A utility patent protects the function (how it works and how it is used) of an invention and is pursued where it is desired to protect how the invention operates. A utility patent can be issued to any person who invents a new, useful, and nonobvious (1) process, (2) machine, (3) manufactured article, (4) composition of matter, or (5) any new and useful improvement to any of these types of inventions.

A design patent is strictly directed to protecting the overall appearance (how it looks) of an invention. Design patents can be granted for a new, original and ornamental design for an article of manufacture.

In most cases, it is preferred to pursue utility patent protection since protecting the function of an invention is preferable over protecting the design. However, where meaningful utility patent protection may not be available, or if the appearance of an invention is more important than how it functions, then design patent protection may be the best choice. There are situations where both function and appearance of an invention are important. When this occurs, the inventor may choose to concurrently file both design and utility patent applications for the invention.

Inventors wishing to protect their invention may want to consider filing a U.S. provisional patent application as a fast and relatively inexpensive method of retaining their patent rights. The provisional application should be considered when;

• public disclosure of the invention is anticipated, since to maintain international patent rights, an application must be filed before any public disclosure; or
• a competitor is believed to be developing the same or a similar invention.

The provisional patent application is an informal application which fully describes the invention, and includes any drawings needed to explain the invention. The advantages of a provisional patent application include:

• The early filing date of the provisional application can be claimed in later filed U.S. and foreign patent applications.
• The 12 month life of the provisional patent application does not count against the 20 year term of U.S. patent covering the invention.
• A low filing fee, presently $75.00 for individual inventors or small companies.
• Generally lower total cost associated with preparing and filing the provisional patent application.

Some of the disadvantages for a provisional patent application include:

• The provisional patent application expires in 12 months and must be converted to a formal utility patent application to retain the inventor's patent rights in the invention.
• There is no examination of the provisional patent application invention by the Patent Office for patentability Examination occurs only for the formal utility patent application.
• Any foreign patent applications must be filed within one year of the provisional utility patent application filing date to claim the early filing date.
  

The objective of a patentability search is to discover issued United States patents which are similar to the invention being investigated so that a judgment can be made upon the potential for obtaining patent protection for the invention. The issued patents are commonly referred to as "prior art". Basically, there are two main types of patents, utility patents and design patents. When possible, a patentability search is directed to both the utility and design features of an invention so that a determination can be made as to which type of patent protection may be available.

Whether or not an invention is patentable is a legal determination made by a Patent Examiner at the Patent and Trademark Office. In making this determination, the Patent Examiner is restricted and guided by the Patent Laws contained in Title 35 of the United States Code (35 USC). Title 35 provides:

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefore subject to the conditions and requirements of this title."

There are two criteria for determining patentability. The first is novelty, as defined by 35 USC 102, which basically states the invention must not have been made by someone else before. The second is obviousness, as defined by 35 USC 103, which states that a patent may not be obtained, even if the invention is patentably novel and, therefore, not identically disclosed or described in print, if the difference between the subject matter sought to be patented and the prior art is such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter of the invention pertains.

Analyzing Prior Art Patents

In attempting to determine patentability of an invention, comparing the invention to other inventions already patented is required. The procedure is to look for differences in (1) structure (or composition, if a chemical invention), (2) function, and (3) overall appearance. Structural and functional differences are important when pursuing utility patent protection, while overall appearance of the invention with respect to prior art patents is important when pursuing design patent protection.

Structural considerations involve how the invention is put together, what parts (or ingredients) are used in its construction, and how these features differ from the prior art patents. Functional considerations involve what an invention accomplishes, what problem does it solve and does it solve the problem in a manner differently from prior art patents. If significant differences exist, utility patent protection may be available.

Overall appearance involves subjectively comparing the invention with the prior art patents and deciding if the "overall appearance" is substantially different. If a significant difference does exist, design patent protection may be available for the invention.

Even if no other single prior art patent discloses the invention completely (novelty), it is still necessary to consider the situation where the U.S. Patent and Trademark Office may attempt to "combine" the information shown in two or more patents to "build" the invention at issue. Where no single prior art patent discovered during a patentability search discloses the invention, the Patent Examiner will frequently argue that someone of ordinary skill in the art is already in possession of the cumulative information shown in all the patents. This person would know how to combine the information to make the new invention, thus making the new invention "obvious" and therefore unpatentable.

Filing a patent application is an essential step toward procuring whatever protection can be obtained for the invention. The primary consideration in applying for patent protection on an invention is economic. While potential patent protection is the primary goal of most inventors, it is often an additional advantage to assert "patent pending" status during the pendency of the patent application. However, applying for a patent guarantees neither that a patent will be issued or that any commercial ventures based upon the invention will be commercially successful.

