November 26, 2024 • 23 mins
In this episode, Samar and Jamie delve into the different types of patent applications, and the key information to remember for each one. There are 3 main types of applications -- design, utility, and plant. For utility patents, you may file a provisional or a non-provisional application as well. PCT applications make it possible to apply for a patent in numerous countries. Learn more about the qualifications, deadlines, and costs for each one!
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Samar Shah (00:00):
Hello, and welcome to the patent pending made
simple podcast. I'm Samar Shah,and on the other line is Jamie
Brophy. Jamie, how are you?
Jamie Brophy (00:07):
Hi. Good, Summer. How are you?
Samar Shah (00:09):
I am doing well. Glad to be recording again. We
haven't quit thus far, so that'sa good sign. Absolutely. Very
good.
Well, today's episode is aboutdifferent types of patent
applications that somebody couldfile. I'm glad to be able to
talk about this because there issome confusion when people call
our office. They're not surewhether their invention is
(00:32):
patentable, And if it is, whatkind of patent should they file
for? So I think this will beinteresting to our listeners
here. Jamie, do you wanna startus off by maybe talking about
the types of patents that areout there that somebody could
file for?
Jamie Brophy (00:46):
Yeah. Definitely. The 3 main types are utility
patent applications, plantpatent applications, and design
patent applications. With theutility application, there's 2
different types. There's theprovisional application and the
non provisional application.
The provisional is just anapplication that is good for a
(01:07):
year, and it expires after thatyear, and it's basically just a
placeholder for your filingdates. And then within that year
on or before the anniversarydate of the year, you need to
convert that to a nonprovisionalapplication, And that's the
application that will getexamined by the patent office
and hopefully end up being apatent.
Samar Shah (01:31):
That's a great overview. Taking a step back
beyond that, I think of utilitypatents as protecting how
something works, the underlyingmechanism for how something
works or how the inventionworks. I think of the design
patent as the ornamental shapeor how something looks being
able to protect that. Is thathow you would categorize them
(01:52):
too, Jamie?
Jamie Brophy (01:53):
Yeah. Definitely. The official definition of a
utility application is any newand useful process, machine,
manufacture, or composition ofmatter, or any new and useful
improvement thereof. So that'swhat's covered in a utility
application. So the waysomething works, the way you
make something, things likethat.
(02:14):
And then for the designapplication, it basically just
covers the way something looks.So it's a lot more narrow
coverage in a design patentversus a utility.
Samar Shah (02:24):
Yep. That makes a lot of sense. You had mentioned
that the provisional applicationis only good for 1 year, and I
and I'm gonna ask you questionsfrom the perspective of somebody
who has questions about this,Jamie. Yep. So does the
provisional application turninto a patent grant?
Jamie Brophy (02:40):
No. The provisional is, like I said
before, just kind of aplaceholder for your filing
date. You want the provisionalapplication to be as complete as
possible, you want it to haveeverything in it that you think
you'll need in your nonprovisional, but it just sits at
the patent office for a year. Itdoesn't go anywhere. It's a
great option for quickly filingsomething that you need to get
(03:03):
protection for, and then itgives you that year to do
further inventing or findinvestors or find manufacturers
with the confidence that youhave.
You do have patent pendingstatus, but, no, a provisional
application will not be examinedby the patent office, and it
will not result in a patent.
Samar Shah (03:21):
Yep. I agree with that. A lot of attorneys will
kind of poo poo or downplay theprovisional application. To give
you some context, at my oldfirm, we routinely did not file
provisionals at all, mostlybecause it didn't make economic
sense for the law firm. The firmjust didn't make a ton of money
on those applications.
We would file them sometimes ifthere was an emergency or if
(03:43):
there was a on sale bar datecoming up or a disclosure date
coming up, but normally, wewouldn't file them. And and a
lot of people who actually callour office, they're like, hey. I
don't wanna file a provisionalbecause I heard they're
terrible. And, Jamie, what doyou think about that? Do you
recommend your clients totypically file a provisional, or
do you think it's a bad idea tofile them?
Jamie Brophy (04:03):
No. I think it's a good idea to file them,
especially for independentinventors, small companies. A
lot of times when people come tous, they haven't fully fleshed
out what the invention exactlyis. You know? They have some
ideas for how it's gonna work,but they haven't done a
prototype.
They haven't had engineeringdrawings done or anything like
(04:26):
that. They're nervous aboutdisclosing it to anybody that
would need to help them withthose things, which makes
perfect sense. So I think aprovisional is an important
step. It gives you someprotection while you continue to
work on your invention.
Samar Shah (04:43):
Yeah. I agree with that. I think provisionals are
great. The challenge withprovisionals is that there are
very few legal requirements fora provisional application. So
you could file theoretically,just one sentence about your
invention as a provisionalapplication or a back of a
napkin description of yourinvention and file it as a
(05:03):
provisional.
I've seen a lot of provisionalslike that, and I'm sure other
attorneys have seen them aswell. I think it'd be easy to
conclude from that that, hey,provisionals are terrible. They
don't give you enoughprotection. They don't meet the
enablement requirement and so onand so forth. What I like about
the way we practice is that wedo a pretty good job on the
provisional application.
(05:23):
They're pretty full featured.They usually always meet the
enablement requirements and alot of other requirements. And,
Jamie, could you talk about whatmakes for a good provisional
application or how you thinkabout what needs to go in that
provisional application?
