When to file a patent application and what type of application should be filed

By George Likourezos, Esq.

As a patent attorney who represents technology companies in the United States and throughout the world, I am often asked when an invention or innovation should be the subject of a patent application, and what type of patent application should be filed (e.g., provisional, non-provisional, design, and international patent application). Answers to these questions are provided below which can help a technology company make an informed business decision. 

When should a patent application be filed?

Filing a patent application is a good idea when you’ve come up with a novel and non-obvious invention that you believe has potential commercial value. It’s a way to protect your intellectual property and prevent others from making, using, or selling your invention without your permission. If your invention meets the criteria for patentability and you want to secure exclusive rights to it, it’s probably time to consider filing a patent application.

Should a provisional or a non-provisional patent application be filed?

The decision between filing a provisional or non-provisional patent application depends on your specific circumstances and goals. A provisional patent application is a simpler and less expensive option. It provides a filing date and allows you to use the term “patent pending” for 12 months. However, it doesn’t turn into an actual patent unless you follow up with a non-provisional application within that 12-month period.

A non-provisional patent application, on the other hand, undergoes a thorough examination by the patent office and, if granted, results in an actual patent that provides stronger protection. It includes a detailed description, claims, and often requires professional drafting.

Consider filing a provisional application if you want to quickly establish a filing date and have more time to assess the market or secure funding. However, if you’re ready to pursue full patent protection and undergo the examination process, a non-provisional application is the way to go.

Ultimately, the choice depends on your priorities, budget, and the level of protection you seek for your invention.

What is a PCT patent application?

A PCT (Patent Cooperation Treaty) patent application is an international patent application that provides a standardized way to seek patent protection in multiple countries. It doesn’t result in an international patent (does not exist—see below) but streamlines the process of filing separate patent applications in different countries.

Here’s how it generally works:

Filing: You file a PCT application with the World Intellectual Property Organization (WIPO). This establishes an international filing date and delays the need to file individual applications in multiple countries.

International Search: The PCT application undergoes an international search, where an international search authority reviews the invention’s novelty and assesses the prior art. A written opinion on the patentability of the invention is provided.

International Publication: The application is then published by WIPO, making the details of your invention available to the public.

Chapter II Examination (Optional): You can request an additional examination (Chapter II) that provides a detailed examination of the patentability of your invention.

National Phase: After the PCT process, typically at 30 or 31 months from the priority date, you must enter the national phase by filing individual patent applications in the countries or patent jurisdictions/regions (e.g., European Patent Office for Europe) where you want protection. The PCT application acts as a basis for these national applications.

The PCT system simplifies the process of seeking international patent protection and provides a longer period for deciding in which countries to pursue patents. It serves as a centralized filing mechanism before entering the national phases. It’s important to note that each country’s patent system operates independently, and obtaining a patent in one country does not automatically grant protection in another.

Is there an international or global patent?

No, there is no international patent that provides worldwide protection for an invention. Instead, the process involves filing for patents in individual countries or regions as described above with respect to the PCT system, or a patent can be filed directly in an individual country or region without going through the PCT system.

How to protect a design?

A design can be protected by applying for and being granted a design patent which is a form of intellectual property protection that grants exclusive rights to the ornamental design of a functional item. Unlike utility patents, which protect the functional aspects of an invention, design patents focus on the aesthetic or visual characteristics of a product. Several countries protect designs via a registration process that also enables the owner to bring an action against unauthorized use or reproduction of the registered design.

Design patents and registrations are valuable in industries where the aesthetic appeal of a product is a significant factor, such as fashion, consumer electronics, and automotive design. They offer a way to protect the unique and distinctive visual features of a product, helping to prevent others from copying the design for commercial gain.

Companies should keep in mind that the patent process and registration of designs can be complex, and each situation may be different, so it might be helpful to consult with a patent attorney. Consulting with a patent attorney can also help make informed decisions based on specific situations, especially in determining where to obtain patent protection.

A resource for companies and their investors to consider is the intellectual property law firm of Carter, DeLuca & Farrell. Carter DeLuca has assisted hundreds of companies protect their intellectual property, including their proprietary technologies via patents, their brands and logos via trademarks, their software and websites via copyrights, and their trade secrets, and has also assisted investors in determining how prospective companies they are seeking to invest in treat, maintain and safeguard their intellectual property.

For a free consultation made available through Spotlight Family Office Group, please contact us at Info@SpotlightFamilyOffice.com.