Understanding Patents

Types of Patents

There are the three types of patents that can be filed in the US: design, plant and utility. Although at Upstate, we file primarily utility patents, all three types, plus provisional and PCT patents, are described in more detail below.

Design Patents

Design patents are granted to any person who has invented a new, original and ornamental design for an article of manufacture. The appearance of the article is protected. For example, the look of iPods and a Yoda doll were both subjects of issued design patents. A design patent has a term of 14 years.

Plant Patents

Plant patents are granted to any person who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated spores, seeds, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state. A plant patent has a term of 20 years from the application date.

Utility Patents

Utility patents are granted to anyone who invents or discovers new and useful process, machine, manufacture, or compositions of matter, or any new and useful improvement thereof. "Process" means a process or method. "Manufacture" refers to articles which are made. "Composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. A Utility patent has a term of 20 years from the application date. Provisional patents and PCTs are utility patents.

Provisional Patents

A provisional patent application is an informal utility patent application that can be filed relatively quickly and cheaply to provide protection for an invention. It is especially useful where a public disclosure of the invention, such as a paper or poster presentation, is imminent. Filing a provisional also provides 12 months to further develop the invention, determine marketability, acquire funding, seek licensing or seek manufacturing before having to face the major expense of filing a regular patent application.

Provisional patents expire after one year, but can be "converted" into a non-provisional utility application at any time during that year. It is important to note that although there are no formatting requirements for provisional patent applications, they must meet all of the statutory requirements of non-provisional applications, including novelty, nonobviousness, utility, best mode and enablement. Enablement means that the description of the invention contained in the patent application enables someone of average skill in the relevant art to make and use the invention without undue (i.e., excessive) experimentation.

PCT Patents

A PCT application or simply, a PCT is a utility patent filed under the Patent Cooperation Treaty, an international patent law treaty, concluded in 1970 which provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. As of December 1, 2011 there were 144 contracting states, including all European and North American countries, and most countries in Asia. A PCT can be filed within one year of the priority date of any patent application that has been previously filed in one of the contracting states. Then within 30 months of that priority date, the PCT can be filed in any of the contracting states as a national phase application (this is known as "entering the national phase"). Some jurisdictions, such as the European Patent Office (EPO) and China, accept applications later than 30 months.

About 18 months after the priority date of the PCT (the same as for the original application), the PCT application will be published and the results of a search performed by an International Searching Authority (ISA) will issue, accompanied by a written opinion regarding the patentability of the invention. It is important to note that the PCT application expires after 30-32 months, and there is no "international patent". All patent prosecution is done at either the national (e.g., US, China) or regional (e.g., EPO) level, and all patents are evaluated and issued according to the rules and regulations of that jurisdiction.