Jamie Brophy (05:37):
Yeah. I mean, I try my best to write the
provisional applications in sortof the same manner I would write
a non provisional application.So whatever's in the provisional
application is entitled to thatfiling date of the provisional
application. If there'sadditional things or things that
are not disclosed in theprovisional that are in the
(05:58):
nonprovisional, that additionalmaterial won't be entitled to
the earlier filing date. That'ssort of the problem with doing a
what I like to call a quick anddirty provision provisional
where you just need to getsomething filed.
You submit just kind of what youhave without really writing out
a full application. If I havethe time, if the client's not in
a hurry, I like to write themthe same way I would write a
(06:21):
nonprovisional. Having all thedrawings in there to the best of
our ability, making sure theinvention is enabled, making
sure we've disclosed what wethink is the best mode of
practicing the invention. Iwould think about what I want in
the claims and make sure Idisclose those things in the
provisional application. So,yeah, I try to make it as full
(06:42):
of an application as I can, butsometimes it depends on what
information the client has andhow far they are in the
inventing process.
Samar Shah (06:52):
Yeah. That makes sense. You can only protect what
the client has invented, but Ithink it's a mistake. Sometimes
inventors think that, oh, well,I can just put anything in that
application and file it. And Ithink that's a pretty big
mistake and potentially verydangerous too from a patent
perspective.
We have rules in the US aboutstatutory bar dates, which
(07:12):
essentially refers to yourtimelines for when you can get a
patent. The first requirement isthat you have to file a patent
within 1 year of your publicdisclosure date, or the second
requirement is that it has to bewithin 1 year of your sale date.
So sometimes this is whathappens. Clients will disclose
their invention or they'll sella prototype to somebody as a way
(07:33):
to test their invention. Theyget close to the 1 year mark and
they're like, well, I need tofile something and might as well
file a provisional just becauseI don't have the time to put one
together or they wanna save somemoney and try to put it together
themselves or or something likethat.
If you don't meet some of thedisclose your invention in
(07:54):
sufficient detail to cover thatsale or that disclosure, then
let's say you you file your nonprovisional 1 year from that
provisional date, that nonprovisional application will
only get priority to theprovisional date to the extent
that it's coextensive with theprovisional. If it's not, then
your own prior disclosure, whichwould have happened 2 years ago
(08:15):
or 2 years from your nonprovisional date, would serve to
bar you from getting a patent.So if you don't do it right, I
think you could open up a trapdoor for yourself and have your
own disclosures invalidate yournonprovisional down the road.
Jamie Brophy (08:29):
Yeah. That's a great point. You know? And there
might be a situation whereyou've made a small change to
your invention, and you put thatin the nonprovisional, but it's
not in the provisional. So it'snot entitled to that earlier
filing date.
But it could be considered anobvious modification, and we
would run into similar issueswith that. So, yeah, definitely,
that's a great point.
Samar Shah (08:51):
Yeah. And this may be beyond the scope of our
initial discussion, but if youhave a disclosure or a sale
before you file a patent, youhave to become really careful
and vigilant about that firstdisclosure. And I would circle 1
year from that date on yourcalendar and make sure that you
file a high qualitynonprovisional from that
(09:12):
disclosure date. Right?Normally, inventors will file
the provisional first and thencircle 1 year from the
provisional filing date to filethe nonprovisional.
But if the disclosure happenedbefore you file the provisional,
then I would key everything offof the disclosure date and not
necessarily your provisionalfiling date.
Jamie Brophy (09:30):
Yeah. I think that's great advice. And it
might be worth talking a littlebit about what we mean by public
disclosure. I think it's a goodpractice for any disclosure that
you've made even if you think itis protected under a
nondisclosure agreement orsomething like that to make sure
that you have protection inplace within a year of any
disclosure. But maybe we shouldtalk about what we mean by
(09:52):
public disclosure.
Samar Shah (09:54):
Yeah. I think so. Public disclosure to me is a
very complicated topic, andmaybe we we should have a
podcast episode just on that.But from my perspective, there's
a lot of gray area in whatpublic disclosure is. The
federal courts, especially thefederal appeals courts and the
supreme courts have not dealtwith the public disclosure issue
(10:15):
all that often.
So there is not a lot of aguideline from the courts about
nuances of what constitutes thispublic disclosure. But there are
some bright line rules from myperspective, and this is a very
narrow safe interpretation ofthe law, is that anytime you
disclose something to anyonewithout a nondisclosure
agreement or a confidentialityagreement, that disclosure is
(10:37):
considered public disclosure. Orat least that's how we should
think about it for keying patentdeadlines. That means any
disclosure you made on socialmedia or even if it's on a
private Facebook group or socialmedia group. If it's a sale or
if you sold a prototype, a lotof these things can trigger your
public disclosure date andfollow on deadlines.
Jamie, is that how you thinkabout it as
Jamie Brophy (10:58):
well? Yeah. I think that's a great general
rule to follow. I'll add publicdisclosure to our list of topics
Samar Shah (11:04):
for future podcasts. That's right. I am sure the
listeners are gonna be awaiting.Yeah. And there are a lot of
exceptions.
So sometimes I've had thisseveral times where people call
the office and they're like,well, I disclosed it to my
parents. Does that count aspublic disclosure? Or I
disclosed it to my spouse. Doesthat count as public disclosure?
