In the United States, there are four types of patent applications:

1. Provisional patent applications (PPA)- low cost option that allows one year to file a costlier non-provisional patent application
2. Utility patent applications- which relate to a new or improved machine, article of manufacture, a composition of matter, or a process
3 . Design patent applications- which relate to new, useful, and ornamental or aesthetic article of manufacture
4 . Plant patent applications- which relate to a new asexually reproducible variety of plant

Additionally, there are two types of international patent applications:

5. Paris Convention patent applications
6. PCT patent applications

Provisional patent applications (PPA)
Provisional patent applications (also called PPA), are a cost saving advantage over other costlier patent applications. A provisional patent application gives an inventor one year to file a non-provisional patent application, and claim benefit of the filing date of the provisional patent application. By filing a provisional patent application, an inventor can label an invention as "patent pending," and explore whether filing a non-provisional patent application is a good idea. A non-provisional patent application can claim priority to the filing date of a PPA only if it complies with the legal requirements of 35 USC Section 112 which states:

"The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertain, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out his invention."

It is thus vitally important to ensure that a provisional patent application fully describes all features and benefits of an invention, and additionally explains how to make a working version of the invention. A common misconception is that a provisional patent application is always a "quick" patent application. While less time is spend drafting claims and providing alternative forms of the invention, a provisional patent application must describe all of the features and benefits of an invention to allow subsequent patent applications to claim the benefit of the priority filing date of the provisional patent application. A provisional patent application is not examined by the USPTO, and a patent will not issue from a provisional patent application.

A reasonably priced law firm charges approximately $1500 (plus USPTO filing fee for a small entity of $80) for the preparation of a basic provisional patent application.

Utility patent applications
A regular non-provisional patent application, also called a utility patent application, is examined by the USPTO and can lead to an issued patent. The invention must be new, useful and nonobvious. A utility patent application can claim benefit of the filing date of a provisional patent application if the provisional application fully describes the invention later described in the utility patent application. As a utility patent application has a required formal format and contains claims which define the extent of your invention, it is recommended to utilize a patent professional when preparing and filing a utility patent application. A utility patent is valid for 20 years from the filing date of the application.

A reasonably priced law firm charges approximately $3500 (plus USPTO filing fee of $385 for a small entity) for the preparation of a basic patent application, including drafting claims. More complicated inventions will require additional work, which should be be discussed before the attorney begins drafting your utility patent application. A fair patent law firm, and any patent drafting company, should always discuss additional costs before they arise.

Design patent applications
A design patent application is used for a new, useful, and ornamental or aesthetic article of manufacture. A design patent application contains a set of drawings that show your invention from all sides. Unlike a utility patent application, which relies upon a written description and claim to define the invention, a design patent application focuses more on drawings to describe the scope and features of an invention. A design patent is issued for the design itself, not for any features or benefits described by the drawings. A design patent is valid for 14 years from the date of issue of the patent.

An average cost for a basic design patent costs approximately $800 (plus $170 USPTO filing fee for a small entity) for the preparation and filing of a basic design patent application. A design patent application includes drawings that show all ornamental aspects of the invention, which is usually six drawings (four side views, along with top and bottom views). Usually, if you cannot provide the necessary drawings, the law firm can arrange to have the drawings prepared for you.

Plant patent applications
A plant application is similar to a utility patent application, except that it is for asexually reproducible plants. These include plants that reproduce by root cuttings, grafting, rhizomes, bulbs and other methods. A plant patent application requires that the application must contain a complete botanical description of the plant, and the characteristics which distinguish that plant over known related plants. A plant application is valid for 20 years from the filing date of the application.

Paris Convention patent applications
Within one year of filing a patent application in the United States, the Paris Convention allows the filing of patent applications in directly in other countries and claim the benefit of the priority of filing date in the United States. Full applications are filed in these countries, and examination of the application generally is not deferred. Paris Convention patent applications are often used when an applicant only wants to file in several countries, or if a desired country is not a member of the PCT. The costs of filing and length of patent examination varies by country.

PCT patent applications
A Patent Cooperation Treaty (PCT) application must be filed within 1 year of filing a patent application in the United States. A PCT application is first briefly examined on an international level, and thus allows the applicant to delay costly filings in other countries. A PCT patent application can delay filing a patent application in other countries for up to 30 months from the original filing date in the United States. Some countries additionally allowed for deferred examination of a PCT patent application, which can defer examination for another 3-4 years.

PCT applications provide several benefits to applicants. First, it allows the applicant to delay the large cost of filing applications around the world. Second, it allows the applicant two opportunities for international examination, which will give an early indication of patentability. Third, it allows the applicant to see how their patent application does in the United States. Grant of a patent in the United States does not guarantee patentability in other countries, however it does give an indication of patentability. Fourth, some countries will allow a granted United States patent to be filed as an amended patent application through the PCT, thus savings costs and time in obtaining a patent in those countries.

An average law firm charges approximatel $500 (plus a variable USPTO filing fee) to prepare a basic PCT patent application from a full utility patent application. Preparing a PCT patent application from a provisional patent application will require additional time to satisfy statutory requirements, and should be fully discussed before preparing you application.

InventionPatent.Net- An intellectual property information resource for patents, trademarks, and copyrights, written and edited by Owen Smigelski, Esq.

As in-house counsel, I cannot provide legal advice or information to individual clients.
I recommend consulting with:
Raymond Wagenknecht
Biotech Beach Law Group PC
Toll Free: 886-875-9562
Tel: 619-238-1179
www.biotechbeachlaw.com