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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Hello, and welcome to the patent pending made simple podcast. I'm Samar Shah, and on the other line is Jamie Brophy. Jamie, how are you?
Jamie Brophy:Hi. Good, Summer. How are you?
Samar Shah:I am doing well. Glad to be recording again. We haven't quit thus far, so that's a good sign. Absolutely. Very good.
Samar Shah:Well, today's episode is about different types of patent applications that somebody could file. I'm glad to be able to talk about this because there is some confusion when people call our office. They're not sure whether their invention is patentable, And if it is, what kind of patent should they file for? So I think this will be interesting to our listeners here. Jamie, do you wanna start us off by maybe talking about the types of patents that are out there that somebody could file for?
Jamie Brophy:Yeah. Definitely. The 3 main types are utility patent applications, plant patent applications, and design patent applications. With the utility application, there's 2 different types. There's the provisional application and the non provisional application.
Jamie Brophy:The provisional is just an application that is good for a year, and it expires after that year, and it's basically just a placeholder for your filing dates. And then within that year on or before the anniversary date of the year, you need to convert that to a nonprovisional application, And that's the application that will get examined by the patent office and hopefully end up being a patent.
Samar Shah:That's a great overview. Taking a step back beyond that, I think of utility patents as protecting how something works, the underlying mechanism for how something works or how the invention works. I think of the design patent as the ornamental shape or how something looks being able to protect that. Is that how you would categorize them too, Jamie?
Jamie Brophy:Yeah. Definitely. The official definition of a utility application is any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. So that's what's covered in a utility application. So the way something works, the way you make something, things like that.
Jamie Brophy:And then for the design application, it basically just covers the way something looks. So it's a lot more narrow coverage in a design patent versus a utility.
Samar Shah:Yep. That makes a lot of sense. You had mentioned that the provisional application is only good for 1 year, and I and I'm gonna ask you questions from the perspective of somebody who has questions about this, Jamie. Yep. So does the provisional application turn into a patent grant?
Jamie Brophy:No. The provisional is, like I said before, just kind of a placeholder for your filing date. You want the provisional application to be as complete as possible, you want it to have everything in it that you think you'll need in your non provisional, but it just sits at the patent office for a year. It doesn't go anywhere. It's a great option for quickly filing something that you need to get protection for, and then it gives you that year to do further inventing or find investors or find manufacturers with the confidence that you have.
Jamie Brophy:You do have patent pending status, but, no, a provisional application will not be examined by the patent office, and it will not result in a patent.
Samar Shah:Yep. I agree with that. A lot of attorneys will kind of poo poo or downplay the provisional application. To give you some context, at my old firm, we routinely did not file provisionals at all, mostly because it didn't make economic sense for the law firm. The firm just didn't make a ton of money on those applications.
Samar Shah:We would file them sometimes if there was an emergency or if there was a on sale bar date coming up or a disclosure date coming up, but normally, we wouldn't file them. And and a lot of people who actually call our office, they're like, hey. I don't wanna file a provisional because I heard they're terrible. And, Jamie, what do you think about that? Do you recommend your clients to typically file a provisional, or do you think it's a bad idea to file them?
Jamie Brophy:No. I think it's a good idea to file them, especially for independent inventors, small companies. A lot of times when people come to us, they haven't fully fleshed out what the invention exactly is. You know? They have some ideas for how it's gonna work, but they haven't done a prototype.
Jamie Brophy:They haven't had engineering drawings done or anything like that. They're nervous about disclosing it to anybody that would need to help them with those things, which makes perfect sense. So I think a provisional is an important step. It gives you some protection while you continue to work on your invention.
Samar Shah:Yeah. I agree with that. I think provisionals are great. The challenge with provisionals is that there are very few legal requirements for a provisional application. So you could file theoretically, just one sentence about your invention as a provisional application or a back of a napkin description of your invention and file it as a provisional.
Samar Shah:I've seen a lot of provisionals like that, and I'm sure other attorneys have seen them as well. I think it'd be easy to conclude from that that, hey, provisionals are terrible. They don't give you enough protection. They don't meet the enablement requirement and so on and so forth. What I like about the way we practice is that we do a pretty good job on the provisional application.
Samar Shah:They're pretty full featured. They usually always meet the enablement requirements and a lot of other requirements. And, Jamie, could you talk about what makes for a good provisional application or how you think about what needs to go in that provisional application?
Jamie Brophy:Yeah. I mean, I try my best to write the provisional applications in sort of the same manner I would write a non provisional application. So whatever's in the provisional application is entitled to that filing date of the provisional application. If there's additional things or things that are not disclosed in the provisional that are in the nonprovisional, that additional material won't be entitled to the earlier filing date. That's sort of the problem with doing a what I like to call a quick and dirty provision provisional where you just need to get something filed.
