By UpCounsel Patent Attorney Andrew Morabito

Many inventors and entrepreneurs wonder what type of patent application is the best for their invention. In some instances, one type of application is efficient and effective at protecting your invention, but not always. Below are the different kinds of patents you might wish to obtain, and talking with an experienced patent attorney will help determine the best route to take.

Utility Patent Application

A utility patent application is the most common type of patent application filed in the U.S. Patent Office. A utility patent issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing.

A utility patent will typically will protect your invention’s functional aspects, which include everything related to how the invention works and what the invention does. The utility application can provide broad patent protection, making it difficult for a competing product to avoid patent infringement. The utility patent application also is capable of protecting many different variations of a product with a single utility patent.

Design Patent Application

In a design patent application, the subject matter claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. A design patent permits its owner to exclude others from making, using or selling the design.

Design patents issued from applications filed shall be granted for the term of fifteen years from the date of grant. Design patent applications are the least common type of patent application filed with the U.S. Patent Office. However, they can be easier and cheaper than utility patent protection. If the main feature of the new product is the appearance (i.e. ornamental design), then a design patent will protect this main feature.

PCT application

A PCT (Patent Cooperation Treaty) application is filed to preserve the inventor’s rights to the invention before entering patent offices of other countries or regions. It can also be filed 30 months after the initial filing of the PCT application.

A PCT application can be a utility or a design application. The first phase of the PCT application is a single application before contracting the state patent office, similar to a utility or design patent.

Where the PCT application differs is during the second phase when the application can enter the national or regional phases of the various countries that are members of the PCT. It is important to keep in mind that entering the first phase requires an attorney and PCT filing fees, and entering each country in the second phase requires a certified attorney in each county or region and each county or region’s associated fees.

A PCT application does not itself result in the grant of a patent, since there is no such thing as an “international patent,” and the grant of patent is a prerogative of each national or regional authority. In other words, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases to proceed towards grant of one or more patents. The PCT procedure essentially leads to a standard national or regional patent application, which may be granted or rejected according to applicable law in each jurisdiction in which a patent is desired.

Multiple Applications for One Invention

There are situations in which an invention can receive adequate patent protection with a utility patent, a design patent and a PCT application. If your invention has a unique structure or function coupled with a unique ornamental design, then you should consider filing both a utility patent application and a design patent application. If you or your company plan to enter foreign markets, the filing of a PCT application will preserve your rights to file in these markets for two and half years.

This can be a difficult situation and it is recommended that you speak with a patent attorney prior to choosing this path. A design, utility or PCT patent application will provide you with “patent pending” while they are pending at the Patent Office.

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About the author

Andrew Morabito

Andrew Morabito

Andrew Morabito assists his clients in all areas of intellectual property law; patents, trademarks, copyrights. Having prepared and prosecuted utility and design patent applications covering electrical, computer software, computer hardware, internet technologies, telecommunication, medical technologies, semiconductors, manufacturing processes, mechanical devices, and consumer products, Andrew Morabito is also well versed in setting up small businesses and drafting the necessary legal documents (employment contracts, non-disclosure agreements, etc.) to protect you and your business.

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