Patenting process Flashcards
What’s the name of the office in the USA and in Europe where patents are submitted?
US: USPTO
Europe: European Patent Office
Who submits the patent?
A patent agent, an attorney or the inventor/assignee. In the US, all applicants must be the inventors.
Which are the types of patent applications?
1) Regular (non-provisional) patent application
2) Provisional patent application (PPA)
3) Patent filed through the Patent Cooperation Treaty (PCT)
What are the types of patents? NOTE: not patent applications
1) Design
2) Plant
3) Utility - chemists are mostly concerned about utility patents.
For how long can regular (non-provisional) patents last)?
For up to 20 years.
For how long can provisional patent last?
For up to 1 year.
What’s the advantage of filing a PPA?
PPAs grant you priority in the subject matter (first to file vs. first to invent). After it but while it is still valid, you can file a regular patent application and protect your invention for total 21 years, but gets in the way of monetizing and producing immediately. PPAs are also cheaper because they do not get evaluated.
What’s the advantage of a PCT?
The PCT gives you grounds to then submit and quickly get patents in specific countries. With a PCT you cannot apply and start producing but you do get priority in the subject matter. It is important to keep in mind that, despite search and initial examination process, no patent issues from a PCT application. Applications in countries chosen by the assignee may follow after a positive decision from the PCT office.
What does a PPA need to have a filing date?
1) A written description of the invention
2) Any drawings needed to understand the invention
3) A cover sheet with information.
What is an “office action”?
Substantive communication between the examiner and the applicant.
What is classed as “prior art”?
Everything in the public domain that occurred before the application was filed and that could interfere with patentability.
Are the applicants obliged to disclose all prior art to the patent office?
Yes. Applicants must obey the duty of disclosure, submitting an Information Disclosure Statement (IDS) with all prior art that he knows as material to patentability. As well, all other material uncovered during prosecution must also be sent to the examiners as supplemental disclosed statements.
NOTE: the applicant does not have the duty of independent search.
What are restriction requirements?
A form of assertion by the PTO that the claimed matter represents more than one patentably independent and distinct invention. The examiner divides the application in groups and the applicant must choose 1 group to pursue. All other groups can be pursued in divisional applications.
What are the solutions for a PTO sending restriction requirements?
1) Accept, make selection, and continue with applications for separate groups.
2) File a petition arguing back against restriction requirements while following for selection.
What is the advantage of divisional applications?
They will have the same “filed in” date of the patent application, but must be filed in the pendancy period of the patent application.
