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What Kind Of Patent Should I Pursue?
Mark Levy

Since 1790, the U.S. government has granted over 8 million patents. Some, like the telephone, incandescent light bulb, copier and laser not only enriched their inventors but changed the way we work and live. While many inventions reflect humbler ideas, they are no less patentable.

Unbeknownst to many inventors, changes to U.S. Patent Law over the past 200-plus years are as significant as the new technologies embodied in the millions of patents granted.

Under U.S. patent law, three types or classes of patent protection are available today - utility, design and plant. While each has its subtleties, basically all three classifications:
  • Require novelty, usefulness and non-obviousness
  • Exclude others from making, using, or selling the invention for a limited time
  • Allow manufacturers other than the patent owner to produce and sell the product once its patent has expired
The purpose of this article is to give you a better handle on each patent class, and when (or if) they should be used.

The Three Patent Classifications

1) Utility patent

When most people use the word patent, they're usually referring to the utility patent - the most commonly applied for and granted. Adding to the confusion is legalese perpetrated by us lawyers. In addition to being called utility patents, they're also known as full utility patents and sometimes concept patents. They all refer to the same thing. Of the 3,500 U.S. patents awarded every week, the vast majority - over 3,000 - are utility patents.

If it isn't confusing enough keeping track of three classes of patents, you should also know the utility patent covers four categories of inventions. To be granted a utility patent, inventions must fall within one of these categories:
  • Method or process - This can include a new business method, a chemical process, a unique software program, or even a new cake recipe. It covers anything that describes a process from A-Z.
  • Apparatus - These are devices with moving parts such as ballpoint pens, sewing machines, photocopiers, robots and, yes, mousetraps. Even if all components of a new device are off the shelf, their combination could be new and therefore patentable.
  • Article of manufacture - Usually if an item has no moving parts, it's an article of manufacture. These range from wire paper clips to huge sheets of metal formed into car roofs; plastic products also are fair game.
  • Composition of matter - Inventions in this category range from biotechnology, to pharmaceutical drugs, to film processing solutions and baths. Inventions could be lower cholesterol butter, stronger glue, faster pain relievers, or cleaning solutions made with orange peels, which by the way is an ingredient used in real inventions.
Compared with the other classes of patents which I'll get into, utility patents have very few disadvantages. But there are factors to consider: First, preparing the utility patent application is time consuming. Next, rigorous requirements govern what you can include in the application, although I consider these rules an advantage protecting the inventor. Finally, long lead-time - typically two years or longer - exists from the application filing to any patent award.

Once granted, a full utility patent remains in effect 20 years from the date the patent application was filed, as long as all maintenance fees are paid. Patent filing fees change periodically, at least bi-annually. And once a patent is issued, maintenance fees (which you must pay to keep the patent in effect the entire 20 years) also come into play.

As of March 2013, the basic filing fee for a utility patent is $400 for a micro entity.

2) Design patent

Sometimes confused with the utility patent, the design patent is far more limited in usefulness. In addition to covering your invention for only up to 14 years from the issue date, the design patent protects only ornamental parts of an invention - its outward appearance - not its concept.

Unlike the utility patent, written applications for design patents contain only a single claim. Since a single claim, dependent on drawings, can't support separate designs, you must prepare and file separate design patent applications for distinct designs.

Given a choice of filing a full utility patent or a design patent, I almost never advise the design patent route. However, nothing can stop you from filing both a design and utility patent application on the same invention. That can sometimes be a good idea since many inventions' appearances are novel, and a design patent protects the design efforts put forth.

While more limited than the utility patent, the design patent has differences some might consider advantages. For one, it's easier to prepare - basically drawings with no descriptive text needed. And it's cheaper to file. As of March 2013, the design patent filing fee for 14 years' protection is $190 for a micro entity, and no maintenance fees are required (yet).

3) Plant patent

Least used of the three patent classifications, the plant patent protects new and living plant life. Adopted by the U.S. Congress in 1930 as a result of lobbying by horticulturist Luther Burbank, plant patent law protects only plants that are asexually reproduced. That means plants "reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.," according to the USPTO.

If the plant came from a seed, its purity can't be guaranteed - and it can't be patented. The majority of plant patents are for roses, and the USPTO has granted about 24,000 plant patents in the past 85 years. Typically patentable characteristics of asexually reproduced plants include resistance to temperature and insects, and uniqueness in terms of color or fragrance, or in the case of edible plants, flavor. A plant patent expires 20 years from the patent application's filing date, after which the invention becomes public domain.

Under a plant patent, the owner excludes others from asexually reproducing the patented plant. However, others are not excluded from using or selling lawfully obtained plants. As of March 2013, the plant patent application filing fee is $285 for a micro entity.

Putting It All Together

Patents don't last forever; they weren't intended to. But as long as they're in effect only the owner has the right to exclude others from making, using, selling, or marketing the invention covered. And no matter which patent flavor you choose, they all give you the right to label your invention Patent pending during the examination process, and Patented when the patent is granted.

Whichever patent classification - utility, design, or plant - you go with, just remember that filing for and getting a patent awarded puts the law on your side. That's not trivial at all.

For more information:
Utility patents - www.uspto.gov/web/offices/pac/doc/general/#patent
Design patents - www.uspto.gov/web/offices/pac/doc/general/#design
Plant patents - www.uspto.gov/web/offices/pac/doc/general/plant.htm




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