“But I have a patent! How could they do this?”
This is the battle cry of inventors and corporate executives alike, when they see a copycat product and find out there is nothing they can do to stop it. It’s a perfectly understandable reaction, as it can be enraging to know someone “stole” your invention or product idea, when you thought you were protected. But it shows limited understanding of how patent protection works.
Patent protection can be complicated and few patent attorneys explain what is necessary, so that their clients fully understand the boundaries of protection under their patents. The first thing to understand is that there are different types of patents, and they offer drastically different types and levels of protection. Which type of patent you get will determine the ultimate scope of legal protection.
Utility Patents vs. Design Patents
The two main types of patents are design patents and utility patents. The third type, a plant patent, is rarely obtained. Utility and design patents each protect different aspects of an invention.
This means at times it can be helpful to get both a utility and design patent for the same underlying invention. This is why consulting with a patent attorney can be very important so that you receive the greatest patent protection and know what type of patent to obtain.
Both types of patents require applications to the United States Patent and Trademark Office (Patent Office) and maintenance fees must be paid for both.
A design patent is a type of patent that protects only the surface ornamental appearance of a functional item, i.e., the way something looks. Design patents thus protect only the non-functional aspects of an invention, therefore the subject matter of the invention does not matter as much.
Design patents are useful in preventing someone from directly ‘knocking off’ a product, by unimaginatively copying it’s appearance in full detail. However, in protecting a functional concept itself, they are not valuable. The above noted battle cry, “But I have a patent!” is very often heard from people who own a design patent and don’t understand the limits of its protection.
Design patents applications are typically much cheaper to obtain than utility patents. Moreover, the Patent Office more easily approves design patent applications, as design applications are much less complicated and can be more easily distinguished from other designs. Design patent applications also typically only take between 6-12 months to obtain, while utility patents can take much longer.
Design patents last for 15 years so long as maintenance fees are regularly paid.
A utility patent is a type of patent that protects the way an invention functions. A utility patent protects the composition, structure, and function of an invention, typically protecting compositions of matter, article of manufacture, machines, or processes, not abstract ideas.
Thus, the underlying subject matter of the invention is at the heart of the utility patent. Utility patents cannot protect merely abstract ideas. Moreover, someone with ordinary skill in the underlying field must determine that the invention is new and non obvious as compared to other inventions within the field.
Utility patent applications are typically more complicated and more difficult to obtain approval from the Patent Office. Utility patent applications and the resulting utility patent hinge on the underlying claims submitted within the patent application. They can take years depending on the questions posed by the Patent Examiner. This means they typically cost much more money to obtain than a design patent.
Once obtained, a utility patent will last for 20 years so long as all maintenance fees are paid.
It is important to understand that just because you have a utility or design patent, that doesn’t mean your invention is protected. Patent claims can be “broad”—protecting a whole concept that would be difficult for someone else to duplicate without infringing your patent, or “narrow”—protecting only a very specific configuration of your invention.
Thus, the claims in your utility patent can make the difference between having a patent for any three-legged chair vs. a very specific configuration of a three-legged chair.
Clearly then, the patent claims listed in your patent application can make the biggest difference between a patent that is valuable and a patent that is worth very little.
It takes a lot of skill and experience for a patent attorney to draft a claim that is not only broad (protecting the concept), but also will be approved by the Patent Office. The narrowness or broadness of how your patent claims can be drafted will hinge on already existing patents that are closest to what you have, known as the “prior art.”
Claims can be only as broad as the prior art permits. It makes sense; the Patent Office will not allow you to patent things that existed before your invention. This is why it’s also important to submit your provisional patent application as soon as feasible so you can reserve the earliest possible priority date.
This means your patent attorney must have a good understanding of how to locate and interpret patents most similar to yours so that they can draft the most effective broad patent claims. Remember to obtain the earliest possible filing date for your patent to protect against prior art. This is because your filing date determines your priority date for your patent.
It’s also important for your patent attorney to understand the practical aspects of your business. With this understanding, when they write the patent claims, they are taking into consideration what other people in the same industry might try to do in attempting to get around your patent.