Patent Protection

Patents protect qualifying inventions by giving the patent owner the right to exclude others from making, using, offering to sell, selling, or importing the patented invention in the United States. The USPTO grants three types of patents: utility patents, design patents, and plant patents. Each protects a different aspect of an invention.

Utility Patents

A utility patent protects how an invention works or is used. Eligible inventions may include new and useful processes, machines, articles of manufacture, compositions of matter, and improvements to them. The invention must also meet other requirements, including novelty and nonobviousness. The patent’s claims define the scope of protection.

An inventor pursuing utility patent protection may begin with either of these applications:

Provisional patent application.

A provisional application can establish an early filing date for an invention and allow the applicant to use the term “patent pending.” If a corresponding nonprovisional application is filed within 12 months and properly claims the provisional application’s benefit, the claims are adequately supported by the provisional disclosure the nonprovisional application may receive that earlier date. This can help protect the claims of the nonprovisional application against intervening prior art during examination. A provisional application is not examined, never becomes a patent on its own, and does not give the applicant the right to stop others from using the invention. If the 12-month deadline is missed, the applicant may petition to restore the benefit of the provisional filing date by filing the nonprovisional application within two months after the deadline, provided the delay was unintentional and the applicable requirements are met.

Nonprovisional utility patent application.

A nonprovisional application is the application the USPTO examines to determine whether an invention qualifies for a utility patent. It typically includes:

A written description explaining the invention, how it works, and how to make and use it.
Claims defining the specific subject matter for which patent protection is sought. The claims determine the scope of any patent that issues.
Drawings or figures, when needed to understand the invention, and a brief description of those figures.
An abstract summarizing the invention, along with the required inventor declaration and filing materials.

Examination process.

After filing, a patent examiner reviews the application, searches relevant patents and other publications, and evaluates whether the claims meet the legal requirements for patentability, including novelty, nonobviousness, and adequate disclosure. The examiner may issue an Office action identifying objections or rejecting some or all claims. The applicant can respond with legal arguments and amendments, and examination may involve multiple rounds of correspondence. If the claims are allowed and the issue fee is paid, the USPTO issues a patent. If rejections remain, options may include continued examination or an appeal. Filing a nonprovisional application does not guarantee that a patent will issue.

Applications stemming from an earlier nonprovisional application.

An applicant may file a related application while the earlier application is still pending, subject to applicable filing and priority requirements:

Continuation: Pursues additional or different claims based on the invention disclosed in the earlier application. It cannot add new subject matter to that disclosure.
Divisional: Pursues a distinct invention disclosed in the earlier application, often after the USPTO requires the applicant to choose which invention to pursue in the original application.
Continuation-in-part (CIP): Repeats some of the earlier disclosure and adds new subject matter. Claims supported by the earlier application may qualify for its filing date; claims relying on the new subject matter receive the CIP’s later filing date.

A utility patent generally expires 20 years from the filing date of the earliest relevant nonprovisional application, subject to applicable adjustments or extensions and payment of maintenance fees.

International Utility Patent Filings Through the PCT

For inventors seeking patent protection outside the United States, can file an international application under the Patent Cooperation Treaty (PCT). If an applicant wants to claim priority from an earlier U.S. application, including a provisional application, the PCT application generally must be filed within 12 months of that earlier filing date. The earlier application must adequately disclose the invention for which priority is claimed.

A PCT application provides a process for pursuing protection in multiple countries, but it does not result in a single worldwide patent. The applicant later chooses where to continue by entering the national or regional phase in the jurisdictions of interest. That deadline is generally 30 months from the earliest claimed priority date, although some jurisdictions allow 31 months or another period. Each selected patent office then applies its own examination requirements.

Design Patents

A design patent protects the new, original, and ornamental appearance of an article of manufacture, such as its shape or surface decoration. It protects the design shown and claimed in the application, rather than the article’s functional features. A product may potentially qualify for both design and utility patent protection when its appearance and function independently meet the applicable requirements.

For applications filed on or after May 13, 2015, a U.S. design patent lasts 15 years from the date it is granted. A design application cannot claim the benefit of a provisional application’s filing date.

International Design Protection

Applicants seeking design protection abroad generally have two filing routes:

Direct filing: File an application with the patent or design office in each country or region where protection is sought.
The Hague System: If eligible, file a single international design application designating participating countries or regions. Each designated jurisdiction applies its own laws and may refuse protection.

A Hague application therefore avoids filing a separate initial application in every participating jurisdiction, but it does not create a single worldwide design patent. If the applicant wishes to claim priority from an earlier design filing, the later application generally must be filed within six months of the first filing. Torani Law P.C. helps clients evaluate where design protection is commercially valuable and select the appropriate international filing route.

Plant Patents

A plant patent may protect a new and distinct plant variety that has been invented or discovered and asexually reproduced, such as through cuttings or grafting. Tuber propagated plants and plants found in an uncultivated state are excluded from this form of protection. Asexual reproduction establishes that the protected variety can be reproduced consistently.

A plant patent generally lasts 20 years from the applicable U.S. filing date.

Selecting a Filing Strategy

The appropriate filing depends on what the inventor seeks to protect: an invention’s function, a product’s appearance, or a qualifying plant variety. Filing dates and the content of the application matter. An early application can provide a valuable filing date, but that benefit generally extends only to subject matter adequately disclosed in it.

Torani Law P.C. helps inventors and businesses evaluate their inventions, identify potential forms of patent protection, and develop a filing strategy aligned with their commercial goals.