(11:27):
There is a lot of gray areahere, and like I said, not a lot
of guidance from the courtsabout these things.
So there has been no supremecourt or a federal circuit
opinion about whether disclosingsomething to your parents would
count. But I would say that, youknow, if you don't have an NDA,
be on the safe side and think ofit as a public disclosure.
Jamie Brophy (11:45):
Yeah. Make your parents sign an NDA.
Samar Shah (11:50):
Yes. This is what lawyers are for. Right.
Jamie Brophy (11:54):
So okay. I think that covers utility applications
and, you know, utility to meincorporates provisional and
nonprovisional. We could talk alittle bit about design patents.
We already touched on that. Adesign patent would just cover
the way something looks.
There is no option for aprovisional for design
applications. A designapplication can claim priority
(12:17):
to a nonprovisional, but itcan't claim priority to a
provisional. So if you have anew ornamental design for how
something looks, a design patentwould be for you. Do you have
anything to add, Summer, aboutdesign applications?
Samar Shah (12:31):
No. I think that's good. If you have made a public
disclosure and if you think yourinvention might be a design
patent, you need to be reallycareful when you start thinking
about putting a provisionaltogether because we've actually
had this. We had clients whohave filed their own
provisionals. They wait a yearto contact us and then they're
like, hey.
I wanna file a design patent.But if you made a disclosure
(12:52):
prior to that, you know, whenyou're filing bar date, you may
be out of luck. Right? A designpatent application may not be a
viable option for you anymore.So there is that extra
consideration that you shouldthink about if you think your
invention would qualify as adesign application.
Jamie Brophy (13:08):
Yeah. That's a great point. Or maybe they filed
a provisional thinking they'regonna go for utility. We do a
patentability opinion anddiscover it's probably not
patentable, and they say, well,maybe I can do a design
application, and we think thatthat might be a good option for
them. But what's approachingthat 1 year public disclosure on
sale bar date, so that could bean issue.
(13:30):
Also something to think about.
Samar Shah (13:32):
Yeah. I agree. You know, I wonder if we are being a
little too theoretical andabstract for our audience.
Jamie, do you wanna maybetogether go through some
examples of things that youwould consider utility patents
and design patents? For example,I'll start us off.
If a client has invented afidget spinner toy, what would
(13:54):
you recommend? Would would thatbe a utility or a design patent
to you?
Jamie Brophy (13:57):
Off the top of my head, I'm thinking it'd probably
be a design patent becausefidget spinners are known. If
they came up with a new shapefor it or a new way that it
looks, that it'd probably be adesign patent unless, you know,
it spins in a new and unique wayor something like that. But,
yeah, to me, that sounds like adesign patent.
Samar Shah (14:15):
Yeah. I would agree with that. I mean, if you have
designed a new mechanism for howit spins or if it has gears or
differential torque ratios orsomething like that, then, yeah,
that would be a utility patent.But if it's just the way it
looks, I think that would be adesign patent. So I'd agree with
that.
What about if somebody hasinvented a new shape of a hammer
that's more ergonomic?
Jamie Brophy (14:36):
Yeah. Design patent. What do you think?
Samar Shah (14:39):
Yeah. I I would agree. I mean, hammers have been
known for centuries. So, yeah, Idon't think that would fall
under utility. It would just bethe shape of the hammer, so that
would be a design application tome.
Jamie Brophy (14:49):
Yeah. Definitely.
Samar Shah (14:51):
What about situations where somebody's
invention can fall under both autility and a design pen
application? What kind of advicewould you give to an inventor
who's in those shoes?
Jamie Brophy (15:02):
I would suggest applying for both. You never
know what's gonna happen in thepatent prosecution process. So
my preference would be to fileboth and to file them on the
same day or approximately thesame day. If budget allows, I
would apply for both.
Samar Shah (15:19):
Yeah. I agree. If budget allows, I would do both.
If you only have budget for oneapplication, the question that I
like to ask clients is, whatwould you be most upset about if
you found somebody copyingeither the utility or the
functionality of the inventionor the shape of the invention?
Which one would upset you themost?
That's usually a good startingpoint for figuring out what
(15:41):
might be most important. Alsothink about whether copying the
utility or the design wouldallow somebody to create a
competitive product and whetherthat competitive product would
be suboptimal in many ways.Right? If it's not as
attractive, then that's also agood way to kinda prioritize
these filings. Anything elsethat you would think about,
Jamie Brophy (16:01):
Jamie? No. I think that's a great way of looking at
it. Yeah. I think that's greatadvice.
Samar Shah (16:06):
Okay. Great. So I think we've covered those. We
have plant patents, which Idon't have much to say about,
Jamie. What what do you knowabout plant patents?
Not much.
Jamie Brophy (16:17):
And, you know, 23, 24 years of experience, I don't
think I've ever seen a plantpatent. I've definitely never
worked on one. If you come upwith a new plant, then you would
wanna get a plant patent on it,but I've never done them
personally.
Samar Shah (16:31):
Yeah. Me neither. I know they theoretically exist,
but I've never seen them. Sosomebody has has a bunch of
plant patents and maybe we'llinterview them one day. I think
this is great.
There's also the PCTapplication. Maybe we should
talk about that. I'm sure someof the listeners will have
questions about protecting theirinvention internationally, and
maybe they've heard of the termPCT. Could you explain what that
(16:52):
means?
