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About Patent Applications and the Patent Application Process

Located in Portland, Oregon, Baumgartner Patent Law provides patent application attorney services worldwide

What is a Patent?

A patent protects an invention, and gives an exclusive right to the benefits of an invention. A patent is in essence a contract between the United States government and holder of an invention. The terms of this contract are simple: The Unites States grants the inventor the right to exclude others from making, using, selling, and offering to sell the patented invention for a period of time in return for the inventor's disclosure of the invention in such full and complete detail as to enable others in the field to make and use the patented invention, including the inventor's best mode. This full disclosure of the patented invention benefits the public at large, and the patent rights benefit the inventor for a period of time in return for the full disclosure of the invention.

In the Unites States, patent rights are granted to an inventor by the federal government through the Unites States Patent and Trademark Office (USPTO). States are not allowed to issue patents.

Only an issued patent can fully protect an invention. An issued patent gives its owner the right to exclude others from making, using, offering for sale, selling, or importing the patented invention. Patent rights are territorial, meaning that a U.S. patent does not extend beyond the boundaries of the United States. Currently, the life of a patent is 20 years from the filing date of the patent application that was the basis for the issuance of the patent.

Types of Patents

There are three types of patents:

  1. Utility patents – which relate to a new or improved machine, article of manufacture, a composition of matter, or a process
  2. Design patents – which relate to new, useful, and ornamental or aesthetic article of manufacture
  3. Plant patents – which relate to a new asexually reproducible variety of plant

To obtain a patent, a patent application must be filed with the USPTO. A patent application can be prepared and filed by an inventor, or by someone approved by the USPTO (either a registered patent agent, or a patent attorney). In the United States, there are four types of patent applications:

  • Provisional patent applications (PPA) – This low cost option will not issue into a patent itself, rather it allows the applicant one year to file a more expensive non-provisional patent application (e.g., a utility patent application). Provisional patent applications are commonly used as a place saving tool.
  • Utility patent applications – Also referred to as a "regular patent application" or a "non-provisional patent application", a utility patent application is the most common patent application and can be used for any new or improved machine, article of manufacture, composition of matter, or process.
  • Design patent applications – This application is used for new, useful, and ornamental or aesthetic articles of manufacture.
  • Plant patent applications – This application is only used for a new asexually reproducible variety of plant.
Additionally, there are two types of "international" patent applications:

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Contact Us
For a free consultation regarding filing a patent application, please use our contact form or contact our registered patent application attorney Marc Baumgartner at 503-546-3452 (Portland, Oregon) or toll free at 877-734-8669.
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Provisional patent applications (PPA)
Starting in June of 1995, inventors in the United States have been able to file provisional patent applications. Provisional patent applications (also called a PPA), are a cost saving advantage over other costlier patent applications. The filing fee for a provisional patent application is only $100 for small organizations or sole inventors and $200 for large organizations.

Requirements for a filing date
A provisional patent application has fewer requirements than a non-provisional patent application. For example, you can still obtain a filing date for your provisional patent application without providing an abstract of the invention, claims, information disclosure statement regarding the prior art, or an inventor's oath or declaration.

In order to obtain a filing date for your provisional application all that is needed is some type of description, an informal drawing (only if necessary to describe the invention), a cover sheet, and a return receipt postcard. It is important to note that 35 USC Section 113, only requires a drawing if it is "necessary" for the understanding of the invention. I have filed many provisional and non-provisional applications that did not have any drawings.

Effect of a Provisional Patent Application
A provisional patent application gives an inventor one year to file a non-provisional patent application, and claim benefit of the filing date of the provisional patent application. By filing a provisional patent application, an inventor can label an invention as "patent pending," and explore whether filing a non-provisional patent application is a good idea.

A provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. The corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application within the time period and in the manner required by 37 CFR 1.78.

Claiming priority back to your provisional application
While you can claim priority back to your provisional patent application from your non provisional application (e.g., utility patent application) your provisional application cannot claim the benefit of a previously-filed application, either foreign or domestic. Thus the filing date of your provisional patent application will be the earliest possible filing date you can claim.

A claim for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date (whichever is later). See 37 CFR 1.78 as amended effective November 29, 2000. A non-provisional patent application can claim priority to the filing date of a PPA only if it complies with the legal requirements of 35 USC Section 112, paragraph I, which states:

"The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertain, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out his invention."
It is thus vitally important to ensure that a provisional patent application fully describes all features and benefits of an invention, and additionally explains how to make a working version of the invention. A common misconception is that a provisional patent application is always a "quick" patent application or a "poor man's patent." While less time can be spent drafting claims and providing alternative forms of the invention, and there are smaller fees associated with a PPA, a provisional patent application must describe all of the features and benefits of an invention to allow subsequent patent applications to claim the benefit of the priority filing date of the provisional patent application. A provisional patent application is not examined by the USPTO, and a patent will not issue from a provisional patent application without filing a non-provisional patent application within a year.

