What is a Patent?

A patent protects an invention and gives an exclusive right to the benefits of design. The terms of the contract are simple. The United States grants the inventor the right to exclude others from making, using, selling, and offering to sell the patented invention for some time.

A patent is a contract between the United States government and holder of the invention and granted by the federal government through the USPTO. States are not allowed to issue patents. A granted patent gives its owner the right to exclude others from making, using, offering for sale, selling, or importing the patented invention. Patent rights are territorial.

Currently, the life of a patent is 20 years from the filing date of the patent application that was the basis for the issuance of the patent.

Types of Patents

The types of patents are utility patents, design patents, plant patents.

Utility Patents

Relate to a new or improved machine, article of manufacture, a composition of matter, or a process.

Design Patents

Relate to an original, useful, and ornamental or aesthetic article of manufacture.

Plant Patents

Relate to a new asexually reproducible variety of plants.

Provisional Patent Applications (PPA)

A low-cost option that will not issue into a patent itself, but allows the applicant one year to file a more expensive non-provisional patent application. PPAs are commonly used as a place saving tool.

Beginning in June of 1995, inventors in the United States have been able to file provisional patent applications. This application has a cost-saving advantage over other costlier patent applications.

Requirements For A Filing Date

A PPA has fewer requirements than a non-provisional patent application. To obtain a filing date for your provisional application, a description, an informal drawing if applicable, a cover sheet, and a return receipt postcard are required.

It is important to note that 35 USC Section 113, only requires a drawing if it is "necessary."

Effect of a Provisional Patent Application

A PPA gives an inventor one year to file a non-provisional patent application and claim the benefit of the filing date. By filing a PPA, an inventor can label an invention as "patent pending."

A PPA has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended.

Hence, an applicant who files a provisional application must file a corresponding non-provisional application during the 12-month pendency period.

Claiming Priority

While you can claim priority back to your PPA from your non-provisional application, your provisional application cannot claim the benefit of a previously-filed application, either foreign or domestic.

A claim for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date, whichever is later. Refer 37 CFR 1.78 as amended effective November 29, 2000.

"The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out his invention."

Thus, it is vital to ensure that a provisional patent application fully describes all the features and benefits of an invention. A common misconception is that a provisional patent application is always a "quick" patent application or a "poor man's patent."

A provisional patent application is not examined by the USPTO, and a patent will not issue from a provisional patent application without filing a non-provisional patent application within a year.

Advantages of Filing a Provisional Patent Application

The main advantage of filing a provisional patent application is that it buys the applicant time. Provisional patent applications can be a quick way to establish a filing date.

It will give time to the inventor to test and fine-tune his invention, assess the commercial success of the invention, or raise money for the manufacturing and marketing of his invention.

Another related advantage is that the filing of your provisional patent application constitutes a "reduction to practice." It constitutes a reduction to practice as long as it completely describes the invention as claimed in the later-filed utility patent application.

A PPA can also be used to easily remove USPTO references cited against your later-filed related regular patent application.

One alleged advantage commonly put forth is that a provisional patent application can be used to effectively "extend the life of a patent."

The PPA can be helpful in arts where the value of the patent is highest towards the end of its term. Chemical and biotech innovations often fall into this category. Because these innovations are usually not initially valuable when the patent is filed, as they are undergoing the long process of FDA approval, and they are often still valuable.

Digital, electrical, and mechanical innovations are often obsolete near their 20-year term; it is usually best to obtain patent protection as soon as possible.

Utility Patent Application

Also referred to as a "regular patent application" or a "non-provisional patent application." The most common patent application that can be used for a new or improved machine, article of manufacture, composition of matter, or process.

Examined by the USPTO, this application can lead to an issued patent. The invention must be new, useful, and nonobvious. One can claim the benefit of the filing date of a provisional patent application if the provisional application fully describes the invention, later described in the utility patent application.

It has a specified formal format and contains claims that define the extent of your invention. The services of a patent professional are required when preparing and filing a utility patent application and is valid for 20 years from the filing date of the application.

