I said in Part I that the foreign patent decision is often a tough one for small business. The issue is cost, as well as the basic question of whether you really need foreign patent protection.
Remember - a patent is used to exclude competition, not to grant you permission to make and sell. If you have a U.S. patent then you (in theory) are protected from anyone, including foreign competitors, from selling your invention in the U.S. market. So you, (again in theory) have protection in the biggest market in the world economy.. And you have that protection at a fairly reasonable cost. thus the smart decision for many businesses is to get a U.S. patent and forget foreign filings.
But there are businesses, and some of my clients are included, in which some foreign markets represent a significant part of the total opportunity. And if the invention is easy to reverse engineer and produce, they recognize that they may lose that opportunity if they do not get foreign protection.
These are the small businesses that have the more difficult decision, because of the cost. The cost question is complex so I will oversimplify it. Roughly it will cost you $5000 per country to file. Not that expensive per country but you need to be very selective about picking your countries. My guideline is that if you can capture 80% of the market opportunity with X countries (plus your U.S. patent) then you should keep your filing to those X countries. Beyond that you are rapidly getting into diminishing returns.
For some opportunities you might achieve the 80% with the U.S., Germany and Japan. For others it may not be that clear. The other cost factor to consider is that in addition to these filing fees you will be faced with annual maintenance fees in each country to keep the patent in force.
In summary I urge all of my clients to work with me and think through whether they really need foreign protection. It is an invention by invention decision. Roughly half of my clients get U.S. protection only. They frankly do not envision trying to sell their idea overseas.
That's all for now. But I think we will need at least a Part III.
Tuesday, March 11, 2008
Monday, March 10, 2008
Foreign Patents - Part I
A frequent question of first time inventors - "How do I get a foreign patent?"
The answer is not simple. But let me try to make it somewhat simple.
When you file a U.S. patent, a clock starts ticking. In 12 months you have to do something in order to file foreign. You should in fact make your decision by about month 10 so you have time to do it right.
Let's first talk about why you have 12 months. In 1883 an intellectual property treaty called the Paris Convention was ratified by many of the world's industrialized nations. The Paris Convention allows an inventor in any member country to file a patent in their home country and then be able to file foreign patents in other member countries 12 months later. The foreign filings will be assigned a priority date corresponding to the date of their home filing. This means that any information that becomes public after that priority date can not be used against those foreign filings. Or in patent parlance that public information cannot be part of the prior art for that patent.
The Paris Convention was a big step forward for inventors. Most inventors are reluctant to go to the big expense of filing both home country and foreign patents early in the patenting process. They don't yet even know if that have a valid patentable idea. Furthermore they don't know if there is a market for their idea. It is like playing poker and having to make all your bets before seeing all of your cards. And filing foreign patents is an expensive proposition. More on that later. The Paris Convention gave inventors a chance to see a few more cards before placing their big bet.
But only a few more cards. As the time needed to get a validity opinion from your friendly national patent office grew year by year, and the time required to commericalize ideas increased the 12 month reprieve was not that big of a benefit in most cases.
Enter the Patent Cooperation Treaty (the PCT). In 1977 the PCT was signed by many countries. The PCT process basically allows you to put a fairly modest (~ $2000) ante into the poker game to buy time to see more cards before your big bet. Twelve months after filing your home country patent you can now elect to not file foreign patents but instead to file a PCT application to the World Intellectual Property Organization (WIPO). After filing a PCT application (which never becomes a patent - it is only a placeholder) the inventor now can delay the foreign filing decisions an additional 18 months.
Thus foreign patent filings can occur 30 months after the original home country filing. But all of the foreign filings will have the priority date of the original filing. Again the inventor is protected as to prior art dates, and the protection is all the way back to the filing date in the home country.
That's enough for today. In part II we will talk about why the foreign filing decision is a tough one for small companies.
The answer is not simple. But let me try to make it somewhat simple.