Jamie Brophy:You submit just kind of what you have without really writing out a full application. If I have the time, if the client's not in a hurry, I like to write them the same way I would write a nonprovisional. Having all the drawings in there to the best of our ability, making sure the invention is enabled, making sure we've disclosed what we think is the best mode of practicing the invention. I would think about what I want in the claims and make sure I disclose those things in the provisional application. So, yeah, I try to make it as full of an application as I can, but sometimes it depends on what information the client has and how far they are in the inventing process.
Samar Shah:Yeah. That makes sense. You can only protect what the client has invented, but I think it's a mistake. Sometimes inventors think that, oh, well, I can just put anything in that application and file it. And I think that's a pretty big mistake and potentially very dangerous too from a patent perspective.
Samar Shah:We have rules in the US about statutory bar dates, which essentially refers to your timelines for when you can get a patent. The first requirement is that you have to file a patent within 1 year of your public disclosure date, or the second requirement is that it has to be within 1 year of your sale date. So sometimes this is what happens. Clients will disclose their invention or they'll sell a prototype to somebody as a way to test their invention. They get close to the 1 year mark and they're like, well, I need to file something and might as well file a provisional just because I don't have the time to put one together or they wanna save some money and try to put it together themselves or or something like that.
Samar Shah:If you don't meet some of the disclose your invention in sufficient detail to cover that sale or that disclosure, then let's say you you file your non provisional 1 year from that provisional date, that non provisional application will only get priority to the provisional date to the extent that it's coextensive with the provisional. If it's not, then your own prior disclosure, which would have happened 2 years ago or 2 years from your non provisional date, would serve to bar you from getting a patent. So if you don't do it right, I think you could open up a trap door for yourself and have your own disclosures invalidate your nonprovisional down the road.
Jamie Brophy:Yeah. That's a great point. You know? And there might be a situation where you've made a small change to your invention, and you put that in the nonprovisional, but it's not in the provisional. So it's not entitled to that earlier filing date.
Jamie Brophy:But it could be considered an obvious modification, and we would run into similar issues with that. So, yeah, definitely, that's a great point.
Samar Shah:Yeah. And this may be beyond the scope of our initial discussion, but if you have a disclosure or a sale before you file a patent, you have to become really careful and vigilant about that first disclosure. And I would circle 1 year from that date on your calendar and make sure that you file a high quality nonprovisional from that disclosure date. Right? Normally, inventors will file the provisional first and then circle 1 year from the provisional filing date to file the nonprovisional.
Samar Shah:But if the disclosure happened before you file the provisional, then I would key everything off of the disclosure date and not necessarily your provisional filing date.
Jamie Brophy:Yeah. I think that's great advice. And it might be worth talking a little bit about what we mean by public disclosure. I think it's a good practice for any disclosure that you've made even if you think it is protected under a nondisclosure agreement or something like that to make sure that you have protection in place within a year of any disclosure. But maybe we should talk about what we mean by public disclosure.
Samar Shah:Yeah. I think so. Public disclosure to me is a very complicated topic, and maybe we we should have a podcast episode just on that. But from my perspective, there's a lot of gray area in what public disclosure is. The federal courts, especially the federal appeals courts and the supreme courts have not dealt with the public disclosure issue all that often.
Samar Shah:So there is not a lot of a guideline from the courts about nuances of what constitutes this public disclosure. But there are some bright line rules from my perspective, and this is a very narrow safe interpretation of the law, is that anytime you disclose something to anyone without a nondisclosure agreement or a confidentiality agreement, that disclosure is considered public disclosure. Or at least that's how we should think about it for keying patent deadlines. That means any disclosure you made on social media or even if it's on a private Facebook group or social media group. If it's a sale or if you sold a prototype, a lot of these things can trigger your public disclosure date and follow on deadlines.
Samar Shah:Jamie, is that how you think about it as
Jamie Brophy:well? Yeah. I think that's a great general rule to follow. I'll add public disclosure to our list of topics
Samar Shah:for future podcasts. That's right. I am sure the listeners are gonna be awaiting. Yeah. And there are a lot of exceptions.
Samar Shah:So sometimes I've had this several times where people call the office and they're like, well, I disclosed it to my parents. Does that count as public disclosure? Or I disclosed it to my spouse. Does that count as public disclosure? There is a lot of gray area here, and like I said, not a lot of guidance from the courts about these things.
Samar Shah:So there has been no supreme court or a federal circuit opinion about whether disclosing something to your parents would count. But I would say that, you know, if you don't have an NDA, be on the safe side and think of it as a public disclosure.
Jamie Brophy:Yeah. Make your parents sign an NDA.
Samar Shah:Yes. This is what lawyers are for. Right.
