US Flashcards
What is not prior art for a US application?
Any disclosure made by the inventor up to a year before the filing date
A third party’s non-patent disclosure made between the inventor’s disclosure and the filing date of the application
Any US application filed by a third party between the inventor’s disclosure and the filing date of the application
The inventor’s patent applications filed before the filing of the application but published after
Any patent application of a third party which is filed before but published after the inventor’s effective filing date, which is, as of the effective date, commonly owned or under an obligation to assign.
When is an invention commonly owned?
Inventions from two different inventors from otherwise different companies will be deemed to be commonly owned if:
- the invention was made by someone party to a joint research agreement in effect on or before the earliest effective filing date
- the invention was within the scope of the agreement
- the application names parties of the joint research agreement
How close does the inventor’s earlier disclosure (or an intervening 3rd party disclosure) need to be to the filed application to benefit from the grace period in the US?
Identical in substance
How do multiple dependent claims in the US differ from those in Europe
(2 points)
A multiple dependent claim cannot depend from another multiple dependent claim
For the purpose of rules and fees, claims having multiple dependencies are counted as a corresponding number of singly dependent claims
What happens if there is relevant prior art for a US application post grant?
Anyone can request re-examination of a patent in light of newly discovered art.
There is a presumption of validity over any art already considered by the USPTO so consider waiting until court to raise new art to avoid such a presumption.
What is a right of a co-owner in the US?
Co-owners can independently licence a patent, unlike the default position in the UK.