Advantages of Filing a Provisional Patent Application
There can be many advantages to filing a provisional patent application.

The main advantage of filing a provisional patent application is that it buys the applicant time. Provisional patent applications can be a quick way to establish a filing date. The inventor then has 1 year to do what is needed to fully prosecute a regular patent application. For example, the inventor may want to test and fine tune his invention, assess the commercial success of the invention, or raise money for the manufacturing and marketing of his invention. All of these can be done while delaying the costs associated with filing and prosecuting a regular patent application.

Another related advantage is that the filing of your provisional patent application constitutes a "reduction to practice" so that you do not have to actually build a prototype of your invention. The filing of a provisional patent application constitutes a reduction to practice as long as it completely describes the invention as claimed in the later filed utility patent application.

Additionally, a provisional patent application can be used to easily remove USPTO references cited against your later filed related regular patent application. For example, if the USPTO cites a publication dated February 1, 2006 and your non-provisional patent application claims priority back to a provisional application filed on January 1, 2006, the February 1, 2006 publication cannot be used to block your patent application.

One alleged advantage commonly put forth is that a provisional patent application can be used to effectively "extend the life of a patent." As will be discussed further, this argument is not entirely convincing. The argument that a PPA extends a patent's life is usually presented as follows. A complete patent application is drafted in final form (with claims) and then submitted as a provisional application. At the end of the 12-month deadline period, a regular non-provisional application, claiming priority to the provisional patent application is filed. If the regular application matures into an issued patent, it will expire 21 years after the provisional application was filed. Thus you get a 21 year patent term from filing instead of 20 years.

The problem with this argument is that you cannot file a patent infringement suit based on a provisional patent application (or non-published regular patent application for that matter). In fact, the earliest that damages from patent infringement can begin accruing is when the non-provisional patent application publishes and only if certain conditions are met (e.g., providing notice to the infringer). As you cannot recover damages for infringement that occurs during the pendency of your provisional patent application, you are not effectively extending the term of your patent life. In fact because your provisional patent application is never examined and can never become a patent, filing a provisional patent application actually delays the issuance of your patent and accordingly delays the right to sue for infringement.

That being said, the provisional patent application can be helpful in arts where the value of the patent is greatest towards the end of its term.  Chemical and biotech innovations often fall into this category.  Because these innovations are often not intiially valuable when the patent is filed, as they are undergoing the long process of FDA approval, and they are often still valuable in their 21st year, filing a provisional application for these new and useful compounds is usually the best way to go.  On the other hand, as digital, electrical, and mechanical innovations are often obsolete near their 20 year term, it is usually best to obtain patent protection as soon as possible.

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Contact Us
For a free consultation regarding filing a patent application, please use our contact form or contact our registered patent application attorney Marc Baumgartner at 503-546-3452 (Portland, Oregon) or toll free at 877-734-8669.
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Utility patent applications
A regular non-provisional patent application, also called a utility patent application, is examined by the US Patent and Trademark Office and can lead to an issued patent. The invention must be new, useful and nonobvious. A utility patent application can claim benefit of the filing date of a provisional patent application if the provisional application fully describes the invention later described in the utility patent application. As a utility patent application has a required formal format and contains claims which define the extent of your invention, it is recommended to utilize a patent professional when preparing and filing a utility patent application. A utility patent is valid for 20 years from the filing date of the application.

(For a free consultation regarding filing a utility patent application, please contact our registered patent attorney Marc Baumgartner at 503-546-3452 (Portland) or toll free at 877-734-8669)

Design patent applications
A design patent application is used for a new, useful, and ornamental or aesthetic article of manufacture. A design patent application contains a set of drawings that show your invention from all sides. Unlike a utility patent application, which relies upon a written description and claim to define the invention, a design patent application focuses more on drawings to describe the scope and features of an invention. A design patent is issued for the design itself, not for any useful features or benefits described by the drawings. A design patent is valid for 14 years from the date of issue of the patent.

Plant patent applications
A plant application is similar to a utility patent application, except that it is for asexually reproducible plants. These include plants that reproduce by root cuttings, grafting, rhizomes, bulbs and other methods. A plant patent application requires that the application must contain a complete botanical description of the plant, and the characteristics which distinguish that plant over known related plants. A plant application is valid for 20 years from the filing date of the application.

Paris Convention patent applications
Within one year of filing a patent application in the United States, the Paris Convention allows the filing of patent applications in directly in other countries and claim the benefit of the priority of filing date in the United States. Full applications are filed in these countries, and examination of the application generally is not deferred. Paris Convention patent applications are often used when an applicant only wants to file in several countries, or if a desired country is not a member of the PCT. The costs of filing and length of patent examination varies by country.