When you file a U.S. patent, a clock starts ticking. In 12 months you have to do something in order to file foreign. You should in fact make your decision by about month 10 so you have time to do it right.
Let's first talk about why you have 12 months. In 1883 an intellectual property treaty called the Paris Convention was ratified by many of the world's industrialized nations. The Paris Convention allows an inventor in any member country to file a patent in their home country and then be able to file foreign patents in other member countries 12 months later. The foreign filings will be assigned a priority date corresponding to the date of their home filing. This means that any information that becomes public after that priority date can not be used against those foreign filings. Or in patent parlance that public information cannot be part of the prior art for that patent.
The Paris Convention was a big step forward for inventors. Most inventors are reluctant to go to the big expense of filing both home country and foreign patents early in the patenting process. They don't yet even know if that have a valid patentable idea. Furthermore they don't know if there is a market for their idea. It is like playing poker and having to make all your bets before seeing all of your cards. And filing foreign patents is an expensive proposition. More on that later. The Paris Convention gave inventors a chance to see a few more cards before placing their big bet.
But only a few more cards. As the time needed to get a validity opinion from your friendly national patent office grew year by year, and the time required to commericalize ideas increased the 12 month reprieve was not that big of a benefit in most cases.
Enter the Patent Cooperation Treaty (the PCT). In 1977 the PCT was signed by many countries. The PCT process basically allows you to put a fairly modest (~ $2000) ante into the poker game to buy time to see more cards before your big bet. Twelve months after filing your home country patent you can now elect to not file foreign patents but instead to file a PCT application to the World Intellectual Property Organization (WIPO). After filing a PCT application (which never becomes a patent - it is only a placeholder) the inventor now can delay the foreign filing decisions an additional 18 months.
Thus foreign patent filings can occur 30 months after the original home country filing. But all of the foreign filings will have the priority date of the original filing. Again the inventor is protected as to prior art dates, and the protection is all the way back to the filing date in the home country.
That's enough for today. In part II we will talk about why the foreign filing decision is a tough one for small companies.
Thursday, February 28, 2008
I'm Back.....
Well well. After many many months of no posts I am back. And I am back to post actively. Where have I been? For the last two years I was roped (without too much complaint) into doing a great deal of management consulting for E. I. Du Pont. With their safety business - Du Pont Safety Resources. It was 100% travel and 100% in California. A long way from Texas. I spent an average of two weeks each month in California. I had to cut back on the patent business to pull it off.
It was challenging, it was fun, and it was profitable. But that much travel and being away from the family finally did me in. I have one more trip to California in March and it is over.
I am intend to get back into active posting. And to grow my patent business back to where it was before. I did not lose any clients - but I gained very few during the heavy travel schedule.
It was challenging, it was fun, and it was profitable. But that much travel and being away from the family finally did me in. I have one more trip to California in March and it is over.
I am intend to get back into active posting. And to grow my patent business back to where it was before. I did not lose any clients - but I gained very few during the heavy travel schedule.
Saturday, January 13, 2007
The Parable of the Pencil
I wish I could begin by giving proper credit to whoever came up with the Parable of the Pencil. I have heard about three versions of it but do not know who originally created it. Like most parables though, it contains great truths, whether it actually happened or not. My version is as follows:
Before the invention of the pencil, all writing was done with quill pens dipped in ink. Writing was messy, with occasional ink blobs on the paper. A writer had to carry around not only the pens, but a supply of liquid ink. Writing errors were permanent, and had to be struck out, or the entire page repeated. These were problems, and problems call out for solutions.
Inventor A saw the problems and retired to his workshop to find a solution. He found that if he created a wooden rod with a hollow core and filled that core with a packed graphite that he had a writing instrument after he sharpened one end of the rod. This writing instrument required no liquid ink and never risked spilling blobs of ink on the paper. Moreover this writing device could easily transported in a shirt pocket. It was revolutionary.
