FAQ

Provisional Patents

What is a Provisional Patent

A provisional patent is a lower-cost and stripped-down first patent filing to secure a filing date for United States patents.

What are the benefits of a provisional patent?

A provisional patent is a low-cost mechanism to secure a filing date for a later non-provisional patent.  Since the United States is a first-to-file jurisdiction, it is critical to secure the earliest filing date possible for your patent.  Under U.S. patent law, a subsequently-filed non-provisional patent can claim the filing date of the provisional patent as long as the provisional patent is sufficiently detailed to support the claims of in the non-provisional patent disclosure. Provisional patents are not examined and serve only to preserve the filing date.

How long does a provisional patent last?

A provisional patent expires one year from its filing date. After filing, the USPTO will send official correspondence with the filing date.

What is a reasonable budget to procure a provisional patent?

The USPTO basic provisional patent filing fee of $280 is due at the time of filing.  Based on the 2019 survey of patent attorneys published by the American Intellectual Property Law Association, mean attorney fees for filing a provisional patent in the DC metropolitan area is $3500.  Accordingly, You should budget at least $3800 for filing a provisional patent application.

Is a provisional patent right for my idea?

A provisional patent is attractive because:

  • It is less expensive to file than a non-provisional application;
  • provisional patent applications are not examined so formal requirements are relaxed; and
  • your provisional filing date can establish your priority to the invention, e.g. after filing your invention is “patent pending.”

What is a Provisional Patent

A provisional patent is a lower-cost and stripped-down first patent filing to secure a filing date for United States patents.

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Utility Patents

What is a utility patent?

A utility patent allows its owner to stop competitors from making, using ,or selling the subject matter disclosed in the patent.

Why Should I want a Utility Patent?

A utility patent gives its owner a monopoly over the subject matter of the patent for 20 years.  Patents help entrepreneurs make a profitable exit. Patent owners can also give competitors permission to use their invention via a paid license.

How long does a patent last?

Design patents filed after May 13, 2015 last 15 years from the issue date. Utility patent last 20 years from the filing date.

What is a reasonable budget to procure a provisional patent?

The USPTO basic provisional patent filing fee of $280 is due at the time of filing.  Based on the 2019 survey of patent attorneys published by the American Intellectual Property Law Association, mean attorney fees for filing a provisional patent in the DC metropolitan area is $3500.  Accordingly, You should budget at least $3800 for filing a provisional patent application.

Is a provisional patent right for my idea?

A provisional patent is attractive because:

  • It is less expensive to file than a non-provisional application;
  • provisional patent applications are not examined so formal requirements are relaxed; and
  • your provisional filing date can establish your priority to the invention, e.g. after filing your invention is “patent pending.”

What is a Provisional Patent

A provisional patent is a lower-cost and stripped-down first patent filing to secure a filing date for United States patents.

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Design Patents

What is a design patent?

Pursuant to federal law, the inventor of “any new, original and ornamental design for an article of manufacture” is entitled to a design patent covering the invention.  
Like utility patents, the requirements of novelty and non-obviousness apply. Unlike utility patents, design patents protect an article's ornamental design and not its function.

What is unique about a design patent?

A single claim. Patent claims define the scope of an invention. Utility patents have multiple claims. Design patents, by contrast, have only one claim. Note: different embodiments of a single design concept may be filed in one application. Thus, embodiments that simply scale a design up or down can be filed in a single design patent application.

Drawings or photographs. The drawings are the critical component of a design patent since they comprise the complete visual description of the design.  Drawings must be in black ink on white paper absent special circumstances (see 37 CFR §1.84) .

How is a design patent infringed?

A design patent is infringed if an ordinary observer would think that the accused design is substantially the same as the patented design when the two designs are compared in the context of the prior art. Egyptian Goddess, 543 F. 3d 665 (Fed. Cir. 2008). In 2008, a jury found that Samsung had infringed Apple’s design patent covering the iPhone and awarded Apple a staggering $296 million in damages. Thus, a design patent is a powerful tool and can indeed be a cornerstone of a well-conceived intellectual property portfolio.

What is the cost to file a design patent?

According to the USPTO’s most up-to-date fee schedule, the total design patent filing fee is $760 for large entities, $380 for small entities and $190 for micro-entities.
Micro-entity filers get a 75% reduction in fees!  To qualify for the micro-entity certification, the applicant must meet the following requirements:

  • Qualify as a USPTO-defined small entity.
  • Not be named on more than four previously filed applications.*
  • Not have a gross income more than three times the median household income in the previous year from when the fee(s) is paid. For 2011, the most recent year that data is available, the median income was $50,054.
  • Not be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor.  

How long does a design patent last?

The term for a design patent is 15 years from the date that the design patent is granted. 35 U.S.C. §1 73. The term was changed from 14 years to 15 years in 2015. Note: after the patent term expires, it may be possible to obtain a trademark covering the trade dress of the article of manufacture. For example, Coca cola was granted Design Patent No. 48,160 covering the coke bottle shape in 1915. Coca cola later registered a trademark over the trade dress for the “coke bottle” in 1977. Although the legal requirements for registering a trademark covering a product’s trade dress are different, it is a mechanism for extending the life and scope of protection well beyond 15 years..

Is a design patent right for my idea?

You should strongly consider applying for whatever non-provisional patent protection you can get, whether design, utility, or both! Design patents are perfect for inventions where the innovation is more in the design and less in the way the invention works. Not every patent application will be granted. Accordingly, before filing any application, we will help you determine: i) is your invention is eligible for a patent at all; and ii) does your invention solve a new problem or solve a known problem in a new way.

How is a design different from a utility Patent?

A design patent protects the ornamental features of an invention rather than inventive aspects of its function.

Are Design Patent Applications Published

No. Non-provisional applications are published after18 months EXCEPT for design patents.

Can you get a design patent for a logo?

No - protect your brand by registering your logo on the Principal trademark Register instead.

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Trademarks

What is the Trademark Symbol

® is the symbol for register trademarks.
™ is the symbol for unregistered trademarks.

How long does a Trademark last?

A trademark registration lasts 10 years, provided you file an affidavit of use during year 5. A trademark registration can be renewed during year 10 and every tenth year after.

Can I trademark a domain?

Yes, provided the mark meets the legal requirements for trademark registration - i) the mark identifies your brand as the source of particular goods or services; and ii) your mark will not cause confusion with a competing mark.

Can I trademark a sound?

Yes! For example, Southwest Airlines owns a trademark registration in the DING! sound.

Is a provisional patent right for my idea?

The government charges $250 to e-file an application for trademark registration in the US.

What is a Provisional Patent

Yes - you can register an International trademark under the Madrid System.

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