Trick question! There are actually three different kinds of patents available in the United States. Fortunately, the process for getting them is about the same.
Here’s a quick summary of the three kinds of U.S. patents and the basic process of applying for each.
“Utility Patent”
Utility patents are the most common type of patent and are granted for new and useful inventions or processes. These can include everything from machines and manufactured products to unique chemical compositions or production methods. To get a utility patent, inventors need to show that their invention is novel, non-obvious, and useful.
“Novelty” means the invention must be new—in other words, something that hasn’t been made public (for example, in a trade publication, in an earlier patent, in a company brochure, or in a number of other ways inventions can be disclosed). Essentially, the U.S. government only gives utility patents for original products or procedures and certain other ideas. This helps to ensure that you can’t claim that you alone own something that already exists.
“Non-obviousness” means the U.S. government won’t give a patent for obvious tweaks or combinations of existing knowledge. An invention must be a meaningful and creative improvement over what’s already out there. The invention should solve a problem in a way that the average person who works in that field wouldn’t have easily thought of.
“Utility” means the invention must be useful. While this seems straightforward, there are some exceptions to the rule. The biggest exceptions are “abstract ideas” and “products of nature.” If the invention is an abstract idea—like a mathematical formula not applied to a practical use—it probably cannot be patented.
Similarly, if your “invention” already exists in nature—like the DNA of a known bacteria—just describing or sequencing that DNA for the first time isn’t enough to make that DNA patentable.
Software inventions can also face challenges if they’re deemed to simply “computerize” existing methods that can be done with pencil and paper.
But, if you can clear these hurdles, you have a good chance of getting a patent.
Utility patents last for 20 years from the filing date, giving the inventor exclusive rights to make, use, or sell their invention during that time.
“Design Patents”
Say you created an ornamental design, shape, or appearance for a functional item: Design patents are for you!
Unlike utility patents, which focus on how something works, design patents are all about how an “article of manufacture” looks.
To qualify for patent protection, your design must be new, non-obvious, and non-functional. It can cover the shape of an item or the surface decoration on an existing item. For example, think of a stylish new shape for an automobile alloy wheel. The design doesn’t improve the car’s performance, but it’s eye-catching and might generate sales because of its great look. Another example could be a decorative floral pattern embossed on a ceramic vase. The design doesn’t change how the vase works, but it adds a unique touch that sets it apart.
When it comes to novelty and non-obviousness, the rules for design patents are similar to those for utility patents. The main difference is the non-functionality requirement. A design patent protects the aesthetic feature, not how it works. If your design is purely functional—say, you changed the alloy wheel shape entirely for the purpose of making the tires last longer—it won’t qualify for a design patent. Design patents focus on how something looks, not what it does. Intricate patterns, unique shapes, or artistic flourishes that don’t enhance functionality are great candidates for design patent protection.
If you’re granted a design patent, you’re covered for 15 years from the date it’s issued. During that time, you can stop others from making, using, or selling a product that copies your design without your permission.
“Plant Patent”
Love botany? A plant patent is a great option for anyone who breeds plants, discovers new ones, or creates a new and unique variety through asexual reproduction. This patent is only for plants propagated through methods other than seeds—for example, through use of cuttings, grafting, or tissue culture. Popular examples include ornamental plants like roses and shrubs, as well as fruit trees and vines. To qualify for a plant patent, your plant must meet three main criteria. It needs to be:
- distinct and new,
- found in a cultivated state, and
- stable.
The “distinct and new” requirement is similar to the novelty and non-obviousness criteria for utility and design patents. Essentially, your plant must bring something fresh to the table (pun intended!).
“Cultivated state” means your plant must be domesticated. A plant found in the wild—like a new type of oak tree—can’t qualify unless it’s been intentionally cultivated for several generations.
Lastly, “stability” refers to how closely plants grown from a cutting resemble the original “mother” plant. If your cuttings consistently yield nearly identical characteristics over several generations, your plant is considered stable and ready for patenting. But, if your cuttings show new or inconsistent traits from one clone to the next, your plant isn’t ready for patenting.
It’s also worth noting that plant patents don’t cover plants propagated through tubers, like potatoes or Jerusalem artichokes. While tubers are technically asexual propagative organs, they’re mainly used for food production, so they don’t qualify for this type of protection.
If your plant patent is approved, it will provide you with exclusive rights to your plant variety for 20 years from the filing date.
“Okay, but how do I get one?” — The Patent Application Process
Think of a patent application as the start of a formal negotiation with the U.S. Patent Office for your invention. You and your patent attorney work together to ensure you claim everything you’ve created. On the other hand, the Patent Office exists to stop you from claiming something already invented by someone else. This back-and-forth process is called “patent prosecution.”