Jamie Brophy:So okay. I think that covers utility applications and, you know, utility to me incorporates provisional and nonprovisional. We could talk a little bit about design patents. We already touched on that. A design patent would just cover the way something looks.
Jamie Brophy:There is no option for a provisional for design applications. A design application can claim priority to a nonprovisional, but it can't claim priority to a provisional. So if you have a new ornamental design for how something looks, a design patent would be for you. Do you have anything to add, Summer, about design applications?
Samar Shah:No. I think that's good. If you have made a public disclosure and if you think your invention might be a design patent, you need to be really careful when you start thinking about putting a provisional together because we've actually had this. We had clients who have filed their own provisionals. They wait a year to contact us and then they're like, hey.
Samar Shah:I wanna file a design patent. But if you made a disclosure prior to that, you know, when you're filing bar date, you may be out of luck. Right? A design patent application may not be a viable option for you anymore. So there is that extra consideration that you should think about if you think your invention would qualify as a design application.
Jamie Brophy:Yeah. That's a great point. Or maybe they filed a provisional thinking they're gonna go for utility. We do a patentability opinion and discover it's probably not patentable, and they say, well, maybe I can do a design application, and we think that that might be a good option for them. But what's approaching that 1 year public disclosure on sale bar date, so that could be an issue.
Jamie Brophy:Also something to think about.
Samar Shah:Yeah. I agree. You know, I wonder if we are being a little too theoretical and abstract for our audience. Jamie, do you wanna maybe together go through some examples of things that you would consider utility patents and design patents? For example, I'll start us off.
Samar Shah:If a client has invented a fidget spinner toy, what would you recommend? Would would that be a utility or a design patent to you?
Jamie Brophy:Off the top of my head, I'm thinking it'd probably be a design patent because fidget spinners are known. If they came up with a new shape for it or a new way that it looks, that it'd probably be a design patent unless, you know, it spins in a new and unique way or something like that. But, yeah, to me, that sounds like a design patent.
Samar Shah:Yeah. I would agree with that. I mean, if you have designed a new mechanism for how it spins or if it has gears or differential torque ratios or something like that, then, yeah, that would be a utility patent. But if it's just the way it looks, I think that would be a design patent. So I'd agree with that.
Samar Shah:What about if somebody has invented a new shape of a hammer that's more ergonomic?
Jamie Brophy:Yeah. Design patent. What do you think?
Samar Shah:Yeah. I I would agree. I mean, hammers have been known for centuries. So, yeah, I don't think that would fall under utility. It would just be the shape of the hammer, so that would be a design application to me.
Jamie Brophy:Yeah. Definitely.
Samar Shah:What about situations where somebody's invention can fall under both a utility and a design pen application? What kind of advice would you give to an inventor who's in those shoes?
Jamie Brophy:I would suggest applying for both. You never know what's gonna happen in the patent prosecution process. So my preference would be to file both and to file them on the same day or approximately the same day. If budget allows, I would apply for both.
Samar Shah:Yeah. I agree. If budget allows, I would do both. If you only have budget for one application, the question that I like to ask clients is, what would you be most upset about if you found somebody copying either the utility or the functionality of the invention or the shape of the invention? Which one would upset you the most?
Samar Shah:That's usually a good starting point for figuring out what might be most important. Also think about whether copying the utility or the design would allow somebody to create a competitive product and whether that competitive product would be suboptimal in many ways. Right? If it's not as attractive, then that's also a good way to kinda prioritize these filings. Anything else that you would think about,
Jamie Brophy:Jamie? No. I think that's a great way of looking at it. Yeah. I think that's great advice.
Samar Shah:Okay. Great. So I think we've covered those. We have plant patents, which I don't have much to say about, Jamie. What what do you know about plant patents?
Samar Shah:Not much.
Jamie Brophy:And, you know, 23, 24 years of experience, I don't think I've ever seen a plant patent. I've definitely never worked on one. If you come up with a new plant, then you would wanna get a plant patent on it, but I've never done them personally.
Samar Shah:Yeah. Me neither. I know they theoretically exist, but I've never seen them. So somebody has has a bunch of plant patents and maybe we'll interview them one day. I think this is great.
Samar Shah:There's also the PCT application. Maybe we should talk about that. I'm sure some of the listeners will have questions about protecting their invention internationally, and maybe they've heard of the term PCT. Could you explain what that means?
Jamie Brophy:Yeah. So PCT stands for Patent Cooperation Treaty, and this is a treaty amongst bunch of different countries. If you're interested in protection outside of the US, you'd file 1 PCT application. And then within a preset time limit, maybe you can talk more about the time limit, Summer, but within a preset time limit, you would need to decide which countries you want to go into from the PCT. If you decide you want protection in Europe, Europe is all one.
