Patents

7 minute read

There are three different types of patent applications that can be filed. Please select from the three options to learn more.

1. Provisional Patent

2. Design Patent

3. Utility Patent

PROVISIONAL PATENT

Securing a Provisional Patent

Working with provisional patent lawyers will provide you with an expedient way to establish a priority date for an invention with the United States Patent and Trademark Office (USPTO). It is an effective and relatively cost-friendly way to safeguard your place in line with the USPTO while you decide whether to file a regular patent application.

A provisional patent application by itself is not a patent, but simply a holding place. To receive the benefit of the earlier provisional patent application date, a regular patent application must be filed within one year. Importantly, the 12-month period cannot be extended. Filing a provisional patent application also allows you to immediately start labeling your invention as “patent pending.” (See: Provisional Patent Applications Overview)

Can I complete a provisional patent on my own?

It’s possible but risky. Patent law is one of the most complex areas of law in the U.S; it can take a regular person weeks, even months, to learn the ins and outs. If you have that type of free time and dedication then you can certainly try to apply on your own. Even so, there’s still a chance of making a small mistake that can have a drastic impact by delaying your priority date and spending even more money on a patent attorney to clean up your mess. With patent law, it’s just not worth trying to do it on your own.


Pattents
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What are the requirements for a provisional patent application?

The provisional application requires a specification satisfying 35 U.S.C. § 112, except claims are not required. The specification must allow for someone skilled in the art to be able to practice the invention, and must disclose the best mode known for practicing the invention. Also, a drawing must be provided if needed to explain the invention. The provisional application must also identify the inventors who contributed to the subject matter disclosed in the application. Lastly, a cover sheet and the necessary filing fees are required.

Are the provisional patent applications public or are they kept confidential?

All provisional patent applications received at the USPTO are kept secret until that patent “Issues.” When an application is issued (or approved), the entire application file becomes public. Inventors are encouraged to use “patent pending” on items that are in the provisional patent application phase in order to provide some type of warning to possible infringers.

Can I submit a provisional patent for a design?

No. Provisional applications for patent may not be filed for design inventions.

What is a non-provisional patent application?

An applicant who files a provisional patent application must file a corresponding non-provisional patent application within 12 months to benefit from the earlier filing date. The non-provisional application must specifically refer to the provisional application. The USPTO will compare the non-provisional patent application with the provisional application and if the subject matter of the descriptions is determined to be the same in both applications, the USPTO will grant the non-provisional application with the earlier filing date. (See: Non-Provisional Patent Applications Overview)

Design Patent
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DESIGN PATENT

Design patents will help you protect the unique shape, look, and form of your products that are independent of the function or usefulness of your invention covered by utility patents. Furniture, packaging, fashion articles are typical subjects for design patents.
Think of the classic Coca-cola glass bottle, Crocs shoes, or the multi-color triangular shaped Mac computers as examples of products that have design patents. Filing a patent application for your product design is a smart way to enhance the value of your offering.

A design patent lawyer will help you protect the unique shape, look, and form of a product. The design patent does not focus on usefulness and instead focuses on the ornamental design of the invention. If the product has no unique or distinctive shape or appearance at the time it was created then it cannot obtain a design patent. A design patent allows the owner to exclude others from making, using, copying, importing a design substantially similar to the design claimed in the design patent.

Design patents are granted for the term of 15 years from the date of issuance (14 years if issued before 12/19/2013) and are not subject to maintenance fees. Like all patents, a design patent application should be filed with the assistance and guidance of a patent attorney because of its complexity.

Why should I get a design patent?

A design patent is a great option for those with unique, ornamental designs for manufactured products. If your design is different enough that it is eligible for protection, you can receive a design patent on it. Common industries include apparel, furnishings, food and drink containers, and electronics.

You should consider applying for a design patent if your item has an ornamentally different design that qualifies for patent protection.

Design Pattent Application
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What is required in a design patent application?