Inventor A wrote a patent and submitted it to the patent office. The patent included a written description that described the existing problems. It then described the development of his new invention, which he called a pencil. The patent application also included several drawings that illustrated the structure of the pencil and how it could be used. It was written clearly enough that a person of ordinary skill in craftsmanship could make a pencil.
Inventor A then finished the patent with one claim, to clearly define the boundaries of his invention. The claim read as follows:
A writing instrument, comprising:
a cylindrical rod of wood having a first and second end, the rod having a hollow core; and
a material for making a permanent mark on paper filling said core in said rod at least at said first end.
The patent application was picked up by an appropriate examiner at the patent office. Once he understood the invention he asked himself the critical question - has this been done before? So he searched all of the literature, including patents, that was published before inventor A's application. Everything published before inventor A's filing date is known as "the prior art".
The examiner concluded the pencil was novel and not obvious. He allowed the patent and it issued.
Inventor A borrowed money, built a pencil manufacturing plant and the pencil was a sensation. He started building up his wealth.
Meanwhile inventor B, in her workshop, examined the pencil and still saw a problem. If a writing error was made, it still had to be struck out or the page had to be redone.
Inventor B experimented in her workshop and discovered a rubber like material that could be used to erase the graphite material, which was not bonded strongly to the paper. She wisely also realized that if she attached some of this rubber like material to an opposite end of the pencil the user could still carry just one device in their pocket that could both write and erase.
Inventor B filed a new patent application in the patent office. Again it had a written description, including a description of the problem to be solved. It also described the invention of the eraser and illustrated it with drawings. Inventor B also submitted one claim. It was:
A writing instrument, comprising:
a cylindrical rod of wood having a first and second end, the rod having a hollow core;
a material for making a permanent mark on paper filling said core in said rod at least at said first end; and
an eraser mounted on said second end of said rod.
The same examiner picked up this application and examined it. He saw that the claim was identical to Inventor A's patent claim in the preamble and the first two elements, but added a third element describing the eraser. Would the examiner allow this patent? He had to ask the same question. Has this been done or described before? After examining the prior art (which now included Inventor A's patent), he concluded this was novel and not obvious.
So the examiner allowed the patent and it issued.
So what rights do inventor A and inventor B have?
We now state a very basic and fundamental fact about patents. A patent grants only one right - the right to exclude, that does not include the right to practice.
Both patents are valid. Thus inventor A can exclude anyone (including inventor B) from making or selling a basic pencil. Inventor B can exclude anyone (including inventor A) from making or selling a pencil with an eraser.
This little parable teaches several important things to understand about patents.
A patent does not necessarily give you the right to manufacture or sell your invention. It is possible, in fact common, to get valid patents by adding just one element to a patent claim. Inventor A’s patent is often called a parent patent – inventor B’s is a child. A parent patent can have many children. The parent tends to dominate.
If inventor B tried to make her invention she would infringe another patent. Why did the patent office not warn her of this? Because the patent office is not concerned with infringement. The patent office is only concerned with validity of a patent. inventor B’s patent is valid. Infringement is a concern of courts, when an infringement charge is made.
Was inventor B foolish to patent? Not at all. If her invention is valuable she can do a number of things. For instance, inventor B could meet with inventor A, show him her pencil with eraser and point out to him that he could sell 3 times more pencils if they had erasers on them. So a negotiation could take place in which inventor B gives inventor A an exclusive license for pencils with erasers in return for getting 5 cents for each one sold. Then inventor A would revamp his factory, make really valuable pencils and expand his business greatly. inventor B would then retire to Hilton Head and play golf, free of any worries of capital expenditures, inventories, and grouchy employees.
Another teaching of this parable is how claims are written. Note the claims exhibited above. All claims have essentially the same structure as follows:
A preamble: A writing instrument
A transition phrase: comprising
Followed by a number of elements:
a cylindrical rod of wood having a first and second end, the rod having a hollow core;
a material for making a permanent mark on paper filling the core in said rod at least at said first end; and
an eraser mounted on said second end of said rod.
