Utility and Design Patents
There are two types of patents available in the United States - design patents and utility patents. Generally, utility patents protect the functional and structural features of a product without regard to how it looks while design patents protect the ornamental appearance of a product without regard to how it functions.
Utility patents often have multiple claims of varying breadth which define the invention. They can be very valuable because they protect the structure and function of the product described in the claims as well as equivalent embodiments of the same invention. Design patents have only one claim, and the protection is defined by the drawings in your design patent application making the patent drawings extremely important. It is possible to get a utility patent and a design patent on the same product.
A patent gives the owner the right to exclude others from importing, making, using, offering for sale and selling the claimed invention. While patents can be enormously valuable, they can also be very expensive. Whether or not it is worth the time and expense in obtaining a patent depends on many factors. It is important for all potential applicants to carefully consider their goals in light of the known prior art and likely costs before filing any application.
Applications for United States patents must be filed within one year of: 1) The first offer for sale of a product embodying the design; 2) The first illustration of the design in a printed publication; or 3) The first public use of a product embodying the design. This one year grace period also applies to design registration in the European Community (called a Community Design). In many other foreign countries, there is no grace period (for utility or design patents) and applicants must file for protection before any of the events noted above in order to preserve your rights. The Paris Convention treaty allows applicants to file a design patent/registration in a foreign country within six months of filing a design patent application in the United States to have the same effect as if you filed in the foreign country on the day you filed in the U.S. In the case of a utility patent, you have one year from the date of your U.S. filing in which to file in a foreign country. Thus, it is important to give attention to the design (and utility) patent possibilities very early on in the product development process.
Potential applicants usually investigate the utility patent possibilities first, and as the ultimate form of the invention becomes apparent, investigate design patent possibilities. This is a logical progression since the design patent drawings must accurately reflect the final product to be marketed. Also, utility patent applications generally take more time to prepare than a design patent application and time is required to adequately investigate, by means of a patent search, the prior art. It often makes sense to conduct a prior art search to determine likelihood of obtaining patent protection prior to spending time and money of applying for a utility patent. It may not be cost effective to perform a prior art search if you are only interested in design patent protection since most original designs are unique enough to be patentable, and the cost of a design patent application is roughly the same as a prior art search.
The Application Process
Once drafted, formal patent applications are filed in the United States Patent & Trademark Office (USPTO). Applications are generally lengthy and very detailed because they must accurately describe and illustrate the invention and the manner and process of making and using the invention to enable any person skilled in the field of the invention to make and use it. Each application must have claims, which accurately set forth the English-language definition of what the inventor regards as the invention.
Once filed, the patent application is assigned to a patent examiner who is a specialist in the particular field of the invention. The examiner will then conduct a search of the "prior art" (all previous patents and publications) and will issue a formal response to the application either accepting or rejecting the claims. Initial rejections are most common and to be expected.
Thereafter, the inventor’s attorney and examiner go through a series of negotiations concerning the scope of allowable claims. The attorney studies the examiners formal response (called an “Office Action”) including cited prior art and determines a strategy for preparing and filing a Response to the examiner, which may include an amendment to the claims. Several exchanges of Office actions and Responses can occur between an applicant and the patent examiner before the claims are finally allowed, or the application is abandoned.
If the attorney is successful in obtaining a patent, it will be issued by the examiner and will be good for 20 years from the day it was first filed. The applicant is, however, required to file maintenance fees every four years to keep the patent in force.
An invention is “Patent Pending" as of the day the application is initially filed. But applicants will have no legal rights to stop an infringer until the patent issues. Normally, it can take anywhere from 18 months to 3 years from the date of filing for patents to issue because of a severe backlog at the USPTO. All applications are examined in turn, in the order of filing. It is possible, under special circumstances, to expedite the prosecution of your application to speed up patent issuance.
Continued Innovation and Protection
Patents cannot be renewed, but additional improvement patents may be filed during the life of the original patent. As long as the improvement itself is patentable (i.e., novel and non-obvious), these additional patents may be issued with subsequent issue dates to protect the improvement on the invention. This method of filing improvement patents can be used to build a wall of protection around a product line and to minimize the effect of the expiration of the original patent.
Downsides to Utility Patents
Unfortunately, utility patents are often expensive to get, expensive to maintain, and expensive to enforce. The application and negotiation process can be long and frustrating. If there is considerable prior art, it may be very difficult to convince an examiner that the invention is, in fact, novel or not obvious. And by the time a patent issues, the innovation may no longer be relevant in the marketplace.
Sometimes relevant prior art can be discovered after the date of filing and can undermine the validity of an issued patent. As patent applications are preserved in secrecy, there may be 2-3 years worth of prior relevant applications in the application pipeline. Once issued, they can become relevant "prior art" against any later discovered innovation.
Even after a patent issues, it can be subject to attack by infringers who are willing to file lawsuits to attempt to invalidate the patent. Also, despite everyone's best efforts, the scope of protection provided by your patent claims is not always clear, and can be subject to great debate. In recent years, courts have been more reluctant to extend the scope of a utility patent claim to embodiments not actually disclosed in the application.
There are various costs associated with patents including filing costs, attorney fees, and maintenance fees.
USPTO Fees: The USPTO charges various fees for the filing, prosecution and maintenance of patents. These fees are list on the USPTO website and are not listed here because they often change. The fees depend, in part, on whether the applicant qualifies for “small entity” status. After issuance, maintenance fees must be paid after 3-1/2 years, after 7-1/2 years, and after 11-1/2 years. Here is a link to the USPTO fees page: (http://www.uspto.gov/web/offices/ac/qs/ope/fee2007february01.htm)
Attorneys Fees: Fees charged for preparation of the application, and fees charged for responding to examiner Office Actions depend, in large part, on the difficulty of the subject matter and the prior art. For this reason, patent attorneys generally work on a hourly basis. But it is also possible to obtain a fixed fee or “not to exceed” fee depending on the needs of the client.
The USPTO allows an applicant to file a provisional application (utility patents only) as a place-holder. Provisional applications are not read by the USPTO. The applicant has one year from the date of filing to file a non-provisional application covering the same material. While it is not required that an applicant include claims in a provisional application, it is very important that the provisional application accurately disclose the invention and, for this reason, it is a good idea to have an attorney conduct or assist in the drafting and filing process.