Obtaining a Patent in America

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There are two principal ways to go about obtaining a patent in America.  One way is to file a patent application directly with the U.S. Patent Office (USPTO), perhaps as a first filing or as a ‘convention’ application filed within 12 months of the filing date (i.e. priority date) of the earliest filed patent application for the invention (e.g. an Australian provisional, standard or innovation patent application).

The other way is to enter the national phase in the U.S. based on an International (PCT) Patent Application.  The ordinary deadline to file a national phase application in the U.S. is 30 months from the priority date of the International (PCT) Patent Application, the priority date usually being the filing date of the basic provisional patent application.  This deadline cannot be extended in the U.S. so it is imperative that this deadline not be missed.

Application fees are based, in part, on the number of claims (i.e. excess claim fees are charged for each claim in excess of the first 20 claims).  For national phase applications it is possible to reduce or avoid these excess claim fees by amending the specification to reduce the number of claims in the application, at the time of filing.

Official fees in the U.S. are determined on the basis of the size of the entity that it owner of the patent or the patent application.  There are three categories, regular entity, small entity or micro entity.

Small Entity and Micro Entity Status

A small entity is entitled to a 50% reduction in most U.S. Patent Office fees.  An entity qualifies for small entity status if it is a not-for-profit organization (e.g. a University) or, together with its affiliated entities, does not have more than 500 employees and the invention has not been assigned or licensed to a non-small entity.

A micro entity is entitled to a 75% reduction in U.S. Patent Office fees. An entity qualifies for micro entity status if it, or the inventor(s), have not filed more than 4 previous patent applications in the U.S., and has not earnt more than approximately US$160,000 in the previous calendar year.

Grace Period

There is a 12 month grace period for public disclosure before filing a U.S. Patent Application.  This grace period applies to disclosures made by, or on behalf of, the patent applicant or unauthorized disclosures made by someone who obtained the invention from the applicant.  The purpose of the grace period it to allow a patent applicant to obtain valid patent protection despite having made an earlier disclosure inadvertently or unaware of the requirement to first file a patent application and establish a priority date.

Appointing a U.S. Patent Attorney or Agent

When filing a U.S. Patent Application a patent applicant or owner must appoint a U.S. patent attorney or agent to act on their behalf before the U.S. Patent and Trade Marks Office (USPTO).  It is mandatory for a patent applicant or owner to sign a power of attorney authorizing the U.S. patent attorney or agent to act on their behalf. Gestalt Law has a network of trusted U.S. patent attorneys and agents that can assist in representing clients before the USPTO.

What are the requirements to file a U.S. Patent Application?

Special requirements for filing a U.S. patent application are as follows:

  • power of attorney signed by the patent owner authorizing a U.S. patent attorney to act;
  • declaration signed by the inventor(s) attesting to their claim to inventorship; and
  • assignment signed by the inventor in favour of the owner or applicant (e.g. an employer).

If the U.S. patent application is a ‘çonvention’ application then a certified copy of the priority document (e.g. the provisional patent application) must be obtained and filed with the USPTO.  If the U.S. patent application is a national phase application based on a PCT application then a certified copy of the priority document will usually be transmitted by the World Intellectual Property Office (WIPO) to the USPTO Patent Office.  However, where this is not possible a certified copy of the priority document must be obtained and filed in the U.S..

A single patent application can have more than one independent claim (e.g. product, method and apparatus claims) as long as there is sufficient overlap between the claims such that practicing the claims to one invention necessarily practices the claims to the other invention, and vice versa.  In practice, this requires that the different types of claims must include the same distinguishing features and must not differ in a substantial way.

Under U.S. practice, it is improper to use multiple dependent claims.  As such, the claims of the application should be checked and, if necessary revised, to ensure they do not include multiple dependent claims.

Gestalt Law is familiar with the requirements for filing U.S. patent applications and can handle this process from start to finish.

What inventions cannot be patented in the U.S.?

Some software inventions (e.g. algorithms or a computer implemented business methods) are theoretically patentable in the U.S. although the threshold for patentability has been set quite high.  A software invention may be patentable if it involves something substantially more than generic computer implementation of an abstract idea.  A software invention may be patentable if it improves the function of a computer.  On the other hand, an invention may not be patentable if it could be carried out manually and computer implementation only makes carrying out the invention less time consuming or laborious.

Unlike in Australia, diagnostic methods are unlikely to be considered patentable in the U.S..  Although methods of medical treatment are patentable in the U.S. a defence against liability for patent infringement exists where it involves the performance of a medical activity by a medical practitioner.

