This article is an introduction into some of the basics on the type of applications one needs to consider before applying for a patent. The types of patents are Utility Patents, Design Patents, or Plant Patents, while applications take a wider variety of forms depending on your goals. These include Provisional vs. Non-Provisional applications, along with international filings under the Patent Cooperation Treaty (PCT) and National Phase applications.
Utility, Design, and Plant Patents
Utility patents are the most common type of application. These protect what an invention is and how it works. These issue from Non-Provisional Utility applications and provide 20 years of protection. The claims for a utility patents are written descriptions.
Design patents instead cover only how an invention looks. A design patent differs from a utility patent in a number of ways, the primary one being that a design patent covers the ornamental design of an article of manufacture. As a result, the claims for a design patent are primarily drawings. If a design is “primarily functional” then it is ineligible for a design patent and can only be protected by a utility patent. Design patents have almost all the same requirements as utility patents, including novelty and non-obviousness. If a design patent is granted it only protects for 15 instead of 20 years.
Plant patents are issued by the USPTO, just like the other forms of patents. Plant patents also require that the patent is novel and non-obviousness. Plant patents are valid for 20 years from the date of filing, just like utility patents. Plant patents are governed by two statutes: the Plant Patent Act (PPA) and the Plant Variety Protection Act (PVPA). The PPA allows new and distinct varieties of plant produced asexually, unless it was discovered in an uncultivated state. The PPVA conversely allows for sexually reproduced plants to earn protection. PVPA certificates however are not administered by the USPTO, but instead are overseen by the Department of Agriculture.
Provisional vs. Non-Provisional vs. PCT
For Utility and Plant patents there are two kinds of applications, provisional and nonprovisional. A provisional application is relatively quick and inexpensive and allows an inventor to establish a filing date for their invention, which can then be used in a later non-provisional application. A provisional application does not however lead to a full examination, and is automatically abandoned after 12 months, it is only used as a placeholder for a later full application. A provisional application need not contain any specific claims and does not reduce the patent term of any application that uses it to establish a filing date.
In order to eventually obtain a full patent an inventor needs to at some point file a non-provisional application. In order for a non-provisional application to be complete it needs to include a petition, a specification, at least one claim, any applicable drawings, an inventor oath or declaration, and any fees the Office requires. Non-provisional applications can be filed with the United States Patent and Trademark Office (USPTO) either electronically through the Office’s EFS-Web system, or physically by hand delivering an application or sending the application through the U.S. mail; though physically delivered applications must pay an additional non-electronic filing fee.
The final kind of application is the PCT (Patent Cooperation Treaty) application. A PCT application allows an inventor who wants to protect their invention in multiple countries to do so. Specifically, a PCT application acts as a 30-month placeholder in all the applicable countries (which includes every major industrial country). Eventually the inventor still has to pick which specific countries they want to file in, and individually file in those countries, but this time period gives the inventor time to decide where it makes sense to file as well as figure out the logistics such as raising money.
The second stage of PCT Procedure is what is called the national phase, which follows the international phase. During the national phase the applicant processes the international application before the Office of each country that they would like protection in. Generally individual examination is delayed until the end of the 30-month international period. The national phase can only begin once the applicant performs certain tasks, such as paying any required national fees, or filing translations when applicable. Any required tasks must be performed within the allotted time period.
Most Offices require that if a non-resident applies for a patent they must be represented by an agent, while others require non-residents to have an address for service in the country. In any case the World Intellectual Property Organization (WIPO) recommends that an applicant always appoints an agent to perform the required tasks to enter the national phase. In order to appoint such an agent, the applicant must sign to grant them power of attorney.
Knowing what type of applications are available is important in seeking protection for inventions and ideas. A trained patent attorney can help navigate through the complexities of the system, and assist in creating a plan to gain the best protection possible for the inventors specific needs.
For a more in-depth look at these and other patent issues, refer to “U.S. Patent Law For People In A Rush.”