Different Types of Patent Applications

By: Mark R. Malek

My last article provided a brief overview of the patent system.  I also wrote another article about why patents are somewhat important.  This prompted me to reflect on my typical conversations with potential clients, and the questions that generally arise as to the different types of patents.  This article will attempt to outline my typical conversations with clients.

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.  I will discuss the benefits of filing a provisional patent application in my next post.

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 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.

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