What Kind of Patent Application Should You File?

After inventing a new product and deciding that you would like to file for a patent, you must decide what kind of patent application to file. The choice is largely dependent on what you have invented. Or another way to look at it, how many inventions you actually created. Your invention may overlap more than one kind of patent application and, in those instances, you can choose to file for more than one of these.

Under US law there are three different kinds of patents: utility patents, design patents, and plant patents. There is also the Patent Cooperation Treaty (or PCT) patent application and other foreign patent applications, but we will save that discussion for a later post about patenting in other countries.

Each kind of patent is directed to different kinds of patentable subject matter.

Utility patent applications cover new and useful processes, machines, articles of manufacture, or composition of matter, and any improvements to these. Utility patents further come in two flavors—provisional and non-provisional.

The non-provisional application includes a written specification with, often annotated, drawings, that describe how to make and use the invention and one or more claims pointing out what the inventor believes is their invention.

A provisional application is similar to the non-provisional, but does not have all the formal requirements of the non-provisional application. The provisional application mainly serves as a placeholder for a subsequently filed non-provisional application, and is useful for filing on an invention quickly.

Design patents cover new and ornamental design of a functional item. With a design patent application, the drawings (or photographs) of the invention are the disclosure. If it isn’t shown in the drawing, then it is not part of the design. One useful way of distinguishing a design patent from a utility patent is that design patents are about way the invention looks, regardless of the how it works, while utility patents are about how the invention works, regardless of way it looks.

Plant patents cover asexually reproduced plants, with two exceptions, notably, tubers and uncultivated, or naturally occurring, plants. Like a utility patent application, the plant patent application includes a written specification and drawings. Not to be confused with the plant patent, there is also a plant variety certificate, also called a “PVP certificate”, which covers sexually reproduced varieties of plants and tubers. PVP certificates are issued by the Department of Agriculture, whereas, plant patents are issued by the USPTO.

As I mentioned earlier, your invention may be eligible subject matter under more than one type of patent application. However, design and plant patents, by their nature, don’t overlap. A plant isn’t a functional item and you can’t grow a design.

A new plant invention, though, may be eligible for plant patent and utility patent protection. For instance, if you genetically engineered your plant or created a process connected with manufacturing or cultivating your plant, you may file a utility patent for those aspects and a plant patent on the asexually produced variety. Therefore, if you think you have invented a new plant you should investigate both plant protection and utility protection.

An invention may be eligible for design patent and utility patent protection. Frequently, an invention may have both aesthetic design aspects and functional aspects. Therefore, you can file an application on each “invention” found in your creation; the design invention embodied in the aesthetic features and the utility invention embodied in the functional aspects.

So, in summary, there are three types of patents: utility patents (with provisional and non-provisional sub-types), design patents and plant patents. Your invention may overlap more than one of these categories. Therefore, you should investigate each and plan a strategy for how to protect your invention.

I hope you have found this presentation useful and informative. You can like and subscribe to my podcast or my youtube channel to be notified when new episodes are posted.

My name is Josh Stockwell and I am a patent attorney working in Providence, Rhode island. If you have any questions, you can reach me by email at jas@barjos.com or by phone at 401-228-8234 or 401-297-9012.

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