PCT patent applications
A Patent Cooperation Treaty (PCT) application must be filed within 1 year of filing a patent application in the United States. A PCT application is first briefly examined on an international level, and thus allows the applicant to delay costly filings in other countries. A PCT patent application can delay filing a patent application in other countries for up to 30/31 months from the original filing date in the United States. Some countries additionally allowed for deferred examination of a PCT patent application, which can defer examination for another 3-4 years.

PCT applications provide several benefits to applicants. First, it allows the applicant to delay the large cost of filing applications around the world by establishing their priority and designating all countries at filing. Second, it allows the applicant two opportunities for international examination, which will give an early indication of patentability. Third, it allows the applicant to see how their patent application does in the United States. Grant of a patent in the United States does not guarantee patentability in other countries, however it does give an indication of patentability. Fourth, some countries will allow a granted United States patent to be filed as an amended patent application through the PCT, thus savings costs and time in obtaining a patent in those countries.

PCT examination is often conducted in 2 phases: The international phase and the national phase. The international phase is the filing of the application and the optional substantive examination

National and Regional Phase

Filing

The first step of the procedure consists in filing an international (patent) application with a suitable patent office, called a Receiving Office (RO). This application is usually called an international application or simply a PCT application since it does not result in an international patent nor in a PCT patent (both of which do not exist). The international application needs to be filed in one language only (though translations may still be required for international search and international publication, depending on the language of filing and the International Searching Authority to be used). At least one applicant (either a physical or legal person) must be a national or resident of a Contracting State to the PCT, otherwise no international filing date is accorded.

On filing of the international application, all Contracting States are automatically designated.

Search

A search or international search is then made by an authorized International Searching Authority (ISA) to find the most relevant prior art documents regarding the claimed subject-matter. This results in an International Search Report (ISR), together with a written opinion regarding patentability

The ISR is normally provided by the ISA to the applicant 9 months after filing of the application in the event of a first filing and 16 months after the priority date in the event of a subsequent filing (i.e., claiming the priority of a first filing).

The ISR is published together with the international application (or as soon as possible afterwards). The written opinion is initially confidential, but unless it is superseded by an International Preliminary Examination Report (see optional examination, below) it is made available in the form of an "international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)" (commonly abbreviated "IPRP Chapter I") 30 months after the filing date or the priority date if any.

Publication

18 months after the filing date or the priority date if any, the international application is published by the International Bureau (IB) of WIPO, based at Geneva, Switzerland, in one of the eight "languages of publication": Arabic, Chinese, English, French, German, Japanese, Russian and Spanish. There is an exception to this general rule however: if 18 months after the priority date, the international application only designates the United States, then the application is not automatically published.

Optional examination

Afterwards, an international preliminary examination may optionally be requested ("demanded"). The "international examination" is achieved by an authorized International Preliminary Examination Authority (IPEA). This results in an International Preliminary Examining Report (IPER). Since 2004, the IPER now bears the title "international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)" (commonly abbreviated "IPRP Chapter II").

When an examination is demanded, the contracting states for which the examination is demanded are called Elected Offices (under Chapter II), otherwise they are called Designated Offices (under Chapter I).

Subject matter

The PCT does not make any specific provision concerning the types of invention which may be the subject of an international application. Rules 39 and 67 permit International Searching and Preliminary Examining Authorities not to carry out search and examination on certain types of subject matter, such as scientific and mathematical theories, methods of doing business and computer programs to the extent that the Authority is not equipped to carry out a search or international preliminary examination concerning such programs. However, while a lack of international search may make national processing more difficult, Article 27(5) PCT makes clear that this does not affect the issue of whether the invention is patentable under the laws of the designated States:

"Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires. (...)"
National and regional phases

Finally, at 30 months from the filing date of the international application or from the priority date if any, the international phase ends and the international application enters in national or regional phase. However, any national law may fix time limits which expire later than 30 months. For instance, it is possible to enter the European regional phase at 31 months from the priority date. National and regional phases can also be started earlier on the express request of the applicant.

If the entry into national or regional phase is not performed within the prescribed time limit, the international application generally ceases to have the effect of a national or regional application.

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Contact Us
For a free consultation regarding filing a patent application, please use our contact form or contact our registered patent application attorney Marc Baumgartner at 503-546-3452 (Portland, Oregon) or toll free at 877-734-8669.
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Baumgartner Patent Law is located in Portland, Oregon.


The materials provided within this website are for general information, educational, and promotional purposes only. The law constantly evolves and there is no guarantee that the relevant changes have been noted herein. They are not intended as, and should not be taken as, legal advice. Individuals and entities having legal questions should consult with an attorney to fully address their legal matters based on an analysis of the particular facts. The attorney members of the firm are licensed to practice law in the state of California, and otherwise as noted. Please call us to obtain legal advice 877-734-8669.
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