COURSE 16 - Tutorial 1 - The U.S. Patent Application Process

Oct 28, 2026

Upload by Aurelia

Covers the U.S. patent application process by explaining why the patent system exists and how patent rights balance public disclosure with the ability to exclude others from practicing an invention. Details patentability criteria—novelty, usefulness, and nonobviousness—along with patent categories: plant, design, and utility. Describes key concepts for filing utility applications, including required information, the meaning of inventors, and provisional patent applications, their lack of examination, expiration, and conversion into regular filings.

LanguageEnglish

CategoryTechnology

FormatPDF

Pages3

Reading Time8 min

AccessFree to download

THE U.S. PATENT APPLICATION PROCESS

Patents and the patent system

Criteria for patentability

Novelty

Usefulness

Nonobviousness

Patent categories

Plant patents

Design patents

Utility patents

Filing patent applications

Required information before filing a utility patent

Step 03: Inventor(s)

Step 05: Patent application type (provisional vs regular)

COURSE 16, TUTORIAL 1 THE U.S. PATENT APPLICATION PROCESS P atents are one of four types of intellectual property (IP)– the others being trade secrets or know-how, trademarks, and copyrights. This tutorial will focus on patents and the process for securing a patent in the U.S. First, let’s consider why we have a patent system? This system was established to promote innovation. In exchange for publishing detailed information about an invention, a patent owner has the right to exclude others from using that invention for the life of the patent. However, innovation can occur by others reading and learning from the patent’s teachings. Since the first patent in 1790, over 9.75 million patents have been awarded for inventions by the U.S. Patent and Trademark Office (USPTO) . The vast majority of these, estimated at greater than 95%, are improvement patents that build on past inventions. Only a select few are pioneering patents that introduce new ideas such as the laser, transistor, or a new class of drugs. CRITERIA FOR PATENTABILITY How does one know if an invention is patentable? Per the Committee Reports that accompanied the 1952 Patent Act and the Chakrabarty Supreme Court ruling “anything under the sun made by man” is eligible for patent consideration. However, there are three key criteria that must be met: Novelty, Usefulness, and Nonobviousness. Novelty considers what is known and used by others – a socalled “prior art” barrier. If an invention has been described in writing in a patent or other printed publication, it is NOT considered novel. If an invention has NOT been kept confidential before the patent application, it is also NOT considered novel. The second criterion for patentability is usefulness which excludes abstract ideas, as it must be capable of use and provide an identifiable benefit. The third criterion – Nonobviousness – is somewhat more complex. If one publication teaches part of an invention and another or multiple documents teach the remainder, the invention may be deemed obvious. The key question here is would a person of ordinary skill in the art be motivated to combine the referenced inventions with likelihood of success. The nonobvious criteria are more subjective. Often in patent parlance the concept of an “inventive step” not taught by previous references is used to highlight the nonobvious nature of the invention. PATENT CATEGORIES There are three patent categories: plant patents, design patents, and utility patents. Plant patents represent less than 1% of issued patents, design patents less than 10%, with the remainder – about 90% – being utility patents. A plant patent protects a distinct and new type of plant. Examples include hybrid fruit trees and herbicide-resistant crops. Assuming a plant patent issues, its patent life is 20 years from application filing. 16/1-1 POWERED BY S BA A design patent protects the visual or ornamental design of a product. An example of this is a patent assigned to Apple (USPD618677) covering a black rounded rectangle design for their iPhone. If an ornamental design has utility as well, a separate utility patent must also be filed. A new design patent life is 15 years from application filing, assuming that it issues. A utility patent protects a new or improved process, machine, article of manufacture, or composition of matter. A new utility patent has a life of 20 years from application filing, assuming it issues and all subsequent maintenance fees are paid. Under the utility patent process, a special type of application known as a provisional patent application is allowed. This will be explored in more depth later in this course. FILING PATENT APPLICATIONS Applying for a patent is a well-established process governed by public law 35 U.S.C. The accompanying figure is a high-level flow chart of the process for preparing and submitting a utility application. It is important to note that the applicant is involved in and responsible for a

FAQs

Why does the U.S. patent system exist?

The system promotes innovation by granting patent owners the right to exclude others from using an invention for the life of the patent in exchange for publishing detailed information.

What are the three key criteria for patentability?

An invention must meet Novelty, Usefulness, and Nonobviousness. Novelty requires the invention not be previously described in writing or not kept confidential; usefulness excludes abstract ideas; nonobviousness considers whether a person skilled in the art would be motivated to combine references with a likelihood of success.

What is a provisional patent application and how does it work?

A provisional application is not examined and cannot mature into a patent on its own. It serves as a placeholder and expires within 12 months if no action is taken, but multiple provisional filings within 12 months can be combined and converted into a regular patent application to secure an earlier priority date.

Oct 28, 2026

Upload by Aurelia