Jamie Brophy (16:54):
Yeah. So PCT stands for Patent Cooperation
Treaty, and this is a treatyamongst bunch of different
countries. If you're interestedin protection outside of the US,
you'd file 1 PCT application.And then within a preset time
limit, maybe you can talk moreabout the time limit, Summer,
(17:14):
but within a preset time limit,you would need to decide which
countries you want to go intofrom the PCT. If you decide you
want protection in Europe,Europe is all one.
One patent office covers all ofEurope. So European protection,
protection in Japan, andprotection in China. You could
then branch off of your PCTapplication and file in all
(17:36):
these different countries. Doesthat about cover it?
Samar Shah (17:39):
Yeah. I think that's right. So from a timing
perspective, you do have 1 yearfrom your US application, your
first US application to file thePCT application. So that
deadline could be triggered by aprovisional or non provisional,
whichever one comes first,essentially. So you do have 12
months from your US applicationfiling date to file the PCT.
(18:01):
And then the PCT applicationwill give you another 18 to 30
months to make a decision onwhich country you wanna file in.
So the way it works is you get30 months if you file the PCT as
your first application or 30months from your first priority
application. So let's say youfile the provisional first, You
would have 30 months from thatprovisional filing date to make
(18:24):
a decision on whether to fileinternationally or not. So in
effect, the way it works formost clients who will file a
PCT, they'll file theprovisional. 12 months later,
they'll file the PCT.
And then 18 months after that,they'll have to make a decision
on which countries they wantprotection. And that process
going into each country iscalled the National Phase Entry
(18:45):
Process. And most countries willhave their own deadlines about
when that national phase entryhas to happen. Some countries
are as short as 20 months, 18months. Most countries fall at
the 30 month deadline and then afew countries also fall under
the 32 month deadline.
I don't think any go past that.So maybe I should talk about
some costs just so people havean idea. The PCT filing itself
(19:09):
is $1,000 to $2,000 depending onif you're a micro entity or a
small entity. It's not superexpensive at that stage, and
usually you would wanna file thesame document that you filed in
the US at the PCT. You had toreformat it and file some
additional paperwork with it,but the content of the
application, at least when we doit, is the same in the US and
the PCT.
(19:30):
After that, when you go intonational phase entry is usually
when the process gets veryexpensive. You have to hire
lawyers in each individualcountry that you want protection
in. So if you work with us, forexample, we have connections
with a lot of foreign councils,so you don't have to worry that.
But if you're gonna do it onyour own, you would have to find
an attorney in that country todo the national phased entry.
(19:52):
And in my experience, it ends upbeing about $4,000 or so per
country if it doesn't require atranslation.
If it requires a translation,like in the Japanese pen office
or the Korean pen office, it'sanother 2 to 3 k for the
translation process as well. Andthen if you wanted to file the
EPO, the European pen office,it's usually 6 to $8,000. And
(20:14):
but that would give you coverageover all the European countries
as opposed to going to theEuropean countries individually.
So that's when the process getsexpensive. You know, if you're
in 10 countries, you can veryeasily spend 60, 70 k in that
process.
So that's something you wannathink about. That process gets
pretty expensive pretty fast.
Jamie Brophy (20:32):
Yeah. Definitely. Luckily, your US patent protects
you from anything beingimported, but, unfortunately, it
doesn't offer you any protectionin other countries. So, yeah, if
you plan on selling in othercountries, PCT would definitely
be the way to go. But I have aquestion for you about PCT,
Summer.
Is it possible for somebody tofile a provisional in the US and
(20:54):
then file the PCT application 12months later and then enter the
US during the national phaseentry?
Samar Shah (21:01):
Yeah. Absolutely. You can do that. I had somebody
call my office and they said,you know, US applications have a
filing fee. So they were like,can we just skip the US
provisional and just file a PCTfrom the get go?
And then you have 30 months fromthat date to do a national phase
entry in the US. So,theoretically, that's possible.
(21:22):
Not just theoretically, it'sdefinitely possible for you to
international phase in the USthrough the PCT. So it it could
buy you some extra time.
Jamie Brophy (21:31):
Okay. Yeah. Good to know. And then when you say
it costs 1 to 2,000 to file,that's just the filing fee.
Correct?
Samar Shah (21:39):
That's the filing fee. You know, for us, we don't
charge additional attorney'sfees. We do charge paralegal fee
for our paralegals to file theapplication. But, usually, we
don't charge an additionalattorney's fees because we just
file the same document that wefiled at the US application at
the PCT level as well.
Jamie Brophy (21:57):
Great. Okay. Yeah. I think that covers it for PCTs.
Do you have anything else toadd?
Samar Shah (22:04):
No. I think this is it. I feel like you went through
a lot of information at thelisteners, so hopefully everyone
stuck around till the end andhopefully found this informative
and helpful.
Jamie Brophy (22:14):
Yeah. Definitely. Alright. Thanks, Summer. Right.
Samar Shah (22:18):
Yeah. Thanks, Jamie. Thanks everyone for listening.
We'll be back with our nextepisode next time. Thank you for
joining us on the Patent PendingMade Simple podcast.
I hope you enjoyed our show. Ifyou'd like to receive updates,
view the show notes or access adirect link to any resource, go
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(22:39):
help others find our podcast,please like, share, and
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This host, guests or anylistener for any reason. The
(22:59):
content of this podcast shouldnot be interpreted as legal
advice. All thoughts andopinions expressed herein are
only those from which
Jamie Brophy (23:07):
they came.
