TYPES OF PATENTS
Non-Provisional Utility applications: A non-Provisional patent is a formal document that protects the inventor’s property and prevents another party from making or using the subject matter recited by the applicant in the claims.
A non-Provisional patent is what the layman knows to be a “Patent”. A patent has a term of 20 years, beginning from the date of filing of the non-Provisional application, or if based on a Provisional application (see below), the Provisional’s filing date.
Due to the rigid formal requirements, and the importance of the claims, the non-Provisional application should be prepared with the help of a Patent Attorney (or Patent Agent).
Besides the claims, a non-Provisional application includes a specification and set of drawings that explain the subject matter is detail. The specification and drawings are often critical in interpreting the meaning of the claims, as the short-form language of the claims may be open to different interpretations.
Any subject matter disclosed in the specification, but not recited in the claims, is available for use by the general public. Similarly, the applicant may lose their rights to any subject matter that is poorly or incompletely claimed, or claimed but incompletely supported with the specification and drawings.
In exchange to paying the Filing fee, the applicant is permitted to submit 20 claims, 3 of which may be independent. Additional independent and dependent claims may be filed for an additional cost.
“Small Entities”, which are organizations of less than 500 people, are charged less for the initial Filing fee and for any “extra” claims that are submitted.
Provisional Utility applications: Provisional applications are more in the nature of semi-secret publication. Provisional applications never issue as a patent, and any claims included in a Provisional cannot be enforced.
Rather, a Provisional application is a way of “holding the door open” for a subsequently filed non-Provisional Utility patent application. The purpose of the Provisional is to establish a priority date for a particular subject matter.
As a general rule, if two competing applications are filed on the same subject matter, the application with the earlier filing date earns the patent.
Once the Provisional is filed, the applicant (the inventor or assignee) has one year to file their non-Provisional. The filing fees for a Provisional are slight ($130), and the formalities required for filing are so minimal that a Provisional can be filed with little or no help from a Patent Attorney.
Provisionals are useful for applicants who are short of cash or who are searching for funding. If searching for funding, a copy of the Provisional can act as a proof that the applicant has a priority date for their invention. In addition, Provisionals are often filed for ideas that are not fully fleshed out, or when the applicant is researching the marketability of their invention.
The Provisional application is not subject to Patent and Trademark Office (PTO) review. Rather, it is held in “storage”, and only recalled from storage in the event that a related non-Provisional application is filed.
One advantage of a Provisional is that it can be filed in a hurry, as may be necessary if the inventor is meeting with prospective clients, publishing a paper on the subject matter, or otherwise making the invention known to the public.
One common danger associated with a Provisional is that documents filed in a hurry, without claims and rigorous review, may lack the details that seem obvious to the inventor, but don’t quite make it onto paper.
If a non-Provisional application claims the benefit of a Provisional’s filing date, the Provisional application becomes part of the record (file wrapper).
Although a Provisional can be converted into a non-Provisional without changes, it is often the case that the applicant adds additional details and examples to the non-Provisional, or the applicant may even modify or change patentable aspects of the subject matter, due to continuing research, for example, carried on after the filing of the Provisional.
Whether the Provisional actually describes all the patentable subject matter of a related non-Provisional may be an issue of contention with the PTO examiner, or it may be raised in litigation if the application is issued as a patent and the priority date becomes as issue.
Continuation (non-Provisional Utility) application: A Continuation application is, as the name sounds, a continuation of non-Provisional Utility application.
A Continuation may be filed if the applicant abandons their original (parent) non-Provisional application, and decides to write a new set of claims. A Continuation may also be filed if claims are allowed in the parent, but the applicant decides that there is additional subject matter to be claimed.
Another scenario is if the application gets relatively narrow claims allowed (claims directed to very specific details of the invention), and the applicant decides to file a broader (more general) set of claims.
The Continuation uses the exact same specification and drawings as the parent non-Provisional, although the claims may be different (as long as they are supported by the specification). The term of the Continuation ends when the term of the parent ends.
Divisional (non-Provisional Utility) application: In some cases, the PTO may determine that a non-Provisional application includes 2 (or more) separate inventions, and the PTO requires that the applicant choose the invention they intend to prosecute. The document requiring this choice is called a Restriction.
Often times the PTO considers device and method claims for a particular invention to be separate inventions. The rationale behind a Restriction requirement is that by submitting an application with 2 different inventions, the examiner is unduly burdened in that they must perform 2 different prior art searches.
For example, if a non-Provisional application is filed with 20 claims, the applicant may receive a Restriction requiring either claims 1-10 or 11-20 be elected. If the applicant elects to prosecute claims1-10, they can file a separate Divisional application to pursue claims11-20.
The Divisional application has the same filing (priority) date as the parent application. The Divisional can be filed any time before the parent application is either issued as a patent or abandoned.
Continuation-in-part (non-Provisional Utility) application: A Continuation-in-part (CIP) application is similar to a Continuation, except that some additional subject matter has been added.
A CIP can be thought of a type of “improvement” application that includes some subject matter from a parent non-Provisional Utility application, and some new subject matter. The CIP may use all or some of the specification and drawings from the parent application.
The claims of the CIP are related to the claims of the parent application, but typically include new details (limitations) based upon the new subject matter added to the specification.
A CIP application may be filed based upon continuing research in a particular technology, or a shift in technical direction. During prosecution (examination by the PTO), the CIP is given the presumption of the filing date of the parent application.
Technically however, the CIP has two filing (priority) dates – one based upon the parent application and one based upon the new subject matter (the filing date of the CIP).
Expedited (non-Provisional Utility) application: In a sense, an expedited patent application entitles an applicant to PTO concierge service in exchange for paying more in initial filing fees.
These applications are typically reviewed in a matter of months, whereas a conventional non-Provisional (non-expedited) application may not be reviewed for 2 or 3 years.
There is also some evidence to suggest that expedited applications receive more favorable treatment by PTO examiners, although the counter argument can be made that “higher quality” patents are more often filed via the expedited track.
Patent Publications: The applicant has the option of having their non-Provisional, Continuation, or CIP application published. In theory, the publishing occurs 18 months after an application is filed.
The application may or may not be under review by the examiner at the time of publication. The publication gives constructive notice to potential infringers of the applicant’s invention.
The publication is printed with the originally filed claims, which may differ from the claims that are ultimately allowed.
Patent Cooperation Treaty (PCT) application: Foreign jurisdictions do not recognize a Provisional application as in the United States, but a PCT application performs a similar function.
There is no such thing as a PCT patent. Just as with a Provisional application, a PCT application puts a claimed subject matter on record and is published. The PCT performs a prior art search and prepares an Office Action on the validity of the application, but the opinion of the Office Action is not binding.
Once the PCT application is filed, the applicant has approximately 30 months (depending on jurisdiction) to file separate (National Stage) applications in the country of their choice.
Almost all countries, except Taiwan, are a member of the PCT. Alternatively, a PCT application can be filed concurrently with a National Stage (e.g., US) application, or within one year of a National Stage filing.
Foreign application: A mentioned above, foreign applications can be filed via the PCT track, or they may be filed directly, bypassing the PCT. Typically, the applicant must work with a different Patent Attorney for each country.
However, it is common for one Patent Attorney (e.g., a US Patent Attorney) to engage and manage foreign counsel on behalf of an applicant.
“The information and opinions expressed here are not intended to constitute legal advice, but are presented for informational and educational use.”