Important Points To Keep In Mind When Filing A Utility Patent In The United States
- In dealing with the United States Patent and Trademark Office (USPTO), the inventor(s), the applicant (if not an inventor), his or her attorney, and others involved in the preparation or prosecution of the application have a duty of candor, which is expressly stated in the declaration signed by the applicant. The requirement includes notifying the PTO of any prior art or other facts known to the applicant that the examiner may find material to the examination of the patent application (for example, test data results that contradict assertions made in the application or arguments submitted to the examiner).
- The patent application must provide a general description of the invention as well as at least one method of manufacturing and utilizing the invention that is detailed enough that a person skilled in the art can create and use the invention without unnecessary experimentation (some routine experimentation is permissible). When claiming a new material, it is very necessary to disclose how to use the invention. Alternative ways of creating and using the invention are frequently mentioned to reduce the danger that a court will unduly limit the scope of protection to a chosen embodiment. It’s also a good idea to include information on preferred or typical aspects of the invention so that if the Patent Office examines the application and discovers additional prior art that the applicant was unaware of at the time of filing, it’s necessary to restrict the claims to avoid this additional prior art, there’s a foundation in the specification for new claims.
- Many things, including plants, animals, and medical treatment approaches, are patentable in the United States but may not be in other nations. Unlike most other nations, the United States does not require the innovation to be technical to be patentable. Recent case law has emphasized that natural laws, natural products with no properties other than those found in nature, and abstract ideas are not eligible for patent protection, making protection for genetic material, broadly conceived business methods, and diagnostic methods more difficult to obtain. Unless they require the application of a certain 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.
- An invention must be novel, useful, and not obvious to be patentable. This implies it must not have been detailed in a publication or made publicly available anywhere in the world previous to the filing of the United States application or if priority is claimed, the priority-founding application. However, the prior art is excused for inventor disclosures made less than one year previous to the filing of the US application or, if priority is claimed, the priority-founding application.
- It is critical to identify the correct creator or inventors. The inventor’s statement includes a specific requirement that the signer affirms that he or she is the invention. If more than one individual worked on the innovation, they could all be considered joint inventors. To be considered an innovator, however, that person must have contributed to the actual original idea. Simply recommending that something should be made to remedy a problem or following methods given by someone else to make a product or process is not usually considered a creative contribution. If two or more people have made an inventive contribution, they should be listed as joint inventors. Unless otherwise agreed, joint inventors of a U.S. patent share joint ownership of any patent awarded, regardless of the value of each contribution, and each can use or license the patented invention without the consent of the other.
- Before a patent may be granted, the PTO will review the application to see if the claimed invention fits the criteria of being new, useful, not obvious, and adequately disclosed. However, the PTO is not infallible, and a patent’s validity can be disputed even after it has been granted. 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 an 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 parties hearing will take place before a final decision is given.
- As long as monthly maintenance costs are paid, utility patents will last for twenty years from the date of filing.
- Normally, patent applications are published eighteen months after they are filed or claimed priority is claimed, and the contents of the patent office file are exposed to the public from that date. If the applicant certifies that no matching overseas application will be filed in a country that does not publish ongoing patent applications, the publication can be deferred until the patent is issued.
- Instead of filing a full patent application at first, a provisional application can be filed. A Provisional application, on the other hand, cannot claim priority. The PTO will not investigate a provisional application, and it will expire if a full application is not filed within twelve months. However, submitting such an application has the advantage of being an application to stop the clock from ticking on the terms specified in point 4, while delaying the commencement of the twenty-year term mentioned in point 7 for a year. On the other hand, the use of such Provisionals can cause a year’s delay in the start of the PTO’s examination and, as a result, a year’s delay in the grant of a patent.
“Small entities” are eligible for a 50% fee reduction from the government. Most government fees have been reduced by 75% since March 19, 2013, 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 with fewer than 500 employees, and the applicant must not have licensed or assigned, or be under any obligation to license or assign, his or her rights to an entity that does not qualify as a small entity.
To be considered a micro-entity, an applicant must be a small entity with an income of less than $150,000 in the previous fiscal year and 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. Because the micro-entity must meet the same criteria as a small entity, both small and micro entities are subject to the same restrictions on assignment, licensing, and other matters.