The transition phrase “comprising” has a very specific meaning in patent law. It means “including at least”. So a patent claim such as inventor A’s with only two elements is a broad and strong claim. It claims a writing instrument including at least only two elements. But it also covers all pencils with more elements because it claims at least the first two elements. A later pencil can have many other things added to it but it still falls under the description of inventor A's claim. That is why it captured inventor B’s pencil with an eraser.
One simplistic way of viewing claims is that claims with few elements are strong with respect to catching potential infringers. As more elements are added the claim is weakened. But as more elements are added the claim is more likely to be valid – because it gets around more prior art. inventor B’s claim is valid because it got around inventor A’s patent by adding an element. In a well-developed field you will see claims with many elements – often as many as 6 or 8. The next time you pick up a patent see if you can identify the preamble, the transition phrase, and the elements.
A disclaimer on the parable of the pencil. While I like the parable of the pencil because it is a nice illustration of many aspects of patents – the pencil actually preceded the U.S. Patent Office. Pencil like devices using lead were known in ancient Rome. Graphite for marking came into use in the late 1500’s and mass produced pencils were made in Germany in the 1600’s.
Before the invention of the pencil, all writing was done with quill pens dipped in ink. Writing was messy, with occasional ink blobs on the paper. A writer had to carry around not only the pens, but a supply of liquid ink. Writing errors were permanent, and had to be struck out, or the entire page repeated. These were problems, and problems call out for solutions.
Inventor A saw the problems and retired to his workshop to find a solution. He found that if he created a wooden rod with a hollow core and filled that core with a packed graphite that he had a writing instrument after he sharpened one end of the rod. This writing instrument required no liquid ink and never risked spilling blobs of ink on the paper. Moreover this writing device could easily transported in a shirt pocket. It was revolutionary.
Inventor A wrote a patent and submitted it to the patent office. The patent included a written description that described the existing problems. It then described the development of his new invention, which he called a pencil. The patent application also included several drawings that illustrated the structure of the pencil and how it could be used. It was written clearly enough that a person of ordinary skill in craftsmanship could make a pencil.
Inventor A then finished the patent with one claim, to clearly define the boundaries of his invention. The claim read as follows:
A writing instrument, comprising:
a cylindrical rod of wood having a first and second end, the rod having a hollow core; and
a material for making a permanent mark on paper filling said core in said rod at least at said first end.
The patent application was picked up by an appropriate examiner at the patent office. Once he understood the invention he asked himself the critical question - has this been done before? So he searched all of the literature, including patents, that was published before inventor A's application. Everything published before inventor A's filing date is known as "the prior art".
The examiner concluded the pencil was novel and not obvious. He allowed the patent and it issued.
Inventor A borrowed money, built a pencil manufacturing plant and the pencil was a sensation. He started building up his wealth.
Meanwhile inventor B, in her workshop, examined the pencil and still saw a problem. If a writing error was made, it still had to be struck out or the page had to be redone.
Inventor B experimented in her workshop and discovered a rubber like material that could be used to erase the graphite material, which was not bonded strongly to the paper. She wisely also realized that if she attached some of this rubber like material to an opposite end of the pencil the user could still carry just one device in their pocket that could both write and erase.
Inventor B filed a new patent application in the patent office. Again it had a written description, including a description of the problem to be solved. It also described the invention of the eraser and illustrated it with drawings. Inventor B also submitted one claim. It was:
A writing instrument, comprising:
a cylindrical rod of wood having a first and second end, the rod having a hollow core;
a material for making a permanent mark on paper filling said core in said rod at least at said first end; and
an eraser mounted on said second end of said rod.
The same examiner picked up this application and examined it. He saw that the claim was identical to Inventor A's patent claim in the preamble and the first two elements, but added a third element describing the eraser. Would the examiner allow this patent? He had to ask the same question. Has this been done or described before? After examining the prior art (which now included Inventor A's patent), he concluded this was novel and not obvious.
So the examiner allowed the patent and it issued.