Jamie Brophy:One patent office covers all of Europe. So European protection, protection in Japan, and protection in China. You could then branch off of your PCT application and file in all these different countries. Does that about cover it?
Samar Shah:Yeah. I think that's right. So from a timing perspective, you do have 1 year from your US application, your first US application to file the PCT application. So that deadline could be triggered by a provisional or non provisional, whichever one comes first, essentially. So you do have 12 months from your US application filing date to file the PCT.
Samar Shah:And then the PCT application will give you another 18 to 30 months to make a decision on which country you wanna file in. So the way it works is you get 30 months if you file the PCT as your first application or 30 months from your first priority application. So let's say you file the provisional first, You would have 30 months from that provisional filing date to make a decision on whether to file internationally or not. So in effect, the way it works for most clients who will file a PCT, they'll file the provisional. 12 months later, they'll file the PCT.
Samar Shah:And then 18 months after that, they'll have to make a decision on which countries they want protection. And that process going into each country is called the National Phase Entry Process. And most countries will have their own deadlines about when that national phase entry has to happen. Some countries are as short as 20 months, 18 months. Most countries fall at the 30 month deadline and then a few countries also fall under the 32 month deadline.
Samar Shah:I don't think any go past that. So maybe I should talk about some costs just so people have an idea. The PCT filing itself is $1,000 to $2,000 depending on if you're a micro entity or a small entity. It's not super expensive at that stage, and usually you would wanna file the same document that you filed in the US at the PCT. You had to reformat it and file some additional paperwork with it, but the content of the application, at least when we do it, is the same in the US and the PCT.
Samar Shah:After that, when you go into national phase entry is usually when the process gets very expensive. You have to hire lawyers in each individual country that you want protection in. So if you work with us, for example, we have connections with a lot of foreign councils, so you don't have to worry that. But if you're gonna do it on your own, you would have to find an attorney in that country to do the national phased entry. And in my experience, it ends up being about $4,000 or so per country if it doesn't require a translation.
Samar Shah:If it requires a translation, like in the Japanese pen office or the Korean pen office, it's another 2 to 3 k for the translation process as well. And then if you wanted to file the EPO, the European pen office, it's usually 6 to $8,000. And but that would give you coverage over all the European countries as opposed to going to the European countries individually. So that's when the process gets expensive. You know, if you're in 10 countries, you can very easily spend 60, 70 k in that process.
Samar Shah:So that's something you wanna think about. That process gets pretty expensive pretty fast.
Jamie Brophy:Yeah. Definitely. Luckily, your US patent protects you from anything being imported, but, unfortunately, it doesn't offer you any protection in other countries. So, yeah, if you plan on selling in other countries, PCT would definitely be the way to go. But I have a question for you about PCT, Summer.
Jamie Brophy:Is it possible for somebody to file a provisional in the US and then file the PCT application 12 months later and then enter the US during the national phase entry?
Samar Shah:Yeah. Absolutely. You can do that. I had somebody call my office and they said, you know, US applications have a filing fee. So they were like, can we just skip the US provisional and just file a PCT from the get go?
Samar Shah:And then you have 30 months from that date to do a national phase entry in the US. So, theoretically, that's possible. Not just theoretically, it's definitely possible for you to international phase in the US through the PCT. So it it could buy you some extra time.
Jamie Brophy:Okay. Yeah. Good to know. And then when you say it costs 1 to 2,000 to file, that's just the filing fee. Correct?
Samar Shah:That's the filing fee. You know, for us, we don't charge additional attorney's fees. We do charge paralegal fee for our paralegals to file the application. But, usually, we don't charge an additional attorney's fees because we just file the same document that we filed at the US application at the PCT level as well.
Jamie Brophy:Great. Okay. Yeah. I think that covers it for PCTs. Do you have anything else to add?
Samar Shah:No. I think this is it. I feel like you went through a lot of information at the listeners, so hopefully everyone stuck around till the end and hopefully found this informative and helpful.
Jamie Brophy:Yeah. Definitely. Alright. Thanks, Summer. Right.
Samar Shah:Yeah. Thanks, Jamie. Thanks everyone for listening. We'll be back with our next episode next time. Thank you for joining us on the Patent Pending Made Simple podcast.
Samar Shah:I hope you enjoyed our show. If you'd like to receive updates, view the show notes or access a direct link to any resource, go to the episodes page on patent pending made simple dot com. To help others find our podcast, please like, share, and subscribe. Thanks again for tuning in. I look forward to having you with us next time on Patent Pending Made Simple.
Samar Shah:This host, guests or any listener for any reason. The content of this podcast should not be interpreted as legal advice. All thoughts and opinions expressed herein are only those from which
Jamie Brophy:they came.