Hello, and welcome to the patent pending made
simple podcast. I'm Samar Shah,and on the other line is Jamie
Brophy. Jamie, how are you?
Jamie Brophy (00:07):
Hi. Good, Summer. How are you?
Samar Shah (00:09):
I am doing well. Glad to be recording again. We
haven't quit thus far, so that'sa good sign. Absolutely. Very
good.
Well, today's episode is aboutdifferent types of patent
applications that somebody couldfile. I'm glad to be able to
talk about this because there issome confusion when people call
our office. They're not surewhether their invention is
(00:32):
patentable, And if it is, whatkind of patent should they file
for? So I think this will beinteresting to our listeners
here. Jamie, do you wanna startus off by maybe talking about
the types of patents that areout there that somebody could
file for?
Jamie Brophy (00:46):
Yeah. Definitely. The 3 main types are utility
patent applications, plantpatent applications, and design
patent applications. With theutility application, there's 2
different types. There's theprovisional application and the
non provisional application.
The provisional is just anapplication that is good for a
(01:07):
year, and it expires after thatyear, and it's basically just a
placeholder for your filingdates. And then within that year
on or before the anniversarydate of the year, you need to
convert that to a nonprovisionalapplication, And that's the
application that will getexamined by the patent office
and hopefully end up being apatent.
Samar Shah (01:31):
That's a great overview. Taking a step back
beyond that, I think of utilitypatents as protecting how
something works, the underlyingmechanism for how something
works or how the inventionworks. I think of the design
patent as the ornamental shapeor how something looks being
able to protect that. Is thathow you would categorize them
(01:52):
too, Jamie?
Jamie Brophy (01:53):
Yeah. Definitely. The official definition of a
utility application is any newand useful process, machine,
manufacture, or composition ofmatter, or any new and useful
improvement thereof. So that'swhat's covered in a utility
application. So the waysomething works, the way you
make something, things likethat.
(02:14):
And then for the designapplication, it basically just
covers the way something looks.So it's a lot more narrow
coverage in a design patentversus a utility.
Samar Shah (02:24):
Yep. That makes a lot of sense. You had mentioned
that the provisional applicationis only good for 1 year, and I
and I'm gonna ask you questionsfrom the perspective of somebody
who has questions about this,Jamie. Yep. So does the
provisional application turninto a patent grant?
Jamie Brophy (02:40):
No. The provisional is, like I said
before, just kind of aplaceholder for your filing
date. You want the provisionalapplication to be as complete as
possible, you want it to haveeverything in it that you think
you'll need in your nonprovisional, but it just sits at
the patent office for a year. Itdoesn't go anywhere. It's a
great option for quickly filingsomething that you need to get
(03:03):
protection for, and then itgives you that year to do
further inventing or findinvestors or find manufacturers
with the confidence that youhave.
You do have patent pendingstatus, but, no, a provisional
application will not be examinedby the patent office, and it
will not result in a patent.
Samar Shah (03:21):
Yep. I agree with that. A lot of attorneys will
kind of poo poo or downplay theprovisional application. To give
you some context, at my oldfirm, we routinely did not file
provisionals at all, mostlybecause it didn't make economic
sense for the law firm. The firmjust didn't make a ton of money
on those applications.
We would file them sometimes ifthere was an emergency or if
(03:43):
there was a on sale bar datecoming up or a disclosure date
coming up, but normally, wewouldn't file them. And and a
lot of people who actually callour office, they're like, hey. I
don't wanna file a provisionalbecause I heard they're
terrible. And, Jamie, what doyou think about that? Do you
recommend your clients totypically file a provisional, or
do you think it's a bad idea tofile them?
Jamie Brophy (04:03):
No. I think it's a good idea to file them,
especially for independentinventors, small companies. A
lot of times when people come tous, they haven't fully fleshed
out what the invention exactlyis. You know? They have some
ideas for how it's gonna work,but they haven't done a
prototype.
They haven't had engineeringdrawings done or anything like
(04:26):
that. They're nervous aboutdisclosing it to anybody that
would need to help them withthose things, which makes
perfect sense. So I think aprovisional is an important
step. It gives you someprotection while you continue to
work on your invention.
Samar Shah (04:43):
Yeah. I agree with that. I think provisionals are
great. The challenge withprovisionals is that there are
very few legal requirements fora provisional application. So
you could file theoretically,just one sentence about your
invention as a provisionalapplication or a back of a
napkin description of yourinvention and file it as a
(05:03):
provisional.
I've seen a lot of provisionalslike that, and I'm sure other
attorneys have seen them aswell. I think it'd be easy to
conclude from that that, hey,provisionals are terrible. They
don't give you enoughprotection. They don't meet the
enablement requirement and so onand so forth. What I like about
the way we practice is that wedo a pretty good job on the
provisional application.
(05:23):
They're pretty full featured.They usually always meet the
enablement requirements and alot of other requirements. And,
Jamie, could you talk about whatmakes for a good provisional
application or how you thinkabout what needs to go in that
provisional application?