Design Patent Application

Used for a new, useful, and ornamental or aesthetic articles of manufacture and contains a set of drawings to showcase the invention from all sides. A design patent application focuses more on drawings to describe the scope and features of an invention.

It is usually is issued for the design itself, not for any useful features or benefits defined by the drawings. It is valid for 14 years from the date of issue of the patent.

Plant Patent Application

A plant application is similar to a utility patent application, except that it is for asexually reproducible plants, which include plants that reproduce by root cuttings, grafting, rhizomes, bulbs, and other methods.

The application must contain a complete botanical description of the plant and the characteristics that distinguish it. It is valid for 20 years from the filing date of the application.

Additional International Patent Applications

There are two types of international patent applications, Paris Convention Patent Applications, and PCT Patent Applications.

Paris Convention Patent Applications

Within one year of filing a patent application in the United States, the Paris Convention allows the filing of patent applications directly in other countries and claim the benefit of the priority of filing date in the United States.

These are often used when an applicant only wants to file in several countries. The cost of filing and length of patent examination differs from country to country.

PCT Patent Applications

A Patent Cooperation Treaty (PCT) application must be filed within one year of filing a patent application in the United States.

The application is briefly examined on an international level, and thus allows the applicant to delay costly filings in other countries and delay filing a patent application in other countries for up to 30/31 months from the original filing date in the United States.

The benefits the applicant gets are, it allows the applicant to delay the large cost of filing applications around the world by establishing their priority, it will enable the applicant two opportunities for international examination, it allows the applicant to see how their patent application does in the United States, and some countries will allow a granted United States patent to be filed as an amended patent application through the PCT.

Grant of a patent in the United States does not guarantee patentability in other countries.

The examination is often conducted in 2 phases, the international phase, and the national phase. The international phase is the filing of the application and the optional substantive examination.

National and Regional Phase

The steps of the procedure are Filing, Search, Publication, Optional Examination, and Subject Matter.


Filing an international application with a suitable patent office called a Receiving Office (RO). The international application needs to be filed in one language only.

At least one applicant must be a national or resident of a Contracting State to the PCT, otherwise, no international filing date is accorded. All Contracting States are automatically designated.


A search or international search is then made by an authorized International Searching Authority (ISA) to find the most relevant prior art documents regarding the claimed subject-matter. This results in an International Search Report (ISR), together with a written opinion regarding patentability.

The ISR is generally provided by the ISA to the applicant nine months after filing of the application in the event of a first filing and 16 months after the priority date in the event of a subsequent filing (i.e., claiming the priority of a first filing).

It is together with the international application. The written opinion is initially confidential.


Eighteen months after the filing date or the priority date if any, the international application is published by the International Bureau (IB) of WIPO, based in Geneva in one of the eight "languages of publication" namely Arabic, Chinese, English, French, German, Japanese, Russian, and Spanish.

Optional Examination

An international preliminary examination may optionally be requested and is achieved by an authorized International Preliminary Examination Authority (IPEA), which results in an International Preliminary Examining Report (IPER).

When an examination is demanded, the contracting states for which the examination is requested are called Elected Offices; otherwise, they are called Designated Offices.

Subject Matter

Rules 39 and 67 permit International Searching and Preliminary Examining Authorities not to carry out search and examination on certain types of subject matter, such as scientific and mathematical theories, methods of doing business and computer programs to the extent that the Authority is not equipped to carry out a search or international preliminary examination concerning such programs.

After 30 months from the filing date of the international application, the international phase ends, and the international application enters in national or regional phase.

Any national law may fix time limits that expire later than 30 months. If the entry into the national or regional phase is not performed within the prescribed time limit, the international application generally ceases to have the effect of a national or regional application.

For a free consultation regarding filing a patent application, please use our contact form or contact our registered patent application attorney Marc Baumgartner at (503) 546-3452 (Bend, Oregon).