Patent applications are available for three types of inventions in the United States, designs, plants, and utility inventions. Design patents cover ornamental characteristics of an article that is manufactured (meaning the appearance). To obtain a design patent, a specialized application is filed with the U.S. Patent and Trademark Office. Plant patents cover a new variety of cultivated, asexually reproducing plant. Applications for plant patents can be filed as a provisional or a nonprovisional application, which is discussed below. Finally, utility patents cover a new or improved process, product, or machine that has real world use. Utility applications can be provisional, nonprovisional, or patent cooperation treaty (PCT) applications.
Provisional
Provisional applications act as a priority placeholder, meaning that any subsequent nonprovisional application can acquire the filing date of the provisional application if certain conditions are met; mainly that the application needs to describe the invention, with as much breath as you want to cover in your patent, and the way to make and use the invention, so that someone in the field can recreate the invention and use it. A provisional application lasts up to one year under the current laws, at which point the application expires. Any time prior to the expiration, the provisional application can be converted to a nonprovisional application, or a nonprovisional application can be filed claiming priority to the provisional application.
Nonprovisional
Nonprovisional applications are the applications to obtain a patent, and are examined for all the formalities and substantive requirements of a patent. As such, the nonprovisional application describes how to make and use the invention, describes the invention in the same scope as the claims, includes figures or images as needed, and has at least one claim. There are variations of nonprovisional applications, including continuation applications, divisional applications, and continuation-in-part applications, but the applications all contain the basic requirements.
Nonprovisional applications can claim priority to other applications, including provisional applications (this does not apply to design applications), which may be useful in handling references of other materials that qualify as prior art that can be cited against the application.
After filing, a nonprovisional application is assigned to a patent examiner, who conducts a search of references and other documents pertinent to the field, and issues an “office action”, or communication outlaying the formality and substantive concerns with the application and claims. The two notable issues are the novelty of the application, i.e. whether there is any document that covers all the elements of the invention as claimed, and nonobviousenss, or whether documents and information available to one in the field are sufficiently similar to preclude patenting (see, Understanding the Obviousness Requirement in Patent Law). Applicants are then allowed to respond to the concerns, through amendment of claims, revisions to the specification (application body) and/or figures, and arguments. Once the concerns are fully addressed, which can require multiple actions and responses, the application is allowed, and subsequently issues as a patent.
Patent Cooperation Treaty (PCT) Applications
PCT applications are an avenue to seek patent protection internationally, and covers all signatories to the treaty, currently around 160 countries (see, map below, or WIPO website at https://www.wipo.int/wipolex/en/treaties/ShowResults?search_what=C&treaty_id=6). The application functions as a hybrid between a provisional application and nonprovisional application, as the PCT application is examined for formalities and substantive requirements. The applicant is permitted to amend the claims, similar to the U.S. nonprovisional application. However, a PCT application does not issue or otherwise become a patent. During the term of the application, which is 30 months (or down to 18 months if you claim priority to a provisional application and wait the full year of a provisional application’s term), the applicant must select the countries for “national entry”, meaning the countries in which the application is applying for a patent.
(PCT signatories are colored orange, countries not part of the treaty are colored yellow)
PCT applications are useful for applicants seeking to patent in multiple countries, as the process allows for preliminary examination and revisions prior to national entry, permitting the application and claims to keep some consistency in scope during the application process. Further, if the application received a positive report, meaning there are no references identified in the reports that would negate the novelty or nonobviousness (here, the industrial applicability) of the application (or a portion), the application can receive special treatment before many countries, including the U.S., that can include a faster application process or reduced fees.
Selecting the Right Application
Determining which application an applicant needs requires an analysis of the conditions of the invention, the goals of the applicant, the timeline of the applicant, and the financial position of the applicant. It is important to note that the term of a patent- its lifespan- is twenty years from the earliest priority date.
Provisional applications are least expensive of the three major types of application, mostly because these applications are not examined and therefore the main consideration is to the specification. However, provisional applications do not become patents, and usually delay the patenting of an invention and use some patent term, and increase the overall costs of obtaining a patent, since more than one application will be filed during the application process (the provisional followed by the nonprovisional). If the invention is not fully developed- I generally suggest an invention that is 85% ready for patenting- a provisional application may be useful. Likewise, where the invention was disclosed or is about to be disclosed, a provisional application may be useful to get an application on file quickly to preserve patent rights.
Nonprovisional applications are more expensive than provisional applications, and are drafted for the patent examination process. As such, these applications become U.S. patents. Therefore, the specification is drafted and figures or images are prepared to withstand scrutiny from the examiner. Claims are also drafted, which should be mindful of the prior art, which form the protections afforded by the patent. Once the nonprovisional application is filed, the examination process begins, first with a pre-examination and followed by assignment to a patent examiner and patent examination. For applicant’s concerned about maximizing the life of the patent or want to minimize the overall cost of the application, beginning with a nonprovisional application is advantageous. PCT applications are generally in-line with nonprovisional applications, but tend to be more expensive due to the filing fees. The PCT process also uses some patent term if a national entry application is not filed concurrently with the PCT application (this can occasionally be mitigated by quicker examination). However, for applicants interested in protection in multiple countries, the PCT application is advantageous, particularly where the finalized set of countries has not yet been determined. The signatories to the PCT treaty cover a large swathe of the world, with a few exceptions such as Mexico, providing applicants time to determine market interest, infringement concerns, and similar issues. But for applicants seeking protection only in the U.S. or a very limited number of countries, it is more time- and cost-effective to file directly in the country of interest.