Jamie Brophy (05:37):
Yeah. I mean, I try my best to write the
provisional applications in sortof the same manner I would write
a non provisional application.So whatever's in the provisional
application is entitled to thatfiling date of the provisional
application. If there'sadditional things or things that
are not disclosed in theprovisional that are in the
(05:58):
nonprovisional, that additionalmaterial won't be entitled to
the earlier filing date. That'ssort of the problem with doing a
what I like to call a quick anddirty provision provisional
where you just need to getsomething filed.
You submit just kind of what youhave without really writing out
a full application. If I havethe time, if the client's not in
a hurry, I like to write themthe same way I would write a
(06:21):
nonprovisional. Having all thedrawings in there to the best of
our ability, making sure theinvention is enabled, making
sure we've disclosed what wethink is the best mode of
practicing the invention. Iwould think about what I want in
the claims and make sure Idisclose those things in the
provisional application. So,yeah, I try to make it as full
(06:42):
of an application as I can, butsometimes it depends on what
information the client has andhow far they are in the
inventing process.
Samar Shah (06:52):
Yeah. That makes sense. You can only protect what
the client has invented, but Ithink it's a mistake. Sometimes
inventors think that, oh, well,I can just put anything in that
application and file it. And Ithink that's a pretty big
mistake and potentially verydangerous too from a patent
perspective.
We have rules in the US aboutstatutory bar dates, which
(07:12):
essentially refers to yourtimelines for when you can get a
patent. The first requirement isthat you have to file a patent
within 1 year of your publicdisclosure date, or the second
requirement is that it has to bewithin 1 year of your sale date.
So sometimes this is whathappens. Clients will disclose
their invention or they'll sella prototype to somebody as a way
(07:33):
to test their invention. Theyget close to the 1 year mark and
they're like, well, I need tofile something and might as well
file a provisional just becauseI don't have the time to put one
together or they wanna save somemoney and try to put it together
themselves or or something likethat.
If you don't meet some of thedisclose your invention in
(07:54):
sufficient detail to cover thatsale or that disclosure, then
let's say you you file your nonprovisional 1 year from that
provisional date, that nonprovisional application will
only get priority to theprovisional date to the extent
that it's coextensive with theprovisional. If it's not, then
your own prior disclosure, whichwould have happened 2 years ago
(08:15):
or 2 years from your nonprovisional date, would serve to
bar you from getting a patent.So if you don't do it right, I
think you could open up a trapdoor for yourself and have your
own disclosures invalidate yournonprovisional down the road.
Jamie Brophy (08:29):
Yeah. That's a great point. You know? And there
might be a situation whereyou've made a small change to
your invention, and you put thatin the nonprovisional, but it's
not in the provisional. So it'snot entitled to that earlier
filing date.
But it could be considered anobvious modification, and we
would run into similar issueswith that. So, yeah, definitely,
that's a great point.
Samar Shah (08:51):
Yeah. And this may be beyond the scope of our
initial discussion, but if youhave a disclosure or a sale
before you file a patent, youhave to become really careful
and vigilant about that firstdisclosure. And I would circle 1
year from that date on yourcalendar and make sure that you
file a high qualitynonprovisional from that
(09:12):
disclosure date. Right?Normally, inventors will file
the provisional first and thencircle 1 year from the
provisional filing date to filethe nonprovisional.
But if the disclosure happenedbefore you file the provisional,
then I would key everything offof the disclosure date and not
necessarily your provisionalfiling date.
Jamie Brophy (09:30):
Yeah. I think that's great advice. And it
might be worth talking a littlebit about what we mean by public
disclosure. I think it's a goodpractice for any disclosure that
you've made even if you think itis protected under a
nondisclosure agreement orsomething like that to make sure
that you have protection inplace within a year of any
disclosure. But maybe we shouldtalk about what we mean by
(09:52):
public disclosure.
Samar Shah (09:54):
Yeah. I think so. Public disclosure to me is a
very complicated topic, andmaybe we we should have a
podcast episode just on that.But from my perspective, there's
a lot of gray area in whatpublic disclosure is. The
federal courts, especially thefederal appeals courts and the
supreme courts have not dealtwith the public disclosure issue
(10:15):
all that often.
So there is not a lot of aguideline from the courts about
nuances of what constitutes thispublic disclosure. But there are
some bright line rules from myperspective, and this is a very
narrow safe interpretation ofthe law, is that anytime you
disclose something to anyonewithout a nondisclosure
agreement or a confidentialityagreement, that disclosure is
(10:37):
considered public disclosure. Orat least that's how we should
think about it for keying patentdeadlines. That means any
disclosure you made on socialmedia or even if it's on a
private Facebook group or socialmedia group. If it's a sale or
if you sold a prototype, a lotof these things can trigger your
public disclosure date andfollow on deadlines.
Jamie, is that how you thinkabout it as
Jamie Brophy (10:58):
well? Yeah. I think that's a great general
rule to follow. I'll add publicdisclosure to our list of topics
Samar Shah (11:04):
for future podcasts. That's right. I am sure the
listeners are gonna be awaiting.Yeah. And there are a lot of
exceptions.
So sometimes I've had thisseveral times where people call
the office and they're like,well, I disclosed it to my
parents. Does that count aspublic disclosure? Or I
disclosed it to my spouse. Doesthat count as public disclosure?
(11:27):
There is a lot of gray areahere, and like I said, not a lot
of guidance from the courtsabout these things.
So there has been no supremecourt or a federal circuit
opinion about whether disclosingsomething to your parents would
count. But I would say that, youknow, if you don't have an NDA,
be on the safe side and think ofit as a public disclosure.
