your attorney will file it with the patent office. This marks the beginning of what is often a long and slow process. Due to the current backlog at the patent office, you can expect to wait patiently for the next year or more before a patent examiner at the patent office takes a look at your patent application. Patent examiners are the employees of the patent office who are responsible for reviewing patent applications and deciding if the applications should be rejected or should be allowed to issue as patents. Each patent examiner is assigned to a specific area of technology and reviews only those patent applications that fall into that narrow scope of technology. For example, a patent examiner may review only patent applications that are related only to metal shelving, while another patent examiner may review only patent applications that are related only batteries.
Generally, about 90% of all patent applications that are filed will be rejected on first review. So, you should expect that your patent application will be rejected at least once and probably a few times – it’s normal and to be expected. Each time a patent Examiner issues a formal correspondence to you regarding your application, such as a formal rejection, the correspondence is referred to as an “Office Action.” The Office Action indicates that the patent office has taken some action with regard to your application.
Do not let the fact that your application will likely be rejected scare you. The initial rejection of your application marks the beginning of the “patent prosecution” phase of your quest for a patent. The term “patent prosecution” refers to the back-and-forth correspondence between the patent examiner and your attorney.
If your application does not receive an office action and is allowed without a single rejection, that can mean that the claims that were originally filed in your application were too narrow and you may have been able to obtain even broader claims. If your claims are narrow, then they afford you less breadth of protection than you would have with broad claims. The narrower that your claims are, the easier it is for a competitor to overcome your patent by changing some aspect of their competing product in order to avoid your patent. This is referred as “designing around” your patent.
Once your utility application has been allowed, you have paid the issue fee, and your application has been formally issued, you will receive the “letters patent” – a piece of paper from the patent office stating that your invention is patented. Then, about 3.5 years, 7.5 years and 11.5 years after your patent has issued, you will have to pay increasingly expensive “maintenance fees” to the patent office in order to keep your patent alive.
3) Design Patent Application
A design patent protects a new and original ornamental design of a useful product. For example, a design patent can protect the shape of a bottle or the pattern on the bottom of a shoe or the ornamental design of a neat-looking birdhouse. It only protects the ornamental design and not the function or the utility of the useful object. In other words, a design patent protects the appearance of an article, so the subject of a design patent can be a configuration or shape of an article, a surface ornamentation applied to an article or the combination of configuration and surface ornamentation. This type of patent remains in force for 15 years from the grant date of the patent – assuming the design patent application was filed on or after May 13, 2015.
Because design patents protect the look of something, the drawings for a design patent are highly important. In fact, the drawings form the majority of the application in a design patent application. The drawings in a design application need to show every portion of the ornamental design. Thus, such drawings typically include a front, back, left, right, top, and bottom drawing. Usually, one or more elevated perspective views of the invention are also provided.
On average, design applications tend to be much simpler, less expensive, and quicker to obtain an issued patent than most utility patent applications. Often, if you have done a good job on the drawings, the very first time that you receive a substantive response from the patent office, it will be in the form of a Notice of Allowance and you will not need to argue your patent application back-and-forth with the patent office. Nonetheless, rejections are also common for design patent applications but occur less often than is the case for utility patent applications.
Unlike utility patents, the patent office does not impose recurring maintenance fees after design patents have issued.
4) Plant Patent Application
A plant patent protects a distinct and new variety of plant, which is asexually reproducible. This is the least common type of patent. A plant patent protects an inventor’s right to exclude others from asexually reproducing, selling, or using the reproduced plant. The grant generally lasts for 20 years from the date of filing the application.
If you would like to discuss further details of the patenting process or specifics about your invention, please call Justin Jackson at (505) 998-6135 to schedule a reduced-fee initial consultation.
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