So what rights do inventor A and inventor B have?
We now state a very basic and fundamental fact about patents. A patent grants only one right - the right to exclude, that does not include the right to practice.
Both patents are valid. Thus inventor A can exclude anyone (including inventor B) from making or selling a basic pencil. Inventor B can exclude anyone (including inventor A) from making or selling a pencil with an eraser.
This little parable teaches several important things to understand about patents.
A patent does not necessarily give you the right to manufacture or sell your invention. It is possible, in fact common, to get valid patents by adding just one element to a patent claim. Inventor A’s patent is often called a parent patent – inventor B’s is a child. A parent patent can have many children. The parent tends to dominate.
If inventor B tried to make her invention she would infringe another patent. Why did the patent office not warn her of this? Because the patent office is not concerned with infringement. The patent office is only concerned with validity of a patent. inventor B’s patent is valid. Infringement is a concern of courts, when an infringement charge is made.
Was inventor B foolish to patent? Not at all. If her invention is valuable she can do a number of things. For instance, inventor B could meet with inventor A, show him her pencil with eraser and point out to him that he could sell 3 times more pencils if they had erasers on them. So a negotiation could take place in which inventor B gives inventor A an exclusive license for pencils with erasers in return for getting 5 cents for each one sold. Then inventor A would revamp his factory, make really valuable pencils and expand his business greatly. inventor B would then retire to Hilton Head and play golf, free of any worries of capital expenditures, inventories, and grouchy employees.
Another teaching of this parable is how claims are written. Note the claims exhibited above. All claims have essentially the same structure as follows:
A preamble: A writing instrument
A transition phrase: comprising
Followed by a number of elements:
a cylindrical rod of wood having a first and second end, the rod having a hollow core;
a material for making a permanent mark on paper filling the core in said rod at least at said first end; and
an eraser mounted on said second end of said rod.
The transition phrase “comprising” has a very specific meaning in patent law. It means “including at least”. So a patent claim such as inventor A’s with only two elements is a broad and strong claim. It claims a writing instrument including at least only two elements. But it also covers all pencils with more elements because it claims at least the first two elements. A later pencil can have many other things added to it but it still falls under the description of inventor A's claim. That is why it captured inventor B’s pencil with an eraser.
One simplistic way of viewing claims is that claims with few elements are strong with respect to catching potential infringers. As more elements are added the claim is weakened. But as more elements are added the claim is more likely to be valid – because it gets around more prior art. inventor B’s claim is valid because it got around inventor A’s patent by adding an element. In a well-developed field you will see claims with many elements – often as many as 6 or 8. The next time you pick up a patent see if you can identify the preamble, the transition phrase, and the elements.
A disclaimer on the parable of the pencil. While I like the parable of the pencil because it is a nice illustration of many aspects of patents – the pencil actually preceded the U.S. Patent Office. Pencil like devices using lead were known in ancient Rome. Graphite for marking came into use in the late 1500’s and mass produced pencils were made in Germany in the 1600’s.
Were you aware that....
> You can be awarded a patent, and when you begin to practice it (by making or selling your invention) you can still be sued for patent infringement?
> Another inventor can patent an improvement on your invention and you may not have the right to use that improvement?
> The patent office will not come to your rescue if your patent is infringed... in fact the patent office pays no attention to infringement as an issue.
> You do not have to demonstrate that your invention works in order to get a patent?
> To infringe a patent you need only infringe one of the claims?
> Once you get a patent, it is your patent that has legal protection, not your invention?
> Your invention may not be properly covered by your claims?
> You do not need a patent in order to begin making and selling your invention - that is not the purpose of a patent.
> The vast majority of patents are not new breakthroughs but are instead improvements to existing technology?
> That the patent legal system essentially encourages others to design around your patent?
> Also, that the patent maintenance fee system essentially encourages inventors to abandon their patents before the patent term expires?
> That one patent cannot infringe another patent?
