Patent (Utility, Design and Provisional Applications)

The federal grant that lets an inventor exclude others from making, using or selling an invention for a fixed term - what can be patented, the novelty and non-obviousness tests, the difference between a utility, design and provisional application, and why the first-to-file rule makes the filing date everything.

Looking for a lawyer rather than a definition? Skip to the state-by-state list of law firms for this.

What it means

A patent is a right granted by the United States Patent and Trademark Office to exclude others from making, using, selling, offering to sell or importing an invention for a term fixed by statute, in exchange for a public disclosure of how it works. It does not give the holder a right to practice the invention - an improvement on someone else's patented device may itself be patentable and still infringe the earlier patent - and it is enforced only by the holder, in a civil suit, usually in federal court. Three kinds are issued: a utility patent for a new and useful process, machine, article of manufacture or composition of matter, or an improvement of one; a design patent for the ornamental appearance of an article; and a plant patent for a new asexually reproduced plant variety.

To be patentable an invention must be eligible subject matter - laws of nature, natural phenomena and abstract ideas are excluded, which is where most software and diagnostic-method disputes are fought - and must be new, useful and non-obvious. Novelty is judged against the "prior art": everything patented, published, sold or publicly used anywhere before the application's effective filing date, subject to a short grace period for the inventor's own disclosures. Since the America Invents Act, the United States awards the patent to the first inventor to file, not the first to invent, so a public demonstration, a sales pitch or a journal article before filing can destroy the inventor's own rights. The application must describe the invention in enough detail that a skilled person could make and use it, and ends with numbered claims that define exactly what is protected; the examiner's objections and the applicant's responses over the following months or years are called prosecution.

A provisional application is a lower-cost placeholder: it is not examined and never becomes a patent by itself, but it secures a filing date and lets the applicant say "patent pending" for a period fixed by statute, within which a full non-provisional application claiming its date must be filed. It is only as good as its disclosure - a provisional that does not describe what the later claims cover gives them no priority. Infringement is judged by comparing the accused product to the claims, and remedies include an injunction, damages of at least a reasonable royalty, and in willful cases enhanced damages; a defendant may attack the patent's validity in court or in an administrative review at the Patent Office.

Where this comes from

When people hire a lawyer for this

The two conversations to have with a patent lawyer or registered patent agent happen before anyone else hears about the invention: whether it is worth patenting at all against the cost of prosecution and the alternative of keeping it a trade secret, and how to file something - even a provisional - before the first demonstration, sale or publication. An inventor who has already disclosed publicly should ask immediately whether the grace period still allows a filing. A business that receives a letter accusing it of infringement should not respond on its own; the letter may be an invitation to license, a prelude to suit, or a claim the sender cannot support, and the response shapes all three.

Worried about the cost? A lawyer can be hired for one part of a case only (limited-scope representation), may be paid from what a claim recovers (contingency fee), or may be free through a pro bono program or legal aid; a court can also waive its own filing fees.

Find a lawyer for this in your state

Choose your state to see Patents law firms in the city where we list the most; your city may be under “other cities”, A to Z. A state marked “Intellectual Property” has no Patents listing yet and opens the broader page.

• Alabama (Birmingham)
  +1 other city

  • Montgomery
• Arizona (Chandler)
  +6 other cities

  • Gilbert
  • Glendale
  • Mesa
  • Phoenix
  • Scottsdale
  • Tucson
• Arkansas (Little Rock, Intellectual Property)
• California (Anaheim)
  +19 other cities

  • Bakersfield
  • Chula Vista
  • Fontana
  • Fremont
  • Irvine
  • Long Beach
  • Los Angeles
  • Oxnard
  • Riverside
  • San Bernardino
  • San Diego
  • Santa Ana
  • and 7 more with fewer listed firms
• Colorado (Aurora)
  +2 other cities

  • Colorado Springs
  • Denver
• Connecticut (Bridgeport)
• Delaware (Wilmington)
• District of Columbia (Washington)
• Florida (Hialeah)
  +5 other cities

  • Jacksonville
  • Miami
  • Orlando
  • St Petersburg
  • Tampa
• Georgia (Atlanta)
• Hawaii (Honolulu)
• Illinois (Chicago)
• Indiana (Fort Wayne)
  +1 other city

