General Background

There are seven types of patent applications that can be filed in the U.S.: a provisional patent application, a regular patent application, a divisional patent application, a continuation patent application, a continuation-in-part patent application, an ornamental design patent application, and a plant patent application. In the U.S., like most other countries, an inventor must choose one type of patent application per invention. It may be possible to re-file an issued patent as a reissue application to broaden or narrow the patent under some circumstances.

Internationally, patents can be filed in conjunction with your United States filing or up to one year later. Moreover, you could file an application under the Patent Cooperation Treaty (a PCT application) in order to designate and preserve the right to subsequently file formal patent applications in one or more designated countries.

Types of U.S. Applications

We work closely with our clients to determine which is the most appropriate application type and tactic to meet your circumstances. The following is a more detailed overview of the types of U.S. Patent applications that can be filed:

A provisional patent application typically is filed on short notice to establish an early date of invention until a more complete patent application can be prepared and filed. This follow up regular patent application must be filed within one year of the provisional application's filing date. Therefore, a provisional application usually provides only a technical description of the invention, and it is not examined for patentability. Indeed, a patent cannot issue from a provisional patent application.

A regular patent application contains both a technical description of the invention and it defines the boundaries of the claimed invention. A regular patent application generally consists of (1) a discussion of the related technical field and problems that are solved by the invention, (2) a detailed description of the invention, including drawings that are helpful in describing the invention, and (3) claims that describe the metes and bounds (scope) of the invention.

Once a regular patent application is filed, it is assigned to an Examiner in the U.S. Patent and Trademark Office who determines whether the claims define patentable subject matter, including whether the invention is novel, useful and non-obvious. If so, a patent issues. For all applications except the provisional application, the applicant has a duty of candor to disclose to the Patent Office all known prior art an examiner might consider relevant to the question of whether or not to grant the patent.

A divisional patent application is filed after a regular patent application is filed if the patent applicant or Patent Examiner determines that the initial application claimed more that one invention. This is often a tactical decision dictated by the urgency of obtaining an enforceable patent on less controversial portions of the original application. A divisional patent application is examined for patentability, just like a regular patent application, and if its claims are found to be patentable, a separate patent will issue with the filing date of the originally-filed regular application.

A continuation patent application is filed after a regular patent application is filed if the patent applicant determines that the initial application disclosed or described a second invention which was not explicitly claimed in the original application. A continuation patent application is examined for patentability, and a patent issues when its claims are found to be patentable.

A continuation-in-part patent application may be filed after a regular patent application is filed, in the event the patent applicant materially improves upon his/her invention after the original application was filed. A continuation-in-part application permits the new improvements to be included and combined with material described in the earlier-filed application, giving the earlier-described portions of the invention the filing date of the original application. A continuation-in-part patent application is examined for patentability, and a patent issues when its claims are found to be patentable.

Design Patents are available in the U.S. to protect the new, original, and ornamental design features of a product. However, a design patent does not protect functional or useful features of a product, and therefore the protection offered by a design patent is very different from the protection available under utility or method patents. Design patent protection can be a useful complement to a form of trademark protection, which is available for unique and non-functional product configurations and packaging, called trade dress. Design patents are granted for a term of fourteen years. No maintenance fees are required for a design patent.

Plant Patents may be obtained for asexually reproduced, new and distinct varieties of plants, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tubular propagated plant or a plant found in an uncultivated state. No maintenance fees are required for a plant patent.

The cost of preparing a patent application varies with the complexity of the invention. We will review your invention and give you a cost estimate. Contact us at info@iph2.com.