> That among practitioners of patent law, there are those who only practice in court (litigation), some who only practice before the patent office (prosecution), and some who only practice it in a business sense (contractual, licensing). And even those who can legally do all three, tend to focus on only one of the three.
These questions reflect just some of the questions I have encountered in my practice. As a reminder, I focus my practice on helping small businesses and individual inventors, who are approaching patents for the first time, so their grappling with the twisted logic of patent law is understandable. But I also had a long career in R&D in a large corporation, and misunderstandings of patent issues was common there also.
So let's begin our journey with the Parable of the Pencil..........
> Another inventor can patent an improvement on your invention and you may not have the right to use that improvement?
> The patent office will not come to your rescue if your patent is infringed... in fact the patent office pays no attention to infringement as an issue.
> You do not have to demonstrate that your invention works in order to get a patent?
> To infringe a patent you need only infringe one of the claims?
> Once you get a patent, it is your patent that has legal protection, not your invention?
> Your invention may not be properly covered by your claims?
> You do not need a patent in order to begin making and selling your invention - that is not the purpose of a patent.
> The vast majority of patents are not new breakthroughs but are instead improvements to existing technology?
> That the patent legal system essentially encourages others to design around your patent?
> Also, that the patent maintenance fee system essentially encourages inventors to abandon their patents before the patent term expires?
> That one patent cannot infringe another patent?
> That among practitioners of patent law, there are those who only practice in court (litigation), some who only practice before the patent office (prosecution), and some who only practice it in a business sense (contractual, licensing). And even those who can legally do all three, tend to focus on only one of the three.
These questions reflect just some of the questions I have encountered in my practice. As a reminder, I focus my practice on helping small businesses and individual inventors, who are approaching patents for the first time, so their grappling with the twisted logic of patent law is understandable. But I also had a long career in R&D in a large corporation, and misunderstandings of patent issues was common there also.
So let's begin our journey with the Parable of the Pencil..........
Friday, January 12, 2007
What do you know?
Do you know everything there is to know about patents?
If you do you are a rare bird. Patent law can be understood of course, but patent law is filled with subtleties, arcane language, obtuse rules and laws, complex interactions, and a number of attributes that are simply non-intuitive. And, as in any field, there are many myths and misunderstandings.
One of the things I want to do with this blog is to expose some of the misunderstandings for small businesspeople and raise their comfort level regarding patents.
As a businessperson you do not have to understand all of the details, but there are a number of concepts that you should have clear in your mind.
By the way, it is not only non-legal laymen who get confused by patent law. There are many general business attorneys who have difficulty with patent subtleties. And I have heard more than one federal judge trying a patent case bemoaning the difficulty of understanding patent language.
So one of the things we will return to repeatedly in these posts is to highlight misunderstandings I frequently encounter in my client base and try to make good sense out of it for you.
So if you have a nagging patent question, feel free to ask, either by posting or by sending an e-mail to:
info@maervinassoc.com
The next post will begin the process by starting to ask some questions.
If you do you are a rare bird. Patent law can be understood of course, but patent law is filled with subtleties, arcane language, obtuse rules and laws, complex interactions, and a number of attributes that are simply non-intuitive. And, as in any field, there are many myths and misunderstandings.
One of the things I want to do with this blog is to expose some of the misunderstandings for small businesspeople and raise their comfort level regarding patents.
As a businessperson you do not have to understand all of the details, but there are a number of concepts that you should have clear in your mind.
By the way, it is not only non-legal laymen who get confused by patent law. There are many general business attorneys who have difficulty with patent subtleties. And I have heard more than one federal judge trying a patent case bemoaning the difficulty of understanding patent language.
So one of the things we will return to repeatedly in these posts is to highlight misunderstandings I frequently encounter in my client base and try to make good sense out of it for you.
So if you have a nagging patent question, feel free to ask, either by posting or by sending an e-mail to:
info@maervinassoc.com
The next post will begin the process by starting to ask some questions.
