This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.

The type of patent described thus far is known as a utility patent. The term of utility patents was changed after passage of the General Agreement on Tariffs and Trade (GATT) as follows:

  1. For utility patents filed on or after June 8, 1995: Term of twenty years from the date of filing. However, see further details below.
  2. Issued and enforceable patents which issued prior to June 8, 1995: The term of these patents is automatically modified to the longer of: (a) twenty years from the date of filing or (b) seventeen years from the date of issue.
  3. Issued and enforceable patents which issued prior to June 8, 1995: The term of these patents is the longer of: (a) twenty years from the date of filing; or (b) seventeen years from the date of issue.

When calculating the twenty (20) year rule, if the application relies on an earlier filed application, then the earlier application’s filing date is used. As indicated above, a twenty-year term from the date of filing (or priority date if earlier) is the current term of recently filed U.S. patents. The American Inventors Protection Act of 1999 introduced an opportunity to increase the term based on administrative and other delays on the part of the U.S. Patent Office. Any increase in the term is offset by delays by the applicant to engage in reasonable efforts to conclude prosecution. This new provision applies to all applications filed after May 29, 2000. Note that you cannot have a negative adjustment to the term (e.g., you cannot reduce the term to less than 20 years under the provision).

Examples of delays by the applicant which will reduce any term extension are:

• failure to file a response to a U.S. Patent Office Action within (3) months; • filing supplemental responses; and • using specific types of certificates of mailing.

The list of delays is quite lengthy, but the common thread running through the delays is that responses to U.S. Patent Office inquiries must be made timely and thoroughly.

A second type of patent is known as a design patent, which is available for anyone who invents any new, original, and ornamental design for an article of manufacture. In other words, design patents cover only the specific appearance of the article, rather than the concept of the article itself. Patents for designs are granted for a term of 14 years. Examples of articles for which design patents have been obtained are lamps, vases, and furniture.

A third type of application, known as a “provisional application” is intended to provide a method for an applicant to gain an early U.S. filing date relatively inexpensively. For example, currently, the Patent Office filing fees for a provisional application are approximately $65 to $260. The life of the provisional application is one year from the date of filing and is non-extendible. During this time period, the application is not examined. Also, the twenty (20) year term of any patent issuing from the application does not begin to run (unless a direct conversion to a utility patent is made). Accordingly, so long as a regular utility application is filed claiming priority to the provisional application, instead of filing a direct conversion application, then the twenty year term is not affected by the provisional application.

Like a regular utility application, the provisional application must list inventors, provide drawings (if necessary for an understanding of the invention), and comply with disclosure and best mode requirements, among others. No claims are required in the provisional application at any time, since that application is not examined.

If the applicant wishes to maintain the benefit of the provisional application, a regular application must be filed while the provisional application is pending (e.g., before the expiration of the one-year life). In addition to adding claims and complying with other matters, the regular application must also include at least one inventor who was listed as an inventor on the provisional application.

Although the pendency of the provisional application may not begin the twenty year term of a U.S. patent, the filing does commence the one-year Paris Convention priority period for filing foreign applications. Therefore, foreign filings must be filed by the first anniversary of the earliest provisional application. Because these are general rules, you should be sure and discuss the strategies, as well as the pros and cons, of filing a provisional application with your attorney before doing so.