BY KATIE FOSS, LEGAL COUNSEL AT EDISON NATION LLC
In this blog, the different types of patent applications are discussed. Remember, while this information is good for all aspiring inventors to understand, Edison Nation Medical takes on all responsibilities regarding patenting, trademarking and copyrighting, where applicable, for ideas that are successfully licensed.
There are various types of United States patent applications, and each comes with its own set of requirements. Most inventors will never experience filing a plant application for a cross-species of flora or have to deal with the Statutory Invention Registration, so this post will focus on the three most common types of applications: utility, design, and provisional.
Per the United States Patent and Trademark Office (USPTO), a utility application is filed for inventions that propose a “new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, it generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing.” Utility applications cover inventions that introduce novel methods and functionalities, which ultimately means they cover how an invention works rather than just how it looks.
Utility applications can be quite expensive and may take several years before an issued patent may be acquired. It is a highly involved and complex process and, as is true of all types of patent matters, it is best to have a licensed patent attorney guide you through his process to ensure the application is prepared and maintained properly. To remain active, issued patents are subject to maintenance fees. These fees increase in cost over time, and are due at 4, 8, and 12 years from a patent’s issue date. Utility patent applications are considered “non-provisional,” which is exactly what it sounds like. It is a patent application that is not a provisional application. Any patent application that is not a provisional application or a design application is often referred to by the USPTO as a non-provisional, but, to be clear, not all non-provisional applications are utility applications.
A provisional patent application, sometimes referred to as a “PPA” is a place-holder application. It is often referred to as a place-holder application because it is generally filed as a precursor to a utility patent application. Filing a PPA provides inventors with one year to prepare and file a utility application to protect their inventions. PPA’s are not examined, so they do not truly afford any patent protection rights. However, they do provide a priority date and allow you to use “patent-pending” status when referring to your invention. A priority date is extremely important in that the earlier your priority date, the greater your protection, as anything similar filed after that date is not considered prior art against your application.
PPA’s are often a good option for individual inventors in that they have a much lower filing cost, and they provide inventors with one year to fine-tune, market, test, etc. prior to committing to a utility application. But inventors must note that if you allow your PPA to lapse without filing a utility application which claims priority to the PPA, you will lose your rights to that early priority date. While you can re-file for a new PPA, assuming there has been no public disclosure of your idea, you will have to restart the process and get a new priority date.
By contrast, a design patent application is filed for “new, original, and ornamental design embodied in or applied to an article of manufacture, it permits its owner to exclude others from making, using, or selling the design for a period of fourteen years from the date of patent grant.” Basically, design patents cover the overall look of an invention rather than its functionality.
Design applications are generally less expensive than utility applications, and they also tend to have a faster examination period. They are often a good option for inventors who have developed a new look for something rather than a new method for doing something. While utility patents arguably offer more protection against potential infringers, design patents are an enforceable IP right and may be the right path for some inventions.
In sum, licensed patent counsel, including what is covered by an Edison Nation Medical licensing deal, is the best resource for selecting a patent path and navigating the complex process of patent prosecution. However, the more informed you are the easier it will be to understand your intellectual property and how to best protect it.
Keep inventing and check back next month for more information on intellectual property and how you can protect your ideas!