US patents Flashcards
How do registered designs differ in the US from UKRD
- they are evaluated more like patent applications (with examination)
- they last 15 YEARS with no renewal
- similarly have 12 M grace period, but must be filed in the IS within the grace period
What are patentable inventions in the US
35 USC 101
The inventor or discoverer of any new and useful process, machine, manufacture or composition of matter or any new and useful improvement to any of these can have a patent providing conditions are met
What are exceptions in US law for something being classified as prior art
- The inventor has ONE YEAR from their OWN patent or non-patent DISCLOSURE to file a US application WITHOUT that disclosure being prior art
- Any third party’s NON-PATENT disclosure in the year between an inventor’s disclosure and filing a US application is NOT prior art
- The inventor’s OWN prior applications that have been filed, but not published before the effective filing date are NOT prior art
- Any US patent application effectively filed by a third party after the inventor’s earlier public disclosure, but before the inventor’s effective filing date is NOT prior art
- Any patent application of a third party which is effectively filed before but published after the inventor’s effective filing date, and is, as of the inventor’s effective filing date, commonly owned or under obligation to assign, is NOT prior art
What status do US applications filed before but published after an US application have
Unless subject to an exception they are FULL PRIOR ART
What is a confidential offer for sale considered as in the US
a disclosure
What must an application be to be able to use a grace period in the US
earlier disclosures must be identical in substance to the filed application (i.e. novelty style comparison)
What specific rules are there for claims in the US
- cannot have multiple dependent claims (if you do they are counted as extra claims)
- claims are interpreted in light of supporting structures in the description and their equivalents
What are the various types of US applications
provisional applications
regular filings
national phases
continuations (not adding matter )
continuations in part (adding matter with different priority date)
divisionals (i.e. post restriction requirement)
What were the big changes AIA gave to patents
became a first to file not first to invent system (in line with EP/UK)
inventor no longer has to be the applicant, can now be an assignee (but inventor declarations are still required)
What is different about joint ownership of patents in the US
Can independently licence a patent / application
Are there any reciprocal arrangements for unregistered designs between the US and UK
NO
Are there any limitations on post grant amendments in the US
Can extend claim scope in first two years with a “broadening reissue”
When should examination/search be requested in the US
No separate search and examination in the US. Examination is automatic