Tuesday, January 2, 2007
Types of patents - and design patents
TYPES
How many types of patents are there? The normal classification is into three types of patents. The most common type is a utility patent. This is the one you are probably most familiar with. It is basically a patent on the functionality of something - how it works. It can cover devices (apparatus), methods of doing things, compositions of matter, etc. Most patents are utility patents. Utility patents have a duration of twenty years from the date of filing, but are not enforceable until the day of issuance.
What is a plant patent? A plant patent is for protecting new varieties of asexually reproducing plants. That is about all I am going to say about plant patents for now. I don’t do plant patents and therefore am not anywhere near an expert on them.
It is worthwhile though to spend just a little time on design patents. Although not as common, you should understand what they can do for you. Design patents are often mis-understood because when people first hear the term design they think this is a patent for the functional design of something. How it works. But design patents protect the ornamental design of something – what it looks like – not what it does.
To understand design patents let’s look at one of my favorite ones. In 1982 the patent office granted a design patent to George Lucas – the creator of the Star Wars phenomena. The patent was for Yoda.This is a drawing from that patent.
A design patent is very simple. It always has only one claim and that claim is almost identical in every patent. This one simply claimed:
The ornamental design for a toy figure, substantially as shown.
Followed by eight different drawings of Yoda. All from different angles. That’s it. But potentially powerful in this example. With this patent (and many others on the other characters in Star Wars Lucas could prevent cheap imitators from outside the U.S. from flooding the toy market with cheap Yoda’s (or Luke Skywalker’s) stamped out by injection molding machines. It could allow him to corner the Star Wars toy market. At least for a while. A design patent has a 14 year life. Note that no functionality is claimed. It is not what Yoda can do – just what he looks like – or in patent parlance – his ornamental design.
I actually do not know if Lucas ever had to enforce this patent. But you can see the potential power. Although many businesses seldom consider design patents, you should consciously think about whether anything in your business needs its ornamental look protected. Many consumer products have design patents to protect their look. Fonts are sometimes protected by design patents. Give it some thought.
How many types of patents are there? The normal classification is into three types of patents. The most common type is a utility patent. This is the one you are probably most familiar with. It is basically a patent on the functionality of something - how it works. It can cover devices (apparatus), methods of doing things, compositions of matter, etc. Most patents are utility patents. Utility patents have a duration of twenty years from the date of filing, but are not enforceable until the day of issuance.
What is a plant patent? A plant patent is for protecting new varieties of asexually reproducing plants. That is about all I am going to say about plant patents for now. I don’t do plant patents and therefore am not anywhere near an expert on them.
It is worthwhile though to spend just a little time on design patents. Although not as common, you should understand what they can do for you. Design patents are often mis-understood because when people first hear the term design they think this is a patent for the functional design of something. How it works. But design patents protect the ornamental design of something – what it looks like – not what it does.
To understand design patents let’s look at one of my favorite ones. In 1982 the patent office granted a design patent to George Lucas – the creator of the Star Wars phenomena. The patent was for Yoda.This is a drawing from that patent.
A design patent is very simple. It always has only one claim and that claim is almost identical in every patent. This one simply claimed:
The ornamental design for a toy figure, substantially as shown.
Followed by eight different drawings of Yoda. All from different angles. That’s it. But potentially powerful in this example. With this patent (and many others on the other characters in Star Wars Lucas could prevent cheap imitators from outside the U.S. from flooding the toy market with cheap Yoda’s (or Luke Skywalker’s) stamped out by injection molding machines. It could allow him to corner the Star Wars toy market. At least for a while. A design patent has a 14 year life. Note that no functionality is claimed. It is not what Yoda can do – just what he looks like – or in patent parlance – his ornamental design.
I actually do not know if Lucas ever had to enforce this patent. But you can see the potential power. Although many businesses seldom consider design patents, you should consciously think about whether anything in your business needs its ornamental look protected. Many consumer products have design patents to protect their look. Fonts are sometimes protected by design patents. Give it some thought.
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