Jamie Brophy (11:45):
Yeah. Make your parents sign an NDA.
Samar Shah (11:50):
Yes. This is what lawyers are for. Right.
Jamie Brophy (11:54):
So okay. I think that covers utility applications
and, you know, utility to meincorporates provisional and
nonprovisional. We could talk alittle bit about design patents.
We already touched on that. Adesign patent would just cover
the way something looks.
There is no option for aprovisional for design
applications. A designapplication can claim priority
(12:17):
to a nonprovisional, but itcan't claim priority to a
provisional. So if you have anew ornamental design for how
something looks, a design patentwould be for you. Do you have
anything to add, Summer, aboutdesign applications?
Samar Shah (12:31):
No. I think that's good. If you have made a public
disclosure and if you think yourinvention might be a design
patent, you need to be reallycareful when you start thinking
about putting a provisionaltogether because we've actually
had this. We had clients whohave filed their own
provisionals. They wait a yearto contact us and then they're
like, hey.
I wanna file a design patent.But if you made a disclosure
(12:52):
prior to that, you know, whenyou're filing bar date, you may
be out of luck. Right? A designpatent application may not be a
viable option for you anymore.So there is that extra
consideration that you shouldthink about if you think your
invention would qualify as adesign application.
Jamie Brophy (13:08):
Yeah. That's a great point. Or maybe they filed
a provisional thinking they'regonna go for utility. We do a
patentability opinion anddiscover it's probably not
patentable, and they say, well,maybe I can do a design
application, and we think thatthat might be a good option for
them. But what's approachingthat 1 year public disclosure on
sale bar date, so that could bean issue.
(13:30):
Also something to think about.
Samar Shah (13:32):
Yeah. I agree. You know, I wonder if we are being a
little too theoretical andabstract for our audience.
Jamie, do you wanna maybetogether go through some
examples of things that youwould consider utility patents
and design patents? For example,I'll start us off.
If a client has invented afidget spinner toy, what would
(13:54):
you recommend? Would would thatbe a utility or a design patent
to you?
Jamie Brophy (13:57):
Off the top of my head, I'm thinking it'd probably
be a design patent becausefidget spinners are known. If
they came up with a new shapefor it or a new way that it
looks, that it'd probably be adesign patent unless, you know,
it spins in a new and unique wayor something like that. But,
yeah, to me, that sounds like adesign patent.
Samar Shah (14:15):
Yeah. I would agree with that. I mean, if you have
designed a new mechanism for howit spins or if it has gears or
differential torque ratios orsomething like that, then, yeah,
that would be a utility patent.But if it's just the way it
looks, I think that would be adesign patent. So I'd agree with
that.
What about if somebody hasinvented a new shape of a hammer
that's more ergonomic?
Jamie Brophy (14:36):
Yeah. Design patent. What do you think?
Samar Shah (14:39):
Yeah. I I would agree. I mean, hammers have been
known for centuries. So, yeah, Idon't think that would fall
under utility. It would just bethe shape of the hammer, so that
would be a design application tome.
Jamie Brophy (14:49):
Yeah. Definitely.
Samar Shah (14:51):
What about situations where somebody's
invention can fall under both autility and a design pen
application? What kind of advicewould you give to an inventor
who's in those shoes?
Jamie Brophy (15:02):
I would suggest applying for both. You never
know what's gonna happen in thepatent prosecution process. So
my preference would be to fileboth and to file them on the
same day or approximately thesame day. If budget allows, I
would apply for both.
Samar Shah (15:19):
Yeah. I agree. If budget allows, I would do both.
If you only have budget for oneapplication, the question that I
like to ask clients is, whatwould you be most upset about if
you found somebody copyingeither the utility or the
functionality of the inventionor the shape of the invention?
Which one would upset you themost?
That's usually a good startingpoint for figuring out what
(15:41):
might be most important. Alsothink about whether copying the
utility or the design wouldallow somebody to create a
competitive product and whetherthat competitive product would
be suboptimal in many ways.Right? If it's not as
attractive, then that's also agood way to kinda prioritize
these filings. Anything elsethat you would think about,
Jamie Brophy (16:01):
Jamie? No. I think that's a great way of looking at
it. Yeah. I think that's greatadvice.
Samar Shah (16:06):
Okay. Great. So I think we've covered those. We
have plant patents, which Idon't have much to say about,
Jamie. What what do you knowabout plant patents?
Not much.
Jamie Brophy (16:17):
And, you know, 23, 24 years of experience, I don't
think I've ever seen a plantpatent. I've definitely never
worked on one. If you come upwith a new plant, then you would
wanna get a plant patent on it,but I've never done them
personally.
Samar Shah (16:31):
Yeah. Me neither. I know they theoretically exist,
but I've never seen them. Sosomebody has has a bunch of
plant patents and maybe we'llinterview them one day. I think
this is great.
There's also the PCTapplication. Maybe we should
talk about that. I'm sure someof the listeners will have
questions about protecting theirinvention internationally, and
maybe they've heard of the termPCT. Could you explain what that
(16:52):
means?
Jamie Brophy (16:54):
Yeah. So PCT stands for Patent Cooperation
Treaty, and this is a treatyamongst bunch of different
countries. If you're interestedin protection outside of the US,
you'd file 1 PCT application.And then within a preset time
limit, maybe you can talk moreabout the time limit, Summer,
(17:14):
but within a preset time limit,you would need to decide which
countries you want to go intofrom the PCT. If you decide you
want protection in Europe,Europe is all one.
