What is a Patent?

What is a Patent?

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Patents relate to bestowing exclusive rights to the creation of an invention.  Specifically, a patent grants a “right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited duration.^[1]35 U.S.C. § 154

Three types of patents exist: utility patents, design patents, and plant patents.  A utility patent “protects the way an article is used and works.”^[2]35 U.S.C. § 101   A design patent “protects the way an article looks.”^[3]35 U.S.C. § 171   Additionally, a plant patent relates to “discover[ing] and asexually reproduce[ing] any distinct and new variety of plant.”^[4]35 U.S.C. § 161   Each of these types of patents will be briefly discussed.

Utility Patent

Patent protection may be granted for a utility patent where the invention is new, useful, and nonobvious.^[5]35 U.S.C. § 101   It makes logical sense that the invention must be new, for what benefit would be conferred on recreating that which has already been done?  An invention is generally useful if it is capable of use or benefit.^[6]Useful is generally construed in a broad way.  If the invention has some potential use, then it may be considered sufficient for this requirement.   Additionally, the idea behind a requirement of nonobviousness (inventive step in Europe) is that normal routine research or effort should not be sufficient to get a patent.  Because a patent will grant a temporary monopoly, the requirement that the invention be more than mere routine would make sense – the incentive is a temporary monopoly in exchange for something that is greater than simply a product of a normal or routine system.

A utility patent lasts for twenty years from the first date of priority.^[7]See, e.g., 35 US.C. § 120 (benefit of an early filing date).   Additionally, the United States in March 2013 adopted a “first-to-file” patent system^[8]See, e.g., the Leahy-Smith America Invents Act. , consistent with a majority of international countries’ patent systems.  The change to a “first-to-file” system means that greater emphasis is now on the date that the patent application is filed.  Prior to March 2013, the focus was on a “first-to-invent.”  An inventor could show he was the true inventor by producing documents showing the date of actual invention.  With a “first-to-file” system, however, the first inventor^[9]In order to file for a patent under the “first-to-file” system, it is important to remember that one must still be the “inventor” in order to be eligible to file for a patent under the … Continue reading  to file with the patent office gets the benefit of potentially receiving a patent. 

Utility patent applications come in two flavors: provisional and non-provisional. In general, a provisional application requires a specification (e.g. a description of the invention, etc.), a drawing if it is necessary to the understanding of the invention, and a fee.^[10]See, e.g., 35 U.S.C. § 111.   Many times, an inventor will provide a conference paper, a scientific publication, or in-house research material as the basis for a provisional application specification.  Additionally, although not a requirement, a patent attorney will oftentimes insert at least one claim relating to the invention.  A provisional will only last for one year.  By that time, a non-provisional patent must be filed in order to preserve patent protection.

A provisional patent application is only as good as the content that it contains.  In essence, the provisional application stands as a book holder to whatever is disclosed.  So if the ‘real’ invention is disclosed later in the non-provisional application, the provisional will not be of any benefit.  Priority to a provisional application is only conferred when that which is granted in the actual patent was originally disclosed in the provisional application. 

A non-provisional patent application requires a specification, one or more claims, drawings when necessary, an oath or declaration, and a fee.^[11]Id.  It should also be noted that with both the provisional and non-provisional applications, specific page and application formats must be observed in order for it to be accepted by the patent office.  As indicated above, a provisional application will act as a book holder in establishing priority of when the inventor filed for patent protection.  Unlike a provisional application, a non-provisional application will actually start the patent review process.  Again, although it may be obvious, a provisional and non-provisional application do not grant the inventor the full rights of a patent until an actual patent is issued.^[12]The American Inventor Protection Act of 1999 Section 154(d) introduced “Provisional Rights” which may begin on the date of publication of the application.  Such provisional rights relate … Continue reading

Once a patent issues, maintenance fees must be paid in order to keep the patent active (i.e. of protection and/or force, etc.):

• IN GENERAL — The Director shall charge the following fees for maintaining in force all patents based on applications filed on or after December 12, 1980:
  • Three years and 6 months after grant, $980.
  • Seven years and 6 months after grant, $2,480.
  • Eleven years and 6 months after grant, $4,110.^[13]35 U.S.C. § 41(b)

Design Patent

A design patent covers the ornamental features of an invention.  Like a utility patent, it must also be novel and non-obvious. Generally, an ornamental feature includes a feature lacking any practical utility (i.e. the sole purpose of the feature is aesthetic, etc.).  Design patents are valid for 14 years from the issue date and do not have any maintenance fees.^[14]35 U.S.C. § 171   Additionally, they are relatively easy and inexpensive to get, but can be a powerful source of protection.  For example, design patents have given Apple Computers considerable power in safeguarding its products from knock-off imitations.^[15]See, e.g., Jim Davis, “Apple wins round in iMac knockoff suit,” September 20, 1999, available at http://news.cnet.com/Apple-wins-round-in-iMac-knockoff-suit/2100-1001_3-232617.html; see also U.S. … Continue reading   Additionally, another common example may include the iconic Coke bottle^[16]U.S. Patent No. D48,160.  which received design patent protection in 1915.

Plant Patent

Plant patents relate only to asexual plants (i.e. the ability to reproduce exact replicas of the plant).  Like a utility patent application, plant patents have both provisional and non-provisional applications, and the requirements are almost the same as the utility patent application.^[17]See, e.g., 37 C.F.R. 1.163 (indicates that a plant patent application requires a drawing)   To be eligible to file a patent application, inventorship must be satisfied, which include:  1) discovery or selection of a new and distinct plant; and 2) the plant is asexually reproduced.^[18]Id.   Beyond the requirements, plant patents are known for their beautiful full color images and drawings.  The plant patent lasts for 20 years from the issue date and also gives the owner the same exclusive right as a utility patent. ^[19]35 U.S.C. § 161

Plant patent protection is largely credited to the work of Luther A. Burbank, a renowned botanist and horticulturist. He was known to have developed 800 strains of plants, including fruits, flowers, grains, grasses, and vegetables.  His work spurred the passing of the 1930 Plant Patent Act, four years after his death.  Interestingly, sixteen plant patents were issued to Burbank even after his death.

An example of a peach tree plant patent is shown below.^[20]U.S. Plant Patent 621.  This is an example of a plant patent.  The original plant patent would have been in color.  It has been replicated here in black and white.