USA (General)

Question 1

What increases/reduces a patent term under PTA and when is the adjusted term calculated?

USA

Answer 1

The patent term will be increase if the USPTO fails to

• issue a first office action within 14 months of filing;
• issue an office action within four months of an applicant submitted a response;
• issue the patent within four months of payment of the issue fee;
• issue a patent within three years of the actual filing date of the application.

The patent term is also increased for delays caused by any secrecy orders or successful appeals.

The patent term is reduced if the applicant uses any extensions when responding to an office action.

The increases/reductions are totted up and the applicant is notified of the new term along with the notice of allowance.

Question 2

What is patent term extension for FDA-regulated drugs and medical devices?

USA

Answer 2

A five-year term extension can be applied for within 60 days of the later of marketing approval and patent grant, assuming that the remaining term at that point is not more than 14 years.

Question 3

When are renewal fees due?

USA

Answer 3

3-3.5 years, 7-7.5 years and 11-11.5 years after grant.

Each fee is payable up to 6 months late with a surcharge.

Question 4

What is small entity status?

USA

Answer 4

Claiming small entity status results in a 60% reduction in various official fees.

Small entity status is available if each applicant is an individual; a business with less than 500 employees; or a non-profit organisation.

Small entity status is only valid if the applicants have not assigned/licensed any rights in the invention to a non-small entity, and are non under any contractual or legal obligation to do so. (NB compulsory licensing to a federal agency as a condition of government funding does not count.)

NB if such a licence is given part way through prosecution then small entity status is lost retroactively, and the discount on past fees will need to be paid.

An incorrect declaration of small entity status could result in the patent being unenforceable.

Question 5

What is micro entity status?

USA

Answer 5

Claiming micro entity status results in an 80% reduction in various official fees.

It is only available if the conditions for small entity-status are met in addition to one of the following two sets of conditions.

1. Each named applicant/inventor has not been named as an inventor on more than four previously filed US applications (not including provisionals); in the calendar year preceding the year in which the application fee was paid , each named applicant/inventor had a gross income no more than 3x the median household income of that calendar year; and there can be no obligation to assign, licence, convey or grant a right in the invention to an entity which does not meet this income requirement, and this cannot have already been done either.
2. The applicants are mainly employed at a US institute of higher education and have assigned or are obligated to assign a licence or ownership interest to that institute.

Question 6

Are business methods, computer programs and methods of treatment excluded?

USA

Answer 6

No - all allowed.

Question 7

Is there a grace period?

USA

Answer 7

Yes - 12 months before priority for the inventor’s own disclosures or disclosures derived from his disclosure.

Independent disclosures made after the inventor’s original disclosure are also ignored. For example, imagine A and B develop an invention independently, and on Monday A discloses, on Tuesday B discloses, and on Wednesday they both file. A’s filing is novel because A’s falls within the grace period and B’s disclosure, although independent of A’s disclosure, was made after A’s disclosure. B’s disclosure, on the other hand, is not novel over A’s disclosure, because it predates B’s own disclosure.

Question 8

Explain the foreign filing restrictions.

USA

Answer 8

If the invention was made in the US, any part of the disclosure in a patent application is from the US, or any work done in the US appears in the patent specification, then the application must be first filed in the US.

Foreign filings cannot be made until 6 months after the US filing, unless a foreign filing licence is obtained.

NB breaking these rules is a criminal offence and the resulting patent may be unenforceable.

Question 9

What are provisional applications?

USA

Answer 9

These are cheap applications which lapse automatically after 12 months (and therefore never publish) but are useful for securing an early priority date.

They must contain a specification and drawings but not an oath/declaration. There is also a filing fee. The specification must be enabling.

It’s possible to convert a provisional application into a complete application but typically it’s used as a priority document instead.

Question 10

What is the oath/declaration needed for a complete application?

USA

Answer 10

It is a statement that the inventors consider themselves to be the original and first inventors of the invention, and it must be signed by all the inventors before allowance.

Question 11

What are the priority deadlines?

USA

Answer 11

Priority must be claimed by the later of four months from filing and 16 months from priority.

Priority documents can be filed any time before payment of the issue fee.

Question 12

Explain the claim fees.

USA

Answer 12

Claim fees are due on independent claims over three and on claims over 20.

Extra fees are also due for multiple dependent claims (MDCs)

NB MDCs cannot be used as basis for another MDC. For example, if Claim 3 depends on Claims 1 and 2, nothing can depend on Claim 2.

Question 13

Are there any rules regarding the claims?

USA

Answer 13

Multiple independent claims in the same category are allowed. Multiple independent claims are allowed and recommended because of estoppel issues.

MDCs cannot be used as basis for other MDCs. For example, if Claim 3 depends on Claims 1 and 2, nothing can depend on Claim 3 as well as on another claim.

Features defined in a claim must be shown in a figure.

No omnibus claims.

Question 14

When are applications published?

USA

Answer 14

18 months from priority like normal.

The applicant can request that their application is not published if they are are not foreign filing in a different country which also does 18-month publication. If they do this and then foreign file they must tell the USPTO within 45 days of the foreign filing date otherwise the US application will be abandoned, unless the delay can be shown to be unintentional.

Question 15

What is a restriction requirement?

USA

Answer 15

Equivalent to a lack of unity objection.

The USPTO will require that the application is restricted to only one invention. The applicant must elect the subject matter to be examined.

