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10 Important Points to Note When Filing a Utility Patent Application in the United States

By John Richards

  1. The inventor(s), the applicant (if not an inventor) and his or her attorney and others involved in preparation or prosecution of the application have a duty of candor in dealing with the United States Patent and Trademark Office (PTO), which is specifically set out in the declaration signed by the applicant. The duty includes a requirement to advise the PTO of any prior art or other facts known to the applicant which the examiner might find are material to the examination of the patent application (for example the results of test data that contradict assertions made in the application or in arguments submitted to the examiner.
  2. The patent application must include a general description of the invention and at least one way of making and using the invention in sufficient detail that one skilled in the art can make and use the invention without having to carry out undue experimentation (some routine experimentation is permissible). Disclosure of how to use the invention is particularly important when claiming a new substance. To avoid the risk that a court may unfairly limit the scope of protection to a preferred embodiment, it is often useful to mention alternative methods of making and using the invention. It is also useful to include information on preferred or typical aspects of the invention so that if the Patent Office examination finds additional prior art of which the applicant was not aware at the time of filing and it is necessary to restrict the claims to avoid this additional prior art, there is basis in the specification for new claims to do this.
  3. Many things are patentable in the United States that may not be patentable in some other countries, including plants, animals, and methods of medical treatment. Unlike most other countries, there is no specific need for the invention to be of a technical nature to be patentable in the United States. Recent case law has, however, emphasized that natural laws, natural products that have no different properties from the properties that they possess in nature and abstract ideas are not eligible for patent protection which has made it more difficult to obtain protection for genetic material, broadly conceived business methods and diagnostic methods. Unless they involve use of a specific technique. Furthermore, when claiming new substances, unless the use is evident to one skilled in the art, it is necessary to indicate at least one credible, specific and substantial use in the specification.
  4. In order to be patentable an invention must be new, useful and not obvious. This means that it must not have been described in a publication or made publicly available anywhere in the world before filing of the U.S. application or, if priority is claimed, from the priority-founding application. It should, however be noted that disclosures by an inventor less than one year prior to the filing of the U.S. application or where priority is claimed, the priority-founding application, are excused as prior art.
  5. Naming the correct inventor or inventors is very important. The declaration signed by the inventor makes a specific point of requiring that the signer affirms that he or she is the inventor If more than one person contributed to making the invention, they may all be joint inventors. However, to be an inventor, that person must have made a contribution to the actual inventive idea. Simply suggesting that it would be good to produce something to solve a problem or carrying out steps suggested by another to produce a product or process is not usually such an inventive contribution. If two or more people have actually contributed in an inventive way, they should be named as joint inventors. In the absence of any agreement stating otherwise, joint inventors of a U.S. patent share jointly in ownership of any patent granted irrespective of the value of each contribution and each can use or license the patented invention without agreement of the other.
  6. Before a patent can be granted, the application will be examined by the PTO to see whether the invention claimed meets the requirements for its being new, useful, not obvious and properly described. However, the PTO is not infallible and even after a patent has been granted, its validity may still be challenged. This can occur in court if the patent owner seeks to enforce the patent or a third party may request the Patent Office to re-examine the patent (in which case the Patent Office will carry out a new examination of the patent taking account of any new prior art issues raised by the party requesting re- examination) or request administrative review of the patent before the Patent Trial and appeal Board in which affidavit evidence can be presented, the persons making the affidavits cross examined in a deposition and an inter partes hearing will take place before a final decision is given .
  7. Utility Patents will last for a period of twenty years from the date of filing as long as periodic maintenance fees are paid.
  8. Normally patent applications will be published eighteen months from their filing date or claimed priority and the contents of the patent office file will be open to the public from that date. Such publication can be delayed until a patent is granted if the applicant certifies that no corresponding foreign application will be filed in a country that does not itself publish pending patent applications.
  9. Instead of initially filing a full patent application, it is possible to file a provisional application. However, no priority can be claimed in a provisional application. A provisional application will not be examined by the PTO and will expire if a full application is not filed within twelve months. The filing of such an application has the advantage, however of being an application for the purposes of stopping the clock from running with respect to the terms mentioned in point 4 but delay the start of the twenty year term mentioned in point 7 for a year. On the other hand, use of such provisionals can lead to a year’s delay in the start of examination by the PTO and consequently delay the grant of a patent for a year.
  10. “Small entities” are entitled to a 50% reduction in government fees. Since March 19, 2013 a 75% reduction will apply to most government fees if the applicant qualifies as a “micro-entity”.  To qualify as a small entity, the applicant must be an individual, a non-profit organization or a corporation employing fewer than 500 employees and must not have licensed or assigned or be under an obligation to license or assign his or her rights to an entity that does not itself qualify as a small entity.  To qualify as a microentity, the applicant must qualify as a small entity and additionally either 1) have an income of less than $150,000 last year and have filed no more than four previous U.S. patent applications or 2) have assigned, licensed or be under an obligation to license or assign the invention to a U.S. institute of higher education. The requirement that the micro entity must qualify as a small entity means that the same limitations on assignment, licensing etc apply to both small and microentities.

This article is also available in Chinese.

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