By Bob Migliorini
In last quarter’s article, we reviewed the strategies for overcoming an obviousness rejection, which may be critical for turning a patent application into a granted patent. In this quarter’s article, we will cover the three types of U.S. patents, which are 1) the utility patent, 2) the design patent and 3) the plant patent. The focus will be on the distinctions between them and when each should be used.
A utility patent covers the novel structure and function of a useful invention. A utility patent is the type that people are most familiar with, and it is the most utilized type of patent application filed in the U.S. Essentially, it is directed to the way something works. Utility patents are for new and useful products and processes that fall into four sub-classes of inventions. Those four sub-classes are machines (i.e., a metallizer), processes (i.e., a method of coating a metallized film to improve scuff resistance), articles of manufacture (i.e., rotogravure printing cylinder), compositions of matter (i.e., an acrylic coating formulation), and improvements thereof. Utility patent applications are the most complex and costly to draft. A utility patent application publishes (becomes publicly available) 18 months from its earliest effective filing date. The term or life of a utility patent is 20 years from its earliest effective filing date. When a utility patent application turns into a granted patent, the patent owner must pay maintenance fees to keep the patent alive. The maintenance fees are due four, eight, and 12 years from the grant date and are $2,150, $4,040, and $8,280, respectively, for a large entity owner. If one of these maintenance fees is not paid, then the patent lapses, which means that it is available for anyone to use without risk of patent infringement. However, many patent owners intentionally avoid paying maintenance fees as they realize over time that the patent does not have commercial merit. Figure 1 is an exemplary utility patent for an article of manufacture.
A design patent covers the new and original nonfunctional ornamental features of the design of a product. A design patent is directed to the aesthetic features of a product. So the way something looks as opposed to the way something functions (utility patent). Examples would be the new shape of a container or a new surface texture for a carpet or covering. Design patents are the second most utilized type of patent filed on in the U.S. With a design patent application, the drawings accompanying the application are essential, and depict different views of the design of a product. In sharp contrast to a utility patent application, there is very little written description for a design patent application, and therefore they are far less costly to prepare than a utility patent application. A design patent also must have a single claim that is directed to the ornamental design of the product. For example, “The ornamental design for a BOTTLE as shown and described.” A design patent does not publish until it grants into a patent. The term or life of a design patent is 15 years from its grant date. The nice thing about a design patent is there are no maintenance fees after it grants. Finally, a design patent starts with the letter “D” followed by a number. Figure 2 is an exemplary design patent for choke proof cap for a beverage container.
Finally, a plant patent covers the covers novel asexually reproduced plant varieties, other than a tuber, propagated plant or a plant found in an uncultivated state. Plant patents are important in agricultural and flower industry. Plant patents are the least utilized type of patent filed on in the U.S. With a plant patent application, the drawings are very important. Like design patents, plant patents can only have a single claim that is directed to a new and distinct variety of plant as shown and described and described in the drawings accompanying the patent application. Sometimes a specimen of the plant must be furnished to the U.S. Patent and Trademark Office during the examination of the application. Like a utility patent application, plant patent applications publish 18 months from their filing date. They also have a 20-year term of protection from their earliest filing date. Like a design patent, there are no maintenance fees due after the patent grants. Finally, a plant patent starts with the letters “PP” followed by a number.
Now that we have reviewed the three types of patents that exist in the U.S., there could be circumstances where an invention may warrant filing two patent applications. For example, say an inventor conceives of a new invention for a unique shape of a bottle and that bottle also has some new compositional parameters (for example, polymer type, additives, and/or multi-layer structure) associated with it. Both a utility patent application directed to the composition of matter and a design patent application directed to the ornamental shape of the bottle may be appropriate. The table above is a summary for the important differences between utility, design and plant patents. █
Bob Migliorini is a patent attorney. He can be reached at 203-200-8065 or rampatlaw@gmail.com.