The elements of a design patent application should include: (1) the Preamble; (2) a cross-reference to related applications (if any); (3) a statement regarding federally sponsored research or development; (4) a description of the figure(s) of the drawing; (5) a feature description; (6) a single claim; (7) drawings or photographs; (8) an executed oath or declaration; 9) the filing fee, search fee, and examination fee.

Can I submit a provisional patent for a design?

No. Provisional applications for patent may not be filed for design inventions.

Can I apply for utility patent and design patent simultaneously?

Yes. While a utility patent protects the functionality of a product or process, a design patent protects the unique visual elements of such product or process. As a result, design patents are made up of drawings that show the invention and, unlike a utility patent application, contains very little text.

What’s the difference between a design patent and a trademark?

A design patent protects the physical appearance of a product whereas a trademark protects the symbols or words used to identify the product as coming from a particular business.

Is it possible to submit multiple designs in a design patent application?

No. Each application is limited to a single, distinct claim (design). If you intent to submit multiple versions of a design then you can attempt to include them but it’s possible that the USPTO may restrict your application to one version of the design and require additional applications for the other versions.

What kind of designs do not qualify for a design patent?

The following patents cannot receive patent protection: 1) purely functional designs; 2) designs that are intended for items that cannot be seen; 3) designs that have no fixed appearance, and 4) colors of an object.

How much does a design patent cost?

The basic USPTO filing fee for a design patent application is $760 for a large entity and small entity’s fee is $380. To assist with preparing documents and filing the design patent application, our typical costs are around $1,500-$3,000.

Utility Patents
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UTILITY PATENT

What Is A Utility Patent?

A utility or “non-provisional” patent protects the invention or creation of a new or improved product, process, or machine. To obtain a utility patent, the invention must be useful and serve some practical or functional purpose and be non-obvious. Filing a utility patent application requires a tremendous amount of legal and technical expertise to define and layout the parameters of the invention and negotiate with the patent office examiner. Our experience in preparing applications is why so many of our clients turn to us to draft and file their patents.

A utility patent protects the creation of a new or improved product, process, or machine and is by far the most common filed patent application with the United States Patent and Trademark Office (USPTO).

To obtain a utility patent, the invention must be useful and serve some practical or functional purpose. While utility patents are more expensive than design patents, which protect a product’s ornamental design, they typically provide broader patent protection.

A utility patent expires 20 years from the application filing date, subject to the payment of appropriate maintenance fees. Filing for a utility patent application on your own is no easy task and carries too much of a risk for making a mistake. That’s why so many turn to the top-notch patent attorneys on Lloyd & Mousilli for their patent needs.

What does a utility patent application require?

Most utility patent applications include:

1) a description and claim of the invention (called a specification);

2) drawings and the explanation of them (if necessary);

3.) a declaration or oath by the inventor;

4) fees for the filing, search, and examination of the patent

All non-provisional utility patent applications have to be in English, or have an English translation with a statement that confirms that the translation is accurate, and a fee.

What is public disclosure?

Public disclosure is the making public of a concept or invention. In the U.S., an inventor’s public disclosure of their work made less than one year prior to their patent filing date will not count as prior art. This is referred to as a “grace period” for the inventor’s own disclosure. The grace period allows others to publish similar work or work that builds off your own work. These intervening publications can prevent or prevent patentability of your invention.

What qualifies for utility patent protection?

Utility patent protection extends to:

1) machines;

2) articles of manufacture;

3) processes, and (chemical) compositions of matter.

Can I submit a provisional patent for a design?

No. Provisional applications for patent may not be filed for design inventions.

How long does it take to receive utility patent protection?

While the length is subject to a myriad of factors, it generally takes between two and three years for the USPTO to determine whether to issue the patent.

Can computer software qualify for utility patent protection?

Yes the software may qualify for a patent if the patent application produces a useful, concrete, and tangible result. The lawyers on Lloyd & Mousilli have helped many software startups obtain utility patents.

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