What Type of Patent Do I Need?
Typically the patent process begins with an invention that is already created, and the inventor or a business/legal representative associated with the inventor seeks out our to protect the invention.
Initial Considerations for a Patent - The first consideration is the form in which the invention should be protected.
There are many ways to protect intellectual property.
Trade secret protection is protection under state law in which the invention is basically hidden from public discovery. For example, the chemical formula for Coca-Cola has been successfully kept as a trade secret for many years. Trade secret protection works best in situations where the invention is unlikely to be reverse engineered. In addition, trade secrets can be advantageous if protection is sought for longer than the term of a patent (currently 20 years), and the circumstances are such that confidentiality of the invention can be maintained. Trade secret protection is rarely appropriate for software because software is easily reverse engineered with a wide variety of tools available today.
A utility patent protects functional elements of a product.
A nonprovisional utility application is what people typically mean when they talk about a patent application. The application describes the invention in enough detail for someone to reconstruct the invention. If granted, the United States provides the inventor or owner of the patent with a right to exclude others from practicing the invention for 20 years from the date of filing. Nonprovisional utility applications can be obtained in a variety of technology areas. We focus primarily on electrical, software, Internet, and business method applications.
Provisional Utility Application
A provisional utility application is never examined by the Patent Office and is valid for one year, after which a nonprovisional utility application must be filed or the application becomes abandoned. Provisional applications are generally filed when either:
- there is a planned, imminent disclosure of the invention (such as publishing a research paper in a trade journal, speaking at a conference, or entering sales discussions with potential buyers) for which there is not time to prepare and file a nonprovisional utility application,
- there is a good reason to save the cost of filing the application for one year (such as to conduct further testing, see if projected customer interest materializes, and so forth). We generally recommend against filing provisional applications because a nonprovisional utility application can be prepared quickly (i.e., in as little as a week) when necessary, and failure to include sufficient detail in a provisional runs the risk of the filing date of the provisional not being afforded any weight.
Other Forms of Legal Protection
A design patent protects non-functional elements (ornamental design) of a product.
Design Patent Application
Whereas a utility patent protects the functionality of an invention, a design patent protects the ornamental design (e.g., external, nonfunctional characteristics). A design patent typically consists of a single drawing and a brief one paragraph description. This type of patent is useful for inventions that have a distinctive appearance and for businesses that would be harmed if competitors could easily copy the appearance of the invention. For example, the X shape of Microsoft’s original Xbox was awarded a design patent, as was the Google home page.
Trademark and Trade Names
Trademarks protect source identifiers: images or phrases that identify the source of a particular product or service.
Copyrights protect works from being directly copied. For example the text of a book or the source code of a software application can be protected through copyright. Even minor modifications to the original work can overcome copyright protection, making patent protection of the functionality often more beneficial. For software, copyright protection can be useful for preventing source code from being published if it is ever discovered (such as through a disgruntled employee). Copyright protection has also been used to prevent firmware and other binary code from being posted to a website by someone other than the owner.