Behind any great product is an inventor -- and a patent.
Patents are a powerful form of intellectual property protection. They can save inventions from being infringed upon by copycats, can provide a multitude of licensing and monetization opportunities, and can give your new invention a heightened level of credibility that will attract inventors.
While there are many upsides to receiving a patent, one downside is the process towards obtaining one. The way to offset the negative underbelly of this process is to know what you’re getting into from the outset, have a plan in place, and have the right team behind you.
What are the kinds of patents that I can obtain?
There are three types of patents that your new product idea may fall under:
The first category is a utility patent. These protect any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvements. Simple inventions or tangible new products will likely fall under this category. These are by the most common type of patent, encompassing more applications than the other two types.
The second type is a design patent. These protect merely ornamental or aesthetic designs. Revisions and alterations to simple inventions often fall under this category. For example, a design patent can cover a new specific curve on a hairbrush with a pre-existing utility patent.
The downside with a design patent is that while one can protect the aesthetic feature of a product, an inventor is unable to protect any functional aspect of the product. In a design patent, the necessary drawings are more particular- there are more specific requirements for shading, dash lines, solid lines, etc. patent drawings plays a key role in design patents.
The third, and least common type, is the plant patent. These protect new varieties and species of plants. The plant patent is similar to utility but it governs grown horticulture.
Only about 30,000 plant patents have been issued. The inventor of the new plant species has to have a new, novel, lab grown plant that can be reproduced by grafting. There are also particular rules about only submitting specimen that are able to reproduce asexually in a lab.
What is the process involved in obtaining a patent?
Source: Bold IP
After sending in an application, the first step towards receiving a patent is passing an eligibility test by the U.S. Patent and Trademark Office.
The USPTO has established five elements for patent eligibility: (1) The intention must be a process, machine, or object; (2) the invention must have utility; (3) the invention must be novel or new; (4) the invention must be non-obvious; and (5) the invention must not have been disclosed to the public before the patent application. An invention must qualify under all of these elements in order to move forward in the patent process.
In terms of filing, specifically for a utility patent, an inventor can file both provisional and non-provisional patent applications. An approved provisional patent application (PPA) indicates that a patent is pending. While a PPA does not grant legally enforceable rights, it can preserve an early effective date. To receive a PPA, an inventor must file a provisional patent application that adequately describes how to make and use his or her invention. If the inventor does not file a full non-provisional patent application within one year, the provision patent will expire.
A utility patent means the same thing as a non-provisional patent application (NPA). A non-provisional application, as one might expect, is more formal than the provisional. This type must contain all of the sections in great detail, including a brief description of the product, drawings, summary, background, field of invention and most importantly, a list of claims. Unlike the provisional, the non-provisional application must point out and distinctly claim the invention they are claiming is their own.
Best practices for first time filings
J.D. Houvener, founder & CEO of Bold IP says that for a product invention, “an inventor should secure both a utility and a design patent. It may be a functional new product but you will want to protect how it looks. How is it unique in scope and in design? File both so you will not fall prey to copycats.”
As long as you have conceived of the invention and can describe it sufficiently with words and illustrations to enable any person skilled in the relevant technological area, then you should file your patent application as soon as possible
In developing perhaps only one aspect of their invention and not elaborating or thoroughly defining the invention in its entirety, one will almost certainly drastically limit their outlook and the potential claims that may exist for them.
Some inventions that are indeed different but happen to be similar in nature or subject matter may appear to be the same. It is therefore imperative that the application—especially the claims— illustrate the distinctive properties and functions of an invention as clearly as possible.
Carly Klein is a law student at Loyola Law School in Los Angeles. A graduate from Boston University with a B.A. in Political Science & Philosophy, she has previously served an Americorps term at the American Red Cross in Los Angeles on the Service to the Armed Forces & International Services Team.