A U.S. utility patent application must be filed before one year from the date of first use, printed publication or offer for sale of the invention. A U.S. design patent application must also be filed before one year from the date of first use, printed publication or offer for sale of the invention. After the time limit passes, an inventor is barred by law from seeking patent protection. Foreign patent protection questions are more complex, but any disclosure prior to the filing of an application could prevent obtaining any foreign patent protection for the invention.

Information Required For An Application

A utility patent application must fully describe the invention in sufficient detail that a person of ordinary skill in the technology is able to make or use the invention by reading the application. This is termed the "enabling" requirement for the application. Any drawings that are needed to explain how the invention is made or operates are also required. Finally, the application must contain one or more claims to what the inventor believes to be the invention. It is the claims that are examined by the Patent Office to determine patentability of the invention. The claims must be fully supported by the description of the invention, and no new material may be added once the application is filed. Thus, it is most important to have a complete description of the invention in the application sent to the Patent Office.

A design patent application must fully describe the invention also. Since the overall look of the invention is to be protected, the drawings must show each and every detail of the invention. There is a single claim in a design application which reads, "The ornamental design for a (name of item) as shown in the drawings". Thus, the drawings are most important for a design patent application.

Once a design or utility patent application has been filed, the Patent Office examines the application for both novelty and obviousness. An examiner also reviews the application to be sure that the application conforms to the standards set forth in the Patent Laws. The Patent Office examiner prepares a written Office Action covering these areas and sends it to the inventor's representative. The application may be allowed on a First Office Action. However, in nearly all cases some objection or rejection is raised by the examiner. The representative must either amend the application to overcome the objection/rejection or provide convincing arguments to overcome the examiner's rejection. The examiner then decides if the amendment and arguments are sufficient to overcome the objection/rejection. If the examiner is convinced, the application is allowed and an issue fee is required for the patent to become effective.

Both provisional and utility applications may be filed with informal drawings in order to obtain an early filing date. Should the application be allowed, formal drawings must be prepared and sent to the Patent Office before paying the issue fee for the application. Design applications require formal drawings when filed since the look of the invention as shown in the drawings is the basis of the application. A draftsman with many years experience in preparing formal patent drawings is available for this service to clients.

Upon payment of the issue fee for a utility application, the Patent Office issues a utility patent for the invention. The patent is assigned a specific number and is issued about three months after paying the issue fee. The Patent Office provides a printed patent document for the inventor, as well as publishing an abstract of the patent in the Official Gazette of the Patent Office. The term of a utility patent is now 20 years from the earliest filing date of the application. The one year term of a provisional application that is converted to a utility application does not count against the 20 year term of the resulting utility patent. To keep a utility patent in force, maintenance fees are due upon the fourth, eighth and twelfth year anniversary of the patent issue date.

A design application likewise require payment of an issue fee to issue a design patent. The patent is assigned a specific number and is issued about three months after paying the issue fee. The Patent Office provides a printed patent document for the inventor, as well as publishing an abstract of the patent in the Official Gazette of the Patent Office. The term of a design patent is 14 years from the earliest filing date of the application. No maintenance fees are required for design patents.

PCT Filings

Each country enforces patent rights only under patents issued in that country. Rather than filing applications in each country, a Patent Cooperation Treaty (PCT) application affords inventors a way to obtain patent coverage for their inventions in up to 90 participating countries, including the United States, Canada, Mexico, European Countries, Japan, China, Australia, New Zealand, South Korea and many others. Under the Patent Cooperation Treaty (PCT), all patent applications must be filed within one year of the first application filed anywhere. Thus, a PCT application must be filed within one year of any U.S. application, including a provisional filing, or the PCT appplication may be the first application filed.

U.S. Inventors

For U.S. citizens, the PCT application is filed through the U.S. Patent Office with the cost partially dependent upon the number of countries selected for coverage. This is termed the International Stage for the PCT application. The filing fee includes receipt of a preliminary search report listing the most pertinent prior art references found by the Patent Office. Based on the search report, inventors can decide if a preliminary examination of the PCT application is desired, which requires an additional examination fee.

Following the international preliminary examination by the U.S. Patent Office, the PCT application moves to the National Stages, including the U.S. if selected. Filing and examination (with associated fees) then occurs in each selected country. However, at this point inventors may decide against entering the National Stage in any country originally selected.

Upon Allowance of each PCT application in the National Stage, the examining country requires an Issue or Grant Fee, as well as a translation of the application to the native language, for the patent to take force. Yearly maintenance fees are also required to maintain a patent in force once issued.

International Inventors

A Patent Cooperation Treaty (PCT) patent application must be filed through the Patent Office of the native country of the inventor. When the PCT application reaches the National Stage, Tipton L. Randall can act as an agent for the inventor in the U.S. I can file, prosecute and, when allowed, see to the issuance of the U.S. patent based on the PCT National Stage application.