US Patent and Designs
What is a U.S. Patent?
A U.S. patent for an invention is the grant of a property right to the inventor(s), issued by the U.S. Patent and Trademark Office. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “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.
An invention cannot be patented unless the invention is:
- useful, and
There are different types of US patents:
- Utility patents protect the way an article or process is used and works
- Design patents protect the way an article looks
- Plant patents protect asexually reproduced plants
Both utility and design patents may be obtained on an article/product, where appropriate.
USA. For protection outside of USA see Worldwide Patents & Designs.
Utility and Plant Patents: 20 years from filing
Design Patents: 14 years from grant
Utility: Yes, during life of utility patent. Failure to duly pay these fees will result in the patent expiring earlier.
Design and Plant Patents: No
How to get a U.S. Patent?
To get a U.S. patent, a patent application must be filed in the U.S. Patent and Trademark Office.
There are four types of U.S. patent applications:
- provisional patent application
- non-provisional utility application (a regular utility application)
- design patent application
- a plant patent application.
Provisional Patent Applications
A provisional patent application enables you to get a filing date by lodging a disclosure of the invention. You can then rely on this filing date later when filing a subsequent regular non-provisional utility application provided this regular application is filed within a year AND provided the provisional application is drafted as a full and complete application to support the regular application filing. Unlike a regular application, the provisional patent application does not have to be in a rigid form. Provisional applications do not issue as a patent but rather serve as a basis for filing a regular utility application. Provisional applications are also useful in certain circumstances such as where publication or sale of the invention is immenent and unavoidable and there is simply no time to prepare a formal regular application beforehand. In cases where a provisional is not drafted as a full and complete application, a regular application can be filed as soon as possible thereafter to limit any risk of the regular application not being sufficiently supported by the provisional application.
Non-provisional utility patent application
A non-provisional utility patent application is used to obtain a utility patent for protecting the function the invention performs. This application must meet strict formal and substantive requirements and includes a technical description accompanied by professional patent drawings and a set of claims that define the scope of your invention. A utility application can be directly filed at the USPTO. It can also be filed via an international patent application process (see Worldwide patents)
Design patent application
A design patent application contains a brief specification accompanied by professional patent drawings of the design.
After a non-provisional utility application has been submitted to the USPTO, it is initially examined to determine if it complies with formal requirements. The application will publish after 18 months. At about this time, the Examiner will eventually search and examine the application to determine either that the application is allowable as filed or that the application in it’s present form is rejected.
Most patent applications are initially rejected by the Examiner on grounds that the invention is either not novel or is unobvious in view of earlier art. The Examiner will explain the rejections and we will work with you to determine how best to overcome the rejections. We may be able to construct arguments in support of patentability of the invention with the patent application in it’s current form. Otherwise, we will have to amend the application to narrow the invention and construct arguments based on the amended application.
Once a response has been submitted, the Examiner will again review the application documents in conjunction with the submitted response. At this stage, the Examiner may allow the application in which case the issue fee is paid and the patent issues. Otherwise, the Examiner will reject the application again. This second rejection is often a Final rejection. However, all is not lost. A request for continued (RCE) examination can often be filed to continue the prosecution process. Many applications are eventually allowed by continuing prosecution in this manner. As an alternative to filing an RCE, the Final Rejection can be Appealed.
Insofar as design applications, prosecution follows the same general format as for utility applications except that design applications are not published.
It is unnecessary to have a confidentiality agreement (non-disclosure agreement (NDA)) in place before disclosing your invention to me. Under US law, I am legally bound to retain in the strictest confidence any confidential information that you provide. These confidentiality requirements apply irrespective of whether I will ultimately represent you or not.
For other situations, when you are communicating to someone about your invention or information related to it, it is always helpful to have a confidentiality agreement in place. Note that if the invention is disclosed to the public before filing an application, patent protection cannot be obtained in most countries outside of the United States.