Foreign Law (US)

Question 1

What comprises prior art in the US?

Answer 1

Anything publically disclosed before the inventor’s effective filing date is prior art unless subject to a grace period.

Any US patent or applications filed before, but published after, the inventor’s effective filing date is (full) prior art unless subject to a grace period exception.

Question 2

In the US, are the inventor’s own applications prior art?

Answer 2

The inventor’s own applications that have been filed, but not published, before the effective filing date are not prior art.

Similarly, a patent application of a third party which is effectively filed before, but published after the inventor’s effective filing date, and is, of the inventor’s effective filing date, commonly owned or under an obligation to assign, is not prior art.

Question 3

Scenario:

(1) Inventor discloses their invention publically
(2) A third party files a patent application to the invention
(3) The inventor files a patent application to the invention

Answer 3

In US law, any US patent application effectively filed by a third party after the inventor’s earlier public disclosure (but subject to 102(b)(1)(A) - grace period), but before the inventor’s effective filing date is not prior art.

Question 4

What is the grace period in US patent law?

Answer 4

The inventor has one year from his/her own patent or non-patent disclosure to file a US patent application without the prior disclosure being prior art.

The disclosure must have been made by the inventor or a joint inventor or by another who obtained the subject-matter disclosed directly or indirectly from the inventor or joint inventor.

(Covers willing disclosures and breaches of confidence)

Question 5

Under US patent law, what happens if a third partys’ non-patent disclosure falls within the grace period between an inventor’s disclosure and filing of a patent application?

Answer 5

The third party’s non-patent disclosure is not prior art.

Predominantely prevents re-circulation of the original disclosure document from becoming relevant.

Also prevents against independent invention of substantially the same idea, although unlikely in practice.

Question 6

Under US law, what are the provisions for joint research agreements?

Answer 6

Inventions from two different inventors from otherwise different companies will be deemed to be commonly owned for the purposes of 102(b)(2)(C) if:

(1) the invention was made by someone party to a joint research agreement in effect on or before the earliest effective filing date;
(2) the inventionw was made within the scope of the agreement; and
(3) the application names parties of the joint research agreement.

(If the subject-matter was developed as part of a joint research agreement, then the same exclusions to prior art by the same applicant apply)

Question 7

Under US law, what is the effective filing date?

Answer 7

The effective filing date of a US patent application is the actual filing date, unless the application is entitled to a claim to an earlier filing date under priority claims, provisional filings, continuations, divisionals, or PCTs.

Question 8

What is the inventive step provision in US patent law?

Answer 8

A patent for a claimed invention can’t be obtained, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

NB a patent documents filed before, but published after your application (by a third party) will be relevant for novelty AND inventive step.

Question 9

Under US law, what are the formal requirements for the description?

Answer 9

The specification shall contain a description of the invention,

and of the manner and process of making it and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains [clarity/sufficiency] to make and use the same,

and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention (NB best mode has to be disclosed, but not necessarily identified).

Question 10

What are the formal requirements regarding claims under US law?

Answer 10

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject-matter which the inventor or a joint inventor regards as the invention.

A claim may be written in independent or, if the nature of the claim admits, in dependent or multiple dependent form.

A claim can describe the performance of a function without recital of supporting structures, but is interpreted in light of the supporting structures found in the description.

Question 11

Are multiple-multiple dependent claims permitted under US law?

Answer 11

No, a multiple dependent claims cannot depend on another multiple dependent claim.

Question 12

Can you claim priority under US law?

Answer 12

Yes, applications filed in foreign countries which affords similar privileges as a US application or ina WTO member country has the same effect as if a US application has been filed on the priority date,

if the US application is filed within 12 months from the earliest filing date.

The 12-month period may by extended by an additional 2 months if the delay in filing the application in the US was unintentional.

Question 13

What is the deadline to declare priority for a US patent application?

Answer 13

Must declare priority within (the earlier of) four months from filing or 16 months from priority. This declaration can be made late with the payment of a surcharge, if the failure to declare within the specified period was unintentional.

(NB currently unclear if the late filing provision under 119(a) can be used concurrently with this)

Question 14

Does the USPTO require certified copies of priority documents?

Answer 14

The USPTO may require a certified copy.

Question 15

Under US law, is it possible to claim priority from an application that is not a true first filing?

Answer 15

Yes, provided that the first filing was not published, left no rights outstanding and was not previously subject to a priority claim.

Question 16

What are inventor’s certificates under US law?

Answer 16

It is possible to claim priority from inventor’s certificates (these don’t exist in EPO/UK, but do in certain jurisdictions)

Question 17

What are US provisional applications used for?

Answer 17

A US or PCT(US) application that was previously disclosed in a provisional US application can have the original filing date if filed within 12 months, and makes reference to the provisional, providing that the filing fee for the provisional was paid.

(Provisional applications automatically expire after 12 months - they are cheap alternatives to get a filing date and patent-pending status, without the strict requirements of a full patent application. They never publish, but can be converted into non-provisional applications).

Question 18

Under US law, what are continuation applications?

Answer 18

A new patent that names the same inventor(s) as a prior application can have the same priority date if the new application is filed before grant or loss of the prior application, and provided the new application contains a specific reference to the prior application, or is amended to do so during prosecution.

• Prior application cannot be a provisional US application
• The prior application doesn’t have to be the original, so you can have strings of continuations.
• Two types:
  
  • Continuation - a re-filing of the same subject-matter; has the same priority date; cannot be used as a priority application.
  • Continuation-in-part - re-filing of the same subject-matter with additional matter; claims to original matter are entitled to original priority date; claims relating to new matter entitled to date of filing of CIP itself; new matter can be used as basis for a priority claim

Question 19

Under US law, what are divisional applications?

Answer 19

If two or more distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions.

If the other invention is filed as a divisional application, it will also be entitled to the original priority date.

(Divisionals are just for addressing unity objections)

NB cannot claim priority from a divisional application

Question 20

What are the options to oppose a US patent?

Answer 20

Post-Grant review is possible in the US (9 month window post-grant). It is not practicable in many cases owing to the high cost - the official fee alone is about $27,000.

After that there is an Inter Partes Review, which is similar to revocation proceedings. The official fee is even higher at about $35,000.

Litigation in US courts is also an option, but this is even more expensive.

Question 21

Does the US have unregistered design rights?

Answer 21

There are unregistered designs under US law, but the US is not a signatory for reciprocal protection.

An unregistered US design has no protection in the UK and vice-versa.