Many companies require patent protection for their developed intellectual property, whether developing IP is the core function of the company's business or the IP is an outgrowth of pursuing other business goals.  A company should consider the cost, time and energy of filing a patent application, as well as the potential benefits of having a patent application pending before deciding whether to file for a patent.  Public disclosure, sale, or offer for sale of an invention before filing a patent application can have adverse effects (and can potentially destroy in some jurisdictions and in some situations) patent rights.  Therefore, considering applying for patent protection before such events, e.g., product launch, etc., may be beneficial for companies in some circumstances.

Design, Utility and Plant Patents  A design patent protects the ornamental appearance of an article of manufacture.  In general terms, a utility patent protects the way an article is used and works (e.g., the structure and function of an article), while a design patent protects the way an article looks.  Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.  Manufactured goods may possess both functional and ornamental characteristics.  A plant patent is granted by the Government to an inventor who has invented or discovered an asexually reproduced a distinct and new variety of plant.

Provisional vs. Non-provisional Utility and Plant U.S. Patents Application  A provisional patent application is generally less costly to file.  However, a non-provisional patent must be filed within twelve months of the filing of a provisional patent application to obtain the benefit of the provisional patent application.  Filing a provisional patent application allows an inventor to use the phrase "patent pending" in providing a description of the invention.  A non-provisional patent provides its holder the right for a limited period of time to exclude others from making, using, selling, or offering for sale the patented invention.  The US Patent Office reviews and determines whether to issue patents, but enforcement of patent rights is left to the holder of the patent.

International Patents  A U.S. patent does not provide rights to exclude others from making, using, or selling an invention outside of U.S. legal jurisdiction.  An inventor must consider whether to file for international patents on a jurisdiction by jurisdiction basis.  The European Patent Office operates a patent system that provides intellectual property rights in all of the European Union countries.  A decision must be made to file for foreign patent protection for an invention within one year of the original U.S. filing date for utility patent protection and within six months from the original filing date for design patent protection.  For utility patent protection, a Patent Cooperation Treaty application may be filed to delay the decision of which jurisdictions to file in for an additional time period for those countries which are signatories to the treaty.

Prior Art Searching and Examination of Patent Applications  Prior to submitting a patent application, a prior art search may be conducted to attempt to uncover whether preexisting prior art exists that would prevent obtaining patent protection for the invention.  Once a non-provisional patent application is filed, during the examination of the patent application the examiner that is assigned to review the application will conduct his or her own prior art search and review the claims of the application in light of the search results.  During the examination of the patent application, the examiner will determine whether the application complies with the requirements for patentability.  If the examiner determines that the claims do not meet the requirements for patentability, the patent applicant's representative may argue and/or amend the claims to attempt to overcome the examiner's rejections and obtain allowance of the application.

Maintenance Fees  After a utility patent is successfully obtained, it is subject to maintenance fees.  In the U.S., maintenance fees must be paid at 3.5, 7.5, and 11.5 years after the date of issue of the utility patent in order to maintain the patent in force.  Currently, the 3.5 year maintenance fee for a large entity is $1,600; for a small entity $800; for a micro entity $400.  The 7.5 year maintenance fee for a large entity is $3,600; for a small entity $1,800; for a micro entity $900.  The 11.5 year maintenance fee for a large entity is $7,400; for a small entity $3,700; for a micro entity $1,800.  Design patents are not subject to maintenance fees.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.