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Different Types of Patent and Applications: Utility and Design

There are three types of patents: the utility patent, the design patent and the plant patent. Only the first two, however, are typically sought by technology companies and inventors.

Utility Patents and Applications

The utility patent is the one that most people think of when they hear the word “patent.” It protects the underlying concept of the invention. In order to obtain a utility patent in the United States, an application must be filed with the United States Patent and Trademark Office (USPTO). The application process can start in one of two ways; either with the filing of a provisional patent application or with the filing of a non-provisional application.

Provisional Patent Application

A provisional patent application is less formal in terms of its overall requirements. Because of this relaxed requirement, it typically is less expensive to draft and file. The requirements of a provisional application take no special form. Rather, the provisional application must only:

  1. Provide a description of the invention that enables one skilled in the technology to practice the invention
  2. Disclose the best mode for practicing the invention. 

The description of the invention in a provisional application need not actually be in words. If drawings are sufficient to convey the full scope of the invention to a person of ordinary skill in the relevant technology, then no written description is required in a provisional patent application.

A provisional patent application is not formally examined by the USPTO. The USPTO will only examine the provisional patent application with respect to form, not content.  Accordingly, a provisional patent application will not mature into a utility patent. In order for that to occur, a non-provisional application must be filed after the provisional application.

The lack of formal requirements in a non-provisional application, unfortunately, is a trap for the unwary. Sometimes, an applicant may find that the provisional application they thought was protecting their invention is actually not providing any protection at all. This may occur when the level of detail in the underlying provisional patent application does not fully disclose the invention or does not provide sufficient detail to enable later protection for the invention.  Only that which is disclosed in the provisional application is afforded any protection in a subsequent non-provisional application and any patent that results therefrom.

In order to properly protect the invention, the provisional patent application requires a written description of the invention with such a level of detail that would enable one skilled in the art to practice the invention without undue experimentation. It must therefore “enable” the invention. Additionally, it is required to disclose the best mode of the invention. In other words, it must disclose the invention such that the best way known for practicing the invention is provided to the reader of the patent. Drawings are not required, but if they aid in the understanding of the invention, they should be included.

Non-Provisional Patent Application

A non-provisional application has all of these same requirements and must also include one or more claims that define the metes and bounds of the invention. The structure of the non-provisional application is also more formally and strictly laid out by requirements of the USPTO rules. Drawings are required if they aid in understanding the invention and detailed reference to these drawings must be set out in the description portion of the application. Failing to comply with the strict requirements for non-provisional applications will result in non-substantive rejections by the USPTO, increasing both time and expense, as well as frustration on the part of the applicant. It is important to remember that new matter cannot be added after filing of the non-provisional application.

Design Patents

Design patents do not cover the underlying idea of the invention. Rather, they protect the aesthetic appearance or ornamental features of the product.  For this reason, design patents consist mainly of drawings. If, however, the look of a particular feature is dictated solely by its function, then no design patent protection is available for that feature. As can be appreciated by the above, a design patent is often very useful with consumer products. Increasingly, it is becoming an important protection method outside of consumer products.

A design patent need not cover the entire product. It can be drafted such that it only covers one feature of a product. For example, the design patent may only protect the fan blades of a fan assembly.

If you’re interested in learning more about patents our Manufacturing Resources are a great place to start.

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If you have any questions concerning these or other patent issues, please contact Joe Hetz at jhetz@brinksgilson.com

Joe Hetz has over 23 years of experience as a patent attorney and has prosecuted over 3,500 patent applications. Joe has represented clients of all sizes, from Fortune 500 companies to start-ups, and is known for his creative, value-added approach to helping clients develop portfolios that can be monetized or otherwise used to satisfy strategic needs. His patents have gained national media attention for their broad scope and have generated millions of dollars in licensing fees. Joe is a shareholder at Brinks Gilson & Lione, an IP law boutique that’s been around for over 100 years. 

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