The applicant can request that the objection be withdrawn, and make a provisional election at the same time in case the Examiner is not convinced. Alternatively, a divisional could be filed with regard to the unelected subject matter.

Question 16

What is an election of species?

USA

Answer 16

If the Examiner finds the claim scope to be too broad to search and examine, he can ask the applicant to elect a particular species (i.e., a certain class of embodiments) that falls within the claim scope. Once elected, the Examiner will examine that species and if he finds it to be allowable, he will go go back and evaluate the claims as a whole.

For example, a claim to a vehicle might be too broad, and in response to an election of species requirement the applicant could give the example of a motorbike.

Question 17

How is search and examination conducted?

USA

Answer 17

There is no separate search and examination. You just get a series of office actions. The second office action may be made final if the previous grounds of rejection are maintained or if new grounds of rejection are necessitated by the previous response.

Each deadline is three months, extendable as of right by a further three months with payment of increasing monthly fees. Deadlines can be extended retroactively.

The Examiner can be interviewed whenever.

Responses to an office action must explicitly address every objection raised therein.

Question 18

Explain the rules on amending the application.

USA

Answer 18

The rules on added matter are relaxed although technically you still can’t add matter.

The application can be amended as of right before the first office action, in response to the first office action, or in response to any other non-final office action so long as the amendments are restricted to the objections in the office action.

Amendments are discretionary if filed after allowance.

Question 19

What options are there for responding to a final office action?

USA

Answer 19

The most typical response is to just file an RCE and carry on prosecution.

However, under AFCP (after final consideration pilot) 2.0, as long as at least one independent claim is amended with a non-broadening amendment, the fee is paid, and the applicant states that he willing to interview the Examiner, the Examiner will consider the response.

[NB AFCP does not count as a response as such and therefore the deadline for responding to the final office action still stands - hence it is best to use AFCP early. AFCP is supposed to be quick - in between a standard response that offers no new arguments and a full blown response with an RCE. The Examiner will therefore reject it if he thinks the amendments require too much new searching. If there’s only a bit of searching required, he might do it before allowing or rejecting the amendment. NB rejection comes in the form of an “advisory action”. How your AFCP is treated really just comes down to the Examiner.]

You can also file a continuation application and try again (with the same claims, the claims as filed, or amended claims), hoping to get a new examiner.

You can also file a notice of appeal within the response deadline along with a pre-appeal brief request. This prompts a review of the application by a PTAB (the possibility of this could scare the original examiner into granting the application). An appeal brief must be filed within 2 months of the notice of appeal, extendable by five months with payment of fees.

Finally, if the Examiner said in the final office action that he would grant the application if certain amendments were made, those amendments could be made in response.

Question 20

Why is an IDS necessary?

USA

Answer 20

Everyone involved in prosecution and filing has a duty of candour and good faith, which results in a duty to disclose to the USPTO anything relevant to patentability that they are aware of.

Failure to do this could result in an invalid patent.

Question 21

What must an IDS include?

USA

Answer 21

A list of all relevant material.

A copy of each item on the list. For US patents and US published applications, the application/patent number can be provided instead.

An English translation of, or at least a concise summary of the relevance of, a non-English item must be provided if available to the applicant. An English language examination report describing a non-English item’s relevance may suffice as a concise summary. A translation of the abstract may also suffice.

It is good practice to file foreign examination reports in any case.

Question 22

What are the deadlines and fees for filing an IDS?

USA

Answer 22

An IDS can be filed at any time before the issue fee is paid. But depending on when it is filed, a fee may be payable and/or a certification that the documents in question have not been known about for more than three months may be required.

Up until the later of three months from filing or until the first office action: no fee or certification.

Between first office action and close of prosecution: fee or certification.

After notice of allowance but before issue fee is paid: both fee and certification.

If you need to file an IDS between payment of the issue fee and issue itself, then you must file an RCE and file the IDS with certification, requesting consideration under QPIDS (quick path IDS). The Examiner will consider the new references and, if he thinks the new references are fine and do not necessitate the reopening of prosecution, he will refund the RCE fee and all is good.

Question 23

When does the patent grant?

USA

Answer 23

The patent issues 2-4 months from payment of the issue fee. Payment itself must be within three months of the notice of allowance (non-extendible).

Question 24

What is the difference between an continuation and a divisional?

USA

Answer 24

A continuation is starting again. It’s usually filed in response to a final office action.

A divisional is usually filed in response to a restriction requirement.

Otherwise they are pretty much the same.

However, note that with a continuation you can get an “obvious-type” double patenting objection over the parent if it remains live, whereas you naturally wouldn’t with a divisional since it’s directed to a different invention as the parent.

Question 25

What are the two types of double patenting objections?

USA

Answer 25

The “same-invention” type and “obvious” type. The former is what we have in the UK but the latter is different, see below. They both only apply if the two applications in question have the same inventor and applicant.

If one application is to a different invention than a first but the differences between them are unpatentable, then you will get an obvious-type objection,
If this happens, then rather than letting one of them be refused, a terminal disclaimer could be used which limits the term of one of them so it expires at the same time as the other one.

Question 26

What is continuation in part?

USA

Answer 26

A continuation in part is a continuation that can add new matter. It’s used when an invention has been improved and results in an application with partial priority dates. It otherwise has the same rules as a continuation.

Question 27

When is the deadline for requesting examination?
(USA)

Answer 27

30 months from priority.