US: The different types of US patents


Paul J Sutton

US: The different types of US patents

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Many people, lay and professional, are not aware that there are several different types of US patents available to inventors. Some use the word patent to describe only what they call “mechanical” and “design” patents.

The truth is, applications for US patents generally fall within the categories of provisional, utility, design and plant patent applications. They cover very different types of creations, as will be explored below.

The provisional patent application

The creature known as a provisional patent application came into existence on June 8, 1995. The provisional application provides inventors with a relatively lower cost first patent filing in the US.

A provisional application for patent is a US national application filed in the US Patent and Trademark Office (USPTO) under 35 USC 111(b). Technically, no patent claim is required to be within a provisional application, although seasoned patent practitioners will add one or more claims to the application. There is no examination of a provisional patent application by a USPTO examiner, as occurs with utility or nonprovisional applications. Similarly, no “provisional patent” is granted on a provisional application.

A primary purpose of the provisional application is to provide the means to establish a relatively early effective filing date in a later filed nonprovisional patent application filed under 35 USC 111(a), discussed below.

A provisional application has a limited non-extendible pendency life of 12 months from the date it is filed. There is no such thing as a “provisional patent”. An applicant who files a provisional application must convert it to a nonprovisional application within that 12-month period in order to benefit from the filing date of the provisional.

Failure to do so will result in a loss of these rights. To gain this benefit, such a nonprovisional application must contain a specific reference to its corresponding provisional application.

The nonprovisional (utility) patent application

As stated, provisional patent applications may be converted to nonprovisional counterparts. Nonprovisional applications may also be filed without and independent of provisional applications. Utility patents require far more complexity and are generally far more expensive to prepare and file. More than 90% of US patents issued are utility patents.

Utility patents cover and protect quite a variety of technologies and subject matters. By way of example only, they may include inventions whose nature is: mechanical, electrical, electronic, chemical, pharmaceutical, business method, computer software, foods and recipes, crop treatments, computer hardware, and smartphones.

“It is possible to protect the functioning of an article via utility patent, as well as its ornamental appearance via design patent.” - Paul J Sutton

Utility patents must contain at least one “patent claim”, which defines the intended scope of the patent. Such claims may be broad or limited in defining the intended scope of the patented invention. More limited claims may be designed around, while broader claims may read upon prior art and be invalid.

Such claims may recite unique and useful process, machine, manufacture or composition of matter. No prototype is required. The life of a utility patent is 20 years from its earliest effective filing date.

During prosecution of a utility patent application, there is often a serious but cordial give and take or negotiation between a USPTO examiner and the patent attorney representing the inventor(s). Only after an “allowance” issued by a USPTO examiner will a US patent be permitted to issue.

The US design patent

While utility or nonprovisional patents tend to cover novel apparatus and methods, the US design patent affords inventors a way to protect the way an article looks. It is the unique ornamental appearance of an article that the design patent is intended to protect. It is possible to protect the functioning of an article via utility patent, as well as its ornamental appearance via design patent.

The life of a design patent issuing on an application filed after May 13, 2015, is 15 years from the date of grant. Upon expiration of the 15 years, the public is free to copy exactly its ornamental appearance.

The US plant patent

Generally unknown to the public, the USPTO will grant a US plant patent covering a novel invented or discovered asexually reproduced plant. This may include cultivations, mutants, hybrids and newly found seedlings or other tuber-propagated plants found in an uncultivated state. The life of a plant patent is 20 years from its underlying application filing date.

Plants discovered in the wild or uncultivated state cannot be patented, because they occur freely in nature. Examples of plants that might qualify for plant patent protection might be a distinctive asexually reproduced violet or almond tree. A plant patent issued for such plants will prevent others from asexually reproducing the plant without a licence from the patentee.

Other USPTO patent-related documents

In addition to the types of patents described above, the USPTO may issue a “reissue patent,” to correct an error in an already issued utility, design or plant patent. The USPTO may also issue a “defensive patent publication” in lieu of a patent, to prevent others from patenting an invention.

Paul J Sutton is founding partner of IP boutique law firm Sutton Magidoff Barkume and is adjunct professor at New York University’s Tandon School of Engineering. He can be contacted at:

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Sutton Magidoff Barkume, patents, inventors, design, mechanical, USPTO, provisional application, utility patent