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Patent (Utility, Design and Provisional Applications)

The federal grant that lets an inventor exclude others from making, using or selling an invention for a fixed term - what can be patented, the novelty and non-obviousness tests, the difference between a utility, design and provisional application, and why the first-to-file rule makes the filing date everything.

Informational only - this is not legal advice. These definitions explain general legal vocabulary in plain English. They are not advice about your situation, reading them creates no attorney-client relationship, and the law differs from state to state and changes over time. For advice you can rely on, speak to a lawyer licensed in your state.

What it means

A patent is a right granted by the United States Patent and Trademark Office to exclude others from making, using, selling, offering to sell or importing an invention for a term fixed by statute, in exchange for a public disclosure of how it works. It does not give the holder a right to practise the invention - an improvement on someone else's patented device may itself be patentable and still infringe the earlier patent - and it is enforced only by the holder, in a civil suit, usually in federal court. Three kinds are issued: a utility patent for a new and useful process, machine, article of manufacture or composition of matter, or an improvement of one; a design patent for the ornamental appearance of an article; and a plant patent for a new asexually reproduced plant variety.

To be patentable an invention must be eligible subject matter - laws of nature, natural phenomena and abstract ideas are excluded, which is where most software and diagnostic-method disputes are fought - and must be new, useful and non-obvious. Novelty is judged against the "prior art": everything patented, published, sold or publicly used anywhere before the application's effective filing date, subject to a short grace period for the inventor's own disclosures. Since the America Invents Act, the United States awards the patent to the first inventor to file, not the first to invent, so a public demonstration, a sales pitch or a journal article before filing can destroy the inventor's own rights. The application must describe the invention in enough detail that a skilled person could make and use it, and ends with numbered claims that define exactly what is protected; the examiner's objections and the applicant's responses over the following months or years are called prosecution.

A provisional application is a lower-cost placeholder: it is not examined and never becomes a patent by itself, but it secures a filing date and lets the applicant say "patent pending" for a period fixed by statute, within which a full non-provisional application claiming its date must be filed. It is only as good as its disclosure - a provisional that does not describe what the later claims cover gives them no priority. Infringement is judged by comparing the accused product to the claims, and remedies include an injunction, damages of at least a reasonable royalty, and in wilful cases enhanced damages; a defendant may attack the patent's validity in court or in an administrative review at the Patent Office.

Where this comes from

Patents are governed by title 35 of the United States Code: eligible subject matter at 35 U.S.C. § 101, as construed in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), and Mayo Collaborative Services v. Prometheus Laboratories, 566 U.S. 66 (2012); novelty and the first-inventor-to-file rule at § 102 as amended by the Leahy-Smith America Invents Act, Pub. L. 112-29 (2011); non-obviousness at § 103 (KSR International v. Teleflex, 550 U.S. 398 (2007)); the disclosure and claim requirements at § 112; provisional applications at § 111(b); the term at § 154; design patents at §§ 171-173; infringement at § 271 and remedies at §§ 283-285 (Halo Electronics v. Pulse Electronics, 579 U.S. 93 (2016), on enhanced damages); and inter partes review at §§ 311-319. The Patent Office's rules are at 37 C.F.R. part 1 and its examination manual is the MPEP. The term, the grace period and the provisional period are fixed in the statute and are not stated here.

When people hire a lawyer for this

The two conversations to have with a patent lawyer or registered patent agent happen before anyone else hears about the invention: whether it is worth patenting at all against the cost of prosecution and the alternative of keeping it a trade secret, and how to file something - even a provisional - before the first demonstration, sale or publication. An inventor who has already disclosed publicly should ask immediately whether the grace period still allows a filing. A business that receives a letter accusing it of infringement should not respond on its own; the letter may be an invitation to license, a prelude to suit, or a claim the sender cannot support, and the response shapes all three.

Find a lawyer for this in your state

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Part of the LawyerLand plain-English legal glossary. Definitions are written from primary sources - statutes and court rules - and each entry states the authority it rests on, or says plainly when the doctrine is state law with no national rule.

If you cannot afford a lawyer, civil legal aid programmes provide free help with many of these problems: civil legal aid programmes by state.

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