One patent office covers all ofEurope. So European protection,
protection in Japan, andprotection in China. You could
then branch off of your PCTapplication and file in all
(17:36):
these different countries. Doesthat about cover it?
Samar Shah (17:39):
Yeah. I think that's right. So from a timing
perspective, you do have 1 yearfrom your US application, your
first US application to file thePCT application. So that
deadline could be triggered by aprovisional or non provisional,
whichever one comes first,essentially. So you do have 12
months from your US applicationfiling date to file the PCT.
(18:01):
And then the PCT applicationwill give you another 18 to 30
months to make a decision onwhich country you wanna file in.
So the way it works is you get30 months if you file the PCT as
your first application or 30months from your first priority
application. So let's say youfile the provisional first, You
would have 30 months from thatprovisional filing date to make
(18:24):
a decision on whether to fileinternationally or not. So in
effect, the way it works formost clients who will file a
PCT, they'll file theprovisional. 12 months later,
they'll file the PCT.
And then 18 months after that,they'll have to make a decision
on which countries they wantprotection. And that process
going into each country iscalled the National Phase Entry
(18:45):
Process. And most countries willhave their own deadlines about
when that national phase entryhas to happen. Some countries
are as short as 20 months, 18months. Most countries fall at
the 30 month deadline and then afew countries also fall under
the 32 month deadline.
I don't think any go past that.So maybe I should talk about
some costs just so people havean idea. The PCT filing itself
(19:09):
is $1,000 to $2,000 depending onif you're a micro entity or a
small entity. It's not superexpensive at that stage, and
usually you would wanna file thesame document that you filed in
the US at the PCT. You had toreformat it and file some
additional paperwork with it,but the content of the
application, at least when we doit, is the same in the US and
the PCT.
(19:30):
After that, when you go intonational phase entry is usually
when the process gets veryexpensive. You have to hire
lawyers in each individualcountry that you want protection
in. So if you work with us, forexample, we have connections
with a lot of foreign councils,so you don't have to worry that.
But if you're gonna do it onyour own, you would have to find
an attorney in that country todo the national phased entry.
(19:52):
And in my experience, it ends upbeing about $4,000 or so per
country if it doesn't require atranslation.
If it requires a translation,like in the Japanese pen office
or the Korean pen office, it'sanother 2 to 3 k for the
translation process as well. Andthen if you wanted to file the
EPO, the European pen office,it's usually 6 to $8,000. And
(20:14):
but that would give you coverageover all the European countries
as opposed to going to theEuropean countries individually.
So that's when the process getsexpensive. You know, if you're
in 10 countries, you can veryeasily spend 60, 70 k in that
process.
So that's something you wannathink about. That process gets
pretty expensive pretty fast.
Jamie Brophy (20:32):
Yeah. Definitely. Luckily, your US patent protects
you from anything beingimported, but, unfortunately, it
doesn't offer you any protectionin other countries. So, yeah, if
you plan on selling in othercountries, PCT would definitely
be the way to go. But I have aquestion for you about PCT,
Summer.
Is it possible for somebody tofile a provisional in the US and
(20:54):
then file the PCT application 12months later and then enter the
US during the national phaseentry?
Samar Shah (21:01):
Yeah. Absolutely. You can do that. I had somebody
call my office and they said,you know, US applications have a
filing fee. So they were like,can we just skip the US
provisional and just file a PCTfrom the get go?
And then you have 30 months fromthat date to do a national phase
entry in the US. So,theoretically, that's possible.
(21:22):
Not just theoretically, it'sdefinitely possible for you to
international phase in the USthrough the PCT. So it it could
buy you some extra time.
Jamie Brophy (21:31):
Okay. Yeah. Good to know. And then when you say
it costs 1 to 2,000 to file,that's just the filing fee.
Correct?
Samar Shah (21:39):
That's the filing fee. You know, for us, we don't
charge additional attorney'sfees. We do charge paralegal fee
for our paralegals to file theapplication. But, usually, we
don't charge an additionalattorney's fees because we just
file the same document that wefiled at the US application at
the PCT level as well.
Jamie Brophy (21:57):
Great. Okay. Yeah. I think that covers it for PCTs.
Do you have anything else toadd?
Samar Shah (22:04):
No. I think this is it. I feel like you went through
a lot of information at thelisteners, so hopefully everyone
stuck around till the end andhopefully found this informative
and helpful.
Jamie Brophy (22:14):
Yeah. Definitely. Alright. Thanks, Summer. Right.
Samar Shah (22:18):
Yeah. Thanks, Jamie. Thanks everyone for listening.
We'll be back with our nextepisode next time. Thank you for
joining us on the Patent PendingMade Simple podcast.
I hope you enjoyed our show. Ifyou'd like to receive updates,
view the show notes or access adirect link to any resource, go
to the episodes page on patentpending made simple dot com. To
(22:39):
help others find our podcast,please like, share, and
subscribe. Thanks again fortuning in. I look forward to
having you with us next time onPatent Pending Made Simple.
This host, guests or anylistener for any reason. The
(22:59):
content of this podcast shouldnot be interpreted as legal
advice. All thoughts andopinions expressed herein are
only those from which
Jamie Brophy (23:07):
they came.
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