Examination of U.S. Patent Applications

Search and examination fees are payable when filing a U.S. convention or national phase patent application.  Examination in the U.S. involves a consideration of the novelty and inventiveness (i.e. obviousness) of the invention as well as other criteria such as patentable subject matter.

An initial formalities check is carried out which can often result in a restriction requirement and/or an election of species requirement being issued by the USPTO on the basis that the claims of the patent application potentially relate to more than one different invention.  An examiner may require the patent applicant to restrict the claims or elect a set of claims for examination to make the task of conducting a meaningful prior art search covering the breadth of the claims less onerous for the examiner.

It is common for multiple office actions to be issued during examination requiring a response.  In some cases the same prior art will be cited in the U.S. as elsewhere, however, it is also common for unique prior art to be cited in the U.S..  This can be because of the propensity for U.S. examiners to combine multiple prior art documents in a mosaic in inventive step or obviousness objections.  Often the claims of a U.S. patent application are restricted in scope more than in other jurisdictions to overcome such inventive step or obviousness objections.

There will usually be a first non-final office action following by a second final office action, unless the objections raised in the first office action are overcome and the objections raised in the second office action were not raised in the first.  The applicant has 3 months, extendable up to 6 months with payment of fees, from the date of an office action in which to file a response.  Responding to a final office action ordinarily requires the filing of a request for continued examination (RCE) and payment of a fee to keep the application alive in case the response to the final office action is not sufficient to overcome all of the outstanding objections.

The United States of America Patent Office (USPTO) is involved in Patent Prosecution Highway (PPH) programs with the Australian Patent Office (IPAustralia) as well as many other jurisdictions including the Chinese Patent Office (SIPO), the European Patent Office (EPO), the Japanese Patent Office (JPO) and the Korean Patent Office (KPO).  Under this program, it is possible to request accelerated examination of a U.S. patent application based on a corresponding patent application in one of the other jurisdictions such as Australia where one or more claims have been deemed allowable during examination.  The USPTO is also involved with Australia in the PCT PPH under which it is possible to base a request for accelerated examination of a U.S. national phase patent application based on a favourable opinion regarding the patentability of at least one claim in an International (PCT) Patent Application where IPAustralia is the searching authority.

Exploiting the PPH program can reduce examination time substantially in the U.S..  The allowance rate of U.S. patent applications proceeding under the PPH is upwards of 80% compared with around 50% for all cases.

Divisional patent applications

A divisional U.S. patent application can be filed at any time up until grant or lapsing of the parent patent application.

Patent Grant

If all objections to the application are overcome then a notice of allowance will be issued setting a deadline to pay an issue fee to the USPTO.  The issue fee must be paid within 3 months of the date of issuance of the notice of allowance and this deadline is not extendable.  Following payment of the issue fee a U.S. patent will be granted.

How do I enforce my U.S. Patent if it is infringed?

A patent owner can collect damages for infringement of a patent only if adequate notice is given of the patent at issue. There are two ways of providing notice, namely actual notice by notifying an infringer directly or constructive notice which is achieved by marking a product, or providing a link to a website, with details of the patent or patent application covering the product.

U.S. patent law provides that a U.S. patent is infringed by the unauthorised manufacture, importation, use, sale or offering for sale of patented articles within the U.S..  An action for infringement must be brought in court if it a settlement cannot be achieved through negotiation.  An infringement suit is almost invariably followed by a counterclaim for revocation of the patent.   The high cost of patent litigation in the U.S. should be taken into account as part of a patent enforcement strategy.  However, it should also be noted that a significant strategic advantage in terms of “forum shopping” can be obtained by being the first party to file a suit as some jurisdictions are notoriously favourable towards one side or the other.  For example, around 44% of all patent infringement suits were filed in the Eastern District of Texas in 2015 as it is perceived to be favourable towards patent owners.

The Court can order a wide range of remedies on a finding of infringement, including final orders, destruction of infringing goods and tooling, and compensation or damages.  If the infringing activity is considered flagrant then triple damages can be awarded.  A preliminary injunction can be obtained if the patentee can show a prima facie case of infringement and that the detriment suffered by the patentee warrants the granting of an injunction.

What about renewals or maintenance fees?

Patent maintenance fees are payable only after a patent has been granted in the U.S..  In the case of utility patents for inventions, which is the most common type of patent, maintenance fees will also need to be paid over the life of the patent at intervals of 3 1/2, 7 1/2 and 11 1/2 years after the patent is granted.

There is a 6 month grace period following the maintenance fee deadline during which the maintenance fee may still be paid, subject to payment of additional penalty fees.

Gestalt Law monitors these deadlines and provides clients with timely reminders to ensure that their patent renewal deadlines are not missed.

For more information about the patent process in the United States of America then please contact Daniel McKinley.

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