1h) US Flashcards
Types of patent
Patent only – 20 year term from filing. However, note Patent Guarantee Act may extend the term due to
patent office delays.
Patentable inventions
Novelty / Inventive step
Absolute Novelty*
Pre-filed / post published US patent application citeable for novelty and inventive step*
2. Grace Periods
One year grace period from filing date. Applies against applicants own disclosure (or from third party who
obtained the subject matter directly or indirectly from the inventor or a joint inventor)*
*US has “First Inventor to File” provisions – see US law handout for further detail.
2. Exclusion to patentability
Most things patentable. In particular, computer programs, business methods and methods of treatment are
patentable. However, recent cases have narrowed patentable subject matter: Myriad (gene sequences etc
“unchanged” from their natural state), Prometheus (diagnostic methods) and Alice (computer software).
Process for Obtaining a National Patent - filing and fees
filing and fees
Fees/other: File with the USPTO. Can file a provisional application with a filing fee to serve as a priority basis
and a compete application within 12 months. US has small entity status and micro entity status fee
reductions.
Obligation to file first with national office: Yes (strict)
Excess claim fees: Yes. Due on each independent claim over 3 ($420) and each claim over 20 ($80).
Renewal Fees: due 3½, 7½ and 11½ years from grant
Process for Obtaining a National Patent - language
Description, claims and abstract must be filed in English
Process for Obtaining a National Patent - search and exam
Search before grant: Yes
Type of examination: formal and substantive.
Time limit to request exam: Examination fee due on filing
Multiply dependent claims allowed: No – multiply dependent claims should not depend from a previous
multiple dependent claim (due to excessive claims fees becoming payable)
Prior Art Disclosure requirements: Yes IDS required within 3 months of filing, within 3 months of its
discovery, or before the first Official Action (whichever is the later), otherwise a fee is payable. Thereafter due
within 3 months of becoming aware. Strict requirement – could invalidate patent
Examination Process: No separate search. Office Action issues setting 3-month response deadline
(extendible to 6 months with fees). If objections not overcome, PTO may issue a final office action. Other
features of US examination are: restriction requirements (when multiple inventions), Requests for Continued
Examination (RCE) and appeal. See slides for more details.
Process for Obtaining a National Patent - grant
If it is decided that a patent may be granted, a notice of allowance will be sent. The issue fee is due within 3
months and the patent will issue after payment (usually within 2-4 months).
Process for Obtaining a National Patent - 3rd party challenges
See US slides for details but options include:
Post Grant Review
Inter-partes Review
Supplemental Examination
Process for Obtaining a National Patent - claiming priority
Priority can be claimed within 12 months. The certified copy of the foreign application must be filed within the
later of four months from the actual filing date of the application or sixteen months from the filing date of the
prior foreign application.
National Phase Entry From a PCT Application - time limits
- time limits (and any extensions of time) for national/regional phase entry and filing formal documents
30 months from priority. Actions required:
Request national phase entry and provide copy of the international application. Pay basic national fee
to USPTO (not extendible).
Need to also pay search fee (payable late with surcharge), examination fee (payable late with
surcharge), application size fee and additional claims fee (payable later on invitation)
File IDS within 3 months of national phase entry
The minimal requirement is to file a continuation application of the PCT based on the PCT
spec/drawings/claims. No fee (of any kind) is required, no need to submit inventor Declaration (but
this will cause a surcharge payable later), no need to record assignment, no need for Power of
Attorney. Ideally, include an IDS to spell out the bibliographic info of the application including
Applicants and inventors, and any priority claim. But even this is not required and can be fixed later.
Can amend on national phase entry. But, no need to file the preliminary amendment at the time of
filing. Can file it any time before substantive Office Action. Can even file it in response to Notice to
File Missing Parts.
No excess claim fees due on NP entry. No fee of any kind is required for a continuation. Can amend
claims in response to NTFMP, at which point, you pay what is owed in view of the amended
claims. Sort of like Rule 161/162 response.
National Phase Entry From a PCT Application - translation requirements
Translation into English required.
Translation due: 30 months from priority but if translation is not file, can file later in response to a notice sent
to the applicant (setting 2 months deadline), provided that a processing fee is paid for furnishing the
translation later
Utility models
None
Recent changes
US has signed two independent collaborative Memoranda of Cooperation establishing collaborative search
pilot programs (CSP) with the JPO and KIPO to provide consistent examination among offices and to provide
search results from two patent offices early in the examination progress. Program will run for two years with
the option to extend and applicants can petition for entry into CSP for free, potentially expediting examination.
On 24 April 2018, the United States Supreme Court, in a 7-2 decision in the Oil States vs. Greene’s Energy
Group case, upheld the constitutional validity of inter partes review (IPR) proceedings
15 June 2020: The U.S. Court of Appeals for the Federal Circuit (CAFC) has recently ruled in Uniloc USA, Inc.
v. LG Electronics USA, Inc. that if software claims are directed to improve the normal functionality of a
computer or the network platform itself, the claims cannot be considered to be abstract.
Machines cannot be named as inventors, clarified 11 May 2020.