  • Indianapolis
• Iowa (Des Moines)
• Kansas (Kansas City)
  +1 other city

  • Wichita
• Kentucky (Lexington)
  +1 other city

  • Louisville
• Louisiana (Baton Rouge)
  +1 other city

  • New Orleans
• Maine (Portland)
• Maryland (Baltimore)
• Massachusetts (Boston)
• Michigan (Detroit)
• Minnesota (Saint Paul)
• Mississippi (Jackson, Intellectual Property)
• Missouri (Kansas City)
  +1 other city

  • St. Louis
• Montana (Billings)
• Nebraska (Lincoln)
  +1 other city

  • Omaha
• Nevada (Henderson)
  +3 other cities

  • Las Vegas
  • North Las Vegas
  • Reno
• New Hampshire (Manchester)
• New Jersey (Jersey City)
  +1 other city

  • Newark
• New Mexico (Albuquerque)
• New York (Buffalo)
  +2 other cities

  • New York City
  • Rochester
• North Carolina (Charlotte)
  +5 other cities

  • Durham
  • Fayetteville
  • Greensboro
  • Raleigh
  • Winston-Salem
• Ohio (Cincinnati)
  +3 other cities

  • Cleveland
  • Columbus
  • Toledo
• Oklahoma (Oklahoma City)
  +1 other city

  • Tulsa
• Oregon (Portland)
• Pennsylvania (Philadelphia)
  +1 other city

  • Pittsburgh
• Rhode Island (Providence, Intellectual Property)
• South Carolina (Columbia, Intellectual Property)
• South Dakota (Sioux Falls)
• Tennessee (Memphis)
  +1 other city

  • Nashville
• Texas (Arlington)
  +12 other cities

  • Austin
  • Corpus Christi
  • Dallas
  • El Paso
  • Fort Worth
  • Garland
  • Houston
  • Irving
  • Laredo
  • Lubbock
  • Plano
  • San Antonio
• Utah (Salt Lake City, Intellectual Property)
• Vermont (Burlington)
• Virginia (Richmond)
  +3 other cities

  • Chesapeake
  • Norfolk
  • Virginia Beach
• Washington (Seattle)
  +1 other city

  • Tacoma
• Wisconsin (Madison)
  +1 other city

  • Milwaukee
• Wyoming (Cheyenne, Intellectual Property)

Related terms

Other entries in the same area of law, each written from the same primary sources.

• Copyright Registration and InfringementHow copyright arises automatically in an original work and what registration with the Copyright Office adds - the right to sue, statutory damages and fees - together with the elements of an infringement claim, the exclusive rights it protects, and the remedies and defenses on both sides.
• DMCA Takedown Notice and Counter-NoticeThe notice-and-takedown procedure under which a copyright owner asks a website, host or platform to remove infringing material, the platform removes it to keep its immunity, and the person who posted it may file a counter-notice to have it restored - with the penalties for a knowingly false notice on either side.
• Fair UseThe defense that allows limited use of a copyrighted work without permission for purposes such as criticism, commentary, news reporting, teaching, scholarship and research - the four statutory factors, what "transformative" has come to mean, and why no rule of thumb about word counts or percentages is the law.
• Right of PublicityThe right to control the commercial use of one's own name, likeness, voice and other identifying features - a state-law right that varies in who holds it, whether it survives death, and how it yields to news, commentary and expressive works under the First Amendment.
• Trade SecretInformation that derives value from not being generally known and that its owner takes reasonable steps to keep secret - formulas, customer lists, processes, source code - protected indefinitely under state law and a federal civil statute for as long as it stays secret, and lost the moment it does not.
• Trademark Registration and Likelihood of ConfusionHow a brand name, logo or slogan becomes a federally registered trademark - the distinctiveness spectrum, the use-based and intent-to-use applications, the examination and opposition process - and the likelihood-of-confusion test that decides both whether a mark can register and whether someone else's use infringes it.
• Trademark vs CopyrightTwo different protections that are constantly confused: one protects what identifies your source, the other protects what you created.
• Work Made for HireThe rule that makes an employer, not the creator, the author and owner of copyright in work created by an employee within the scope of employment - and the much narrower rule for freelancers, under which a commissioned work belongs to the client only if it falls within listed categories and a signed agreement says so.

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