“What are we talking about, here?” — Writing a complete set of claims and supporting them with a sufficient written description
There are many ways to write a patent application, depending on your goals, and there are differences between utility, design, and plant patent applications. But all patent applications must clearly define your invention to show how it’s unique from what’s already out there. This ensures your invention meets the requirements of novelty and non-obviousness.
Utility patent applications need to include a detailed written description of the invention and commonly include drawings to help make the invention easier to understand. At the end of the application, there’s a set of claims. Each claim is a single-sentence description of the invention. If the patent is granted, these claims define what the inventor actually owns—much like a deed describes a parcel of land. As patent attorneys like to say, “the written description describes the invention, but the claims claim the invention.”
That’s why drafting the claims is such an important part of the process. Claims can be short or long, packed with details, or focused on just the essentials. Some claims might highlight different aspects or features of the invention, especially if there are alternative ways to make or use it. The goal is to claim the invention in a way that clearly shows it’s new and non-obvious without adding so many required details that competitors can easily find ways around your patent claim.
Typically, utility patent applications include about 20 claims, but if needed, inventors can include more by paying additional fees to the Patent Office.
What is a “patent examiner” and what do they do?
After you file your patent application with the United States Patent and Trademark Office, it will be assigned to a patent examiner who specializes in the same type of technology as yours. The examiner’s job is to perform a prior art search to see if your invention has already been disclosed or described before. They’ll carefully compare your patent claims to the prior art, looking for similt somewhat similar, it’s very common for the examiner to issue an “office action” rejecting the claims in their initial form.
While getting an office action can feel frustrating, think of it like a counteroffer during negotiations. Patent examiners aren’t there to hand out patents—they must ensure that any patent you receive truly protects your unique invention and not someone else’s earlier work. A great way to boost your chances of success is to do your homework (or conduct prior art research) before your attorney drafts the application. This can help you assess how novel and non-obvious your invention is and allow your claims to be written in a way that avoids or stands apart from the prior art discovered during your search.
So you received an “office action” rejecting your patent claims. Now what?
Since receiving an office action is a normal part of the patent process for most inventors, the next step is to prepare a response to show how your invention is different from the prior art identified by the patent examiner.
There are two main ways to do this:
- First, you can argue that the patent examiner made an error or misunderstood part of the claims in your application that already set your invention apart from the prior art.
- Second, you can revise the patent claims by adding details or highlighting differences to make the distinctions even clearer. In many cases, you can successfully convince the patent examiner and get your application approved—though it’s not always guaranteed.
Design patent prosecution is a bit different
Design patent applications follow a similar process to other types of patents. One major difference is that because design patents protect the visual appearance of an article, the drawings are actually what defines what is protected. So, it is critical to get high quality drawings that show every side of the new design being claimed. The application also needs to include a standard description of the drawings and a single claim for “the ornamental design for an [article] as shown and described.”
Once filed, a patent examiner who specializes in design reviews the application, conducts a prior art search, and may issue an office action if there are issues—such as lack of novelty, obviousness, or, most commonly, drawing errors that make the design unclear. Just like with utility patent applications, you can then respond to the examiner’s action by either arguing your case or making updates to the drawings.
Plant patent applications are even more different
Plant patent applications begin similarly. To get started, the application needs to include a detailed botanical description of the plant, highlighting what makes it unique and different from other known plants. Clear and high-quality photos or drawings are usually required to showcase the plant’s features. The application should also explain how the plant is reproduced, focusing on asexual reproduction to ensure consistent genetics.
Once submitted, the plant patent application is reviewed by a USPTO examiner to check if it meets the requirements for a plant patent. If there are any issues, the examiner may issue an office action, and you’ll have the chance to respond and address any uncertainty or problems with the application.
Conclusion
In a nutshell, patents and the patent process are essential for protecting intellectual property and encouraging innovation. They give inventors exclusive rights to commercialize their inventions, in order to encourage innovations. Getting a patent involves detailed documentation, meeting specific criteria, and going through a thorough review by patent examiners.
While it can be a bit complex, securing a patent is an important step for innovators looking to bring their ideas to life and for businesses to secure their most valuable assets.
Lapple Ubell IP Law is an intellectual property law firm based in Irvine, California, dedicated to helping clients protect, manage, and enforce their innovations and creative assets. The firm provides strategic counsel on patents, trademarks, copyrights, and related IP matters for businesses of all sizes.
The author, Matt Lapple, is an experienced intellectual property attorney and a past-president of the Orange County Intellectual Property Law Association. If you have questions please contact Matt at matt@lappleubell.com or 949-756-4889.
