Behind any great product is an inventor - and a patent.
Patents are a powerful form of intellectual property protection. They can save inventions from infringement, provide lucrative licensing and monetization opportunities, and give your new invention a heightened level of credibility to attract inventors.
While there are many upsides to receiving a patent, the process towards obtaining one is not for the faint of heart. The process requires time, energy, and money and can be confusing for a first time inventor. The way to offset the negative aspects of this process is to know what you’re getting into from the outset, have a detailed plan in place, and have the right legal team behind you.
One way to start is to learn the types of patents and their respective application processes.
What are the kinds of patents that I can obtain?
There are three types of patents: utility, design, and plant.
Utility Patents
The first category is a utility patent. These protect the functionality of any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvements. Utility patents grant a federal right of exclusive use to the invention for up to twenty years. These are the most common type of patent.
However, utility patents are the most difficult to obtain. J.D. Houvener, founder & CEO of Bold IP, says that: “The utility patent process is longer and more rigorous than the other two types because it demands much more specification and description in the set of numbered claims that summarizes your invention.”
Design Patents
The second type is a design patent. These patents protect novel ornamental or aesthetic designs, or how something looks rather than how something functions. Design patents give inventors an exclusive right to use for up to fifteen years from the date of issuance. Revisions and alterations to simple inventions often fall under this category.
For example, a design patent can cover a new specific curve on a hairbrush but cannot protect the functional aspect of the hairbrush itself. To qualify for a design patent, the invention must be “object of manufacture”, or something real and tangible that can be touched and felt.
The downside with a design patent is that while one can protect the aesthetic feature of a product, an inventor is unable to protect any functional aspect of the product. In addition, the drawings necessary for the design patent application demand more particularity than those necessary for utility patents, because there are more specific requirements for shading, dash lines, solid lines, etc. The upside is that design patents require only one claim. In very few words, an inventor can discuss his or her ornamental design- the biggest focus is on the drawings.
Plant Patents
The third, and least common type, is the plant patent. These protect new varieties and species of plants and organic structures of living organisms. The plant patent is similar to utility but it governs grown horticulture. Plant patents are valid for up to fifteen years from the date of issuance.
Only about 30,000 plant patents have been issued. The inventor of the new plant species has to have a new, novel, lab grown plant that can be reproduced by grafting. There are also particular rules about only submitting specimen that are able to reproduce asexually in a lab.
To qualify for a plant patent, the inventor must be able to prove that his or her plant has utility, novelty, and can be reproduced by artificial grafting in a lab setting.
The Application Process
After determining the patent classification that your invention falls under, the next step is to file the patent application.
It is best to file your patent through the US Patent and Trademark Office (USPTO) EFS web system because the USPTO charges more to send in a paper application. It’s easier for them to file, sort, and manage electronic applications.
After sending in an application, the next step in obtaining a patent grant is passing an eligibility test by the U.S. Patent and Trademark Office.
The USPTO has established five elements for patent eligibility: (1) The intention must be a process, machine, or object; (2) the invention must have utility; (3) the invention must be novel or new; (4) the invention must be non-obvious; and (5) the invention must not have been disclosed to the public before the patent application. An invention must qualify under all of these elements in order to move forward in the patent process.
Best Practices for First Time Patenters
Houvener says that for a product invention, “an inventor should secure both a utility and a design patent. It may be a functional new product but you will want to protect how it looks. How is it unique in scope and in design? File both so you will not fall prey to copycats.”
As long as you have conceived of the invention and can describe it sufficiently with words and illustrations to enable any person skilled in the relevant technological area, then you should file your patent application as soon as possible.
Some inventions that are indeed different but happen to be similar in nature or subject matter may appear to be the same. It is therefore imperative that the application—especially the list of claims— illustrates the distinctive properties and functions of an invention as clearly as possible.
Provisional Patent Applications
Seeking a utility patent but don’t quite have a prototype ready? Houvener recommends first starting by filing a provisional patent application.
In filing a utility patent, an inventor can file both provisional and non-provisional patent applications. An approved provisional patent application (PPA) indicates that a patent is pending. While a PPA does not grant legally enforceable rights, it can preserve an early effective date and mark an inventor’s territory on that product. To receive a PPA, an inventor must file an application that adequately describes how to make and use his or her invention.
A utility patent is the same thing as a non-provisional patent application (NPA). A non-provisional application is more formal than a provisional patent application. An NPA must contain all sections of the claim in great detail, including a brief description of the product, drawings, summary, background, field of invention and a drawing. Unlike the provisional application, the non-provisional application must point out and distinctly claim the invention they are claiming is their own.
Then, the inventor must file their utility patent one year after the provisional. During this period, an inventor should focus on R&D, marketing strategy, consumer testing, etc- anything that will help a product achieve market fit once it hits the shelves. Houvener recommends that inventors use this year-long ‘grace period’ wisely to think over their inventions.