The United States Constitution empowers Congress to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. In accordance with the Constitution, the United States Patent and Trademark Office (USPTO) issues three different types of patents: Design, Plant, and Utility. Design patents are granted on ornamental aspects of an object. Plant patents are granted on asexually reproduced plant varieties. Utility patents are granted on machines, articles of manufacture, compositions of matter (chemical), and methods. Utility patents are by far the most common, with over six million granted to date.

Use of a patent attorney or agent is not required to file a patent application with the USPTO. But, patent law is very complex and takes many years of diligent study to master. Therefore, while an inventor is entitled to write, file, and prosecute a patent application, it is unlikely that the inventor will obtain the broadest coverage the invention is entitled to without using a patent attorney or agent.

Provisional Application

Provisional patent applications are the result of relatively recent legislative changes to the United States patent statutes. Provisional patent applications are not available for design patents. A provisional patent application need not include any claims and is never examined for patent ability. Provisional patent applications, by themselves, never mature into a patent, but instead automatically lapse one year after they are filed.

The provisional patent application can be converted into a non-provisional patent application or a non-provisional application can be filed based on the provisional patent application. A conversion must be completed before the provisional patent application lapses. If a non-provisional patent application based on the provisional patent application is filed before the provisional patent application lapses, the non-provisional patent application can claim the filing date of the provisional patent application. The term of the patent issuing from the non-provisional patent application would be based on the filing date of the non-provisional patent application. The delayed patent term feature of provisional patent applications has proven to be of particular interest to inventors with products expected to experience delayed market entry and/or prolonged market life spans (e.g. pharmaceuticals).

An advantage of filing a provisional patent application is that the filing fee is approximately 1/5 of the non-provisional patent application fee. The reduced fee feature is of particular interest to independent inventors who can use the one-year term of the provisional patent application to assess marketability of the invention before incurring the additional expense of a non-provisional patent application. Provisional patent applications are optional and an inventor may initially proceed with a non-provisional patent application if desired.

A disadvantage to filing a provisional patent application over a non-provisional patent application is that examination of the non-provisional application is delayed by the period between filing the provisional application and the non-provisional application. This delays the issue date and, thus, the enforceability of the patent rights.

Non-provisional Application

A non-provisional patent application is often referred to as a regular patent application. The non-provisional application is capable of maturing into an actual patent. The non-provisional application must contain claims and is examined for patent ability, unlike a provisional application.

Publication of Patent Applications Prior to Issuance

Non-provisional patents applications are now automatically published 18 months after filing. However, patent application owners have the right to elect to not have an application published when no international patent applications providing for 18-month publication and corresponding to the United States application have been filed and will not be filed. Publication, under certain conditions, provides a patent application owner certain provisional rights once the patent issues. Upon issuance the owner of the patent can receive a reasonable royalty for infringement of the patent during the period between publication and issuance of the patent. Design patent applications are not subject to the publication requirement.

Examination of Patent Applications

Before the USPTO grants patent rights to an applicant, the non-provisional patent application must undergo examination by the USPTO. A patent examiner, who is an employee of the USPTO, examines the patent application to determine whether the claims of a patent application are patentable. The time it takes for an application to issue after being filed can vary. Some applications issue in less than a year, while others can take three to four years or even longer. To some extent, the length depends on the workload of the particular examiner to whom the application has been assigned. To pass examination and issue a non-provisional patent application must satisfy three statutory requirements: utility, novelty, and unobviousness.

1. Utility

The first hurdle a patent application must clear is that of utility. Utility refers to two separate tests: statutory subject matter and usefulness. The statutory subject matter is set out in 35 U.S.C. §101. Section 101 states that to be patentable the invention must be a “ . . . process, machine, manufacture or composition of matter, or any new and useful improvement thereof . . .” The courts have further determined that printed matter, naturally occurring articles, and scientific principles are not patentable subject matter. The usefulness test simply requires that the invention have a credible use and not be frivolous.

2. Novelty

The second and usually more difficult hurdle a patent application must clear is that of novelty. Briefly stated, novelty requires that all claimed elements of an invention NOT be found in a single reference (e.g., publication or patent).

3. Unobviousness

The third and usually most typical hurdle a patent application must clear is that of obviousness. To be patentable an invention must be non-obvious. The criteria for a patent examiner to establish obviousness is (1) some suggestion or motivation in the reference(s) or in the general knowledge of someone of ordinary skill in the art to modify the reference or combine references to achieve the claimed invention, and (2) all of the claim limitations must be found in the references.

Issuance

After successfully satisfying the statutory requirements for patentability, the patent application owner will be notified of allowance of the patent application. An issue fee then must be paid, following which the patent will issue.

Patent Claims

Patent claims are the numbered sentences appearing at the end of an issued patent. The function of patent claims is to provide notice to competitors regarding the scope of the patent grant. The claims, therefore, define the legal scope of the invention, in a similar manner to the metes and bounds of a piece of real estate. The patent claims are by far the most important part of a patent. Patent claims are ordinarily of varying scope, from broad to narrow. The reason for claims of varying scope is that during the examination process or even after issuance, some claims may require cancellation due to the discovery of references unknown at the time of application, which would render a particular broad claim invalid. A claim of originally intermediate scope may eventually be the broadest claim in the issued patent.

Once a utility patent is issued, maintenance fees must be paid three times during the life of a patent to prevent expiration. Maintenance fees must be paid during the 3rd, 7th, and 11th years after issuance. Failure to timely pay the maintenance fees results in expiration of the utility patent. Plant and design patents do not require payment of maintenance fees.

Utility and Plant

The term of a utility or plant patent begins on the date of issue and ends 20 years after the filing date. Recent changes in the patent statutes provide for an extension of the patent term should prosecution, due to the fault of the USPTO, take more than three years from filing to date of issue. This guarantees a utility or plant patent term of at least 17 years.

Design

The term of a design patent is 14 years from the date the patent is granted.

Infringement of a patent is the unauthorized use, selling, making, or importing of a valid patented invention during the term of the patent. Patent rights are not self-enforcing; the patent owner bears the expense of protecting its rights. This may necessitate the filing of a lawsuit in the appropriate United States District Court.

Following expiration of a patent, for failure to pay maintenance fees or expiration of the full patent term, the invention enters the public domain. This means that anyone is free to make, use, sell, or import the claimed invention without liability to anyone.

There is no such thing as an international patent. There is such a thing as an international patent application. The United States and most major countries are signatories to the Patent Cooperation Treaty (PCT). The PCT provides for the filing of a single patent application. The PCT application process requires the applicant to designate and then select the participating countries in which the applicant wishes to acquire patent rights for the invention. After the applicant selects the countries, attorneys licensed in the selected individual countries are hired to continue the patent process in each country. Additional costs may accrue in generating translations of the PCT patent application, as well as, certain other fees. See the section on International Services for more information on the PCT application and other country applications.