There are three types of patent applications that may be filed in the United States:
Design Patent Applications
New, original and ornamental designs may be protected by a Design Patent. The application procedure is similar to that explained below in connection with Utility Patent Applications. Typically, it costs far less to obtain a Design Patent in comparison with a Utility Patent, but the scope of protection is not as great. Some products for which Utility Patent protection is unavailable may be entitled to Design Patent protection.
Utility Patent Applications
are directed to articles of manufacture, machines, chemical compositions and processes. The term of a utility patent is twenty years from the filing date.
To be patentable, an invention must be “new, useful and nonobvious”. The application consists of a full description of the invention and background materials relating thereto sufficient to enable one of ordinary skill in the art to make and use the invention. The application also includes drawings, a discussion of the prior art, a detailed description of the preferred embodiment and claims. The claims define the monopoly the inventor would like granted to him or her by the government in exchange for a full disclosure of the invention.
Conducting a Preliminary Patentability Search prior to filing a utility patent application is recommended. Such searches typically take one month to complete. Even if no “prior art” is located during the search which might have a significant bearing on the patentability of an invention, experience shows that the cost of the search is often recovered during prosecution of the application. Claims can be tailored much more closely to the scope needed to avoid the prior art, and thus the prosecution process in the Patent and Trademark Office is often shortened, which results in decreased prosecution fees.
An Office Action from the USPTO is usually received six to eight months following the filing of the application. When an Office Action is received, it is probable that some or all of the claims will be rejected. This does not mean that the invention is not patentable, but is rather just part of the process of securing a patent. Upon receipt of the Office Action, there is an opportunity to amend the claims and/or submit argument distinguishing the invention from the prior art via a Response. Eventually, hopefully, the application will be allowed. At that time an issue fee is payable to the USPTO and the patent will issue approximately four months later.
After a patent has issued, Maintenance Fees are due six months before the 4th, 8th and 12th anniversaries of the patent issue date. The amounts of these fees depend on possible qualification of the applicant as a “small entity.” The fee schedule is also subject to revision every three years by USPTO.
Priority of filing dates is always important, and sometimes crucial, especially in cases of interference or litigation. Furthermore, the application will be barred from filing if the invention has been publicly disclosed, either by publication, by public use or by offer of sale, more than one year before the actual date of filing in the USPTO. Another important consideration is that if patent rights in certain foreign countries are desired, the U.S. application must be filed before any such public disclosure.
Provisional Patent Applications
may be filed in an informal format, and do not require patent claims. A regular utility application must be filed within one year of the provisional application filing date in order to claim the benefit of that earlier filing date.
An alternative to filing a utility application, but still securing an early filing date, is to file a “provisional” patent application. Provisional applications may be filed in an informal format, and do not require patent claims. The provisional application must be followed by a regular utility application within one year in order to claim the benefit of the provisional application filing date. It is often desirable to file a provisional application as a first step and later file a “utility” application if the invention warrants it.
One advantage of a provisional application is that the term of twenty years from the filing date will mark from the filing date of the “utility” application, while prior art will be defined by the filing date of the provisional application. On the other hand, for filing priority, related foreign applications will need to be filed within one year of the provisional application filing date.
Foreign Patent Applications
A patent application filed in any foreign country must comply with the local patent law of that country. Most foreign countries require a patent application to have a filing date before the sale or publication of the invention anywhere in the world. In the United States, while it is recommended to file a patent application before the first sale, offer for sale, or other public disclosure of the invention, the application can be filed within one year after any of these events. Doing so, however, may have a detrimental effect upon foreign filing rights.
In this respect, the patent laws of virtually all foreign countries are more strict than the laws of the United States. These inconsistencies are alleviated to a great degree by an International Treaty governing foreign patent filing procedures. Nearly every foreign country of major manufacturing capability subscribes to this Treaty. Briefly stated, under the Treaty a foreign patent application filed within one year of the U.S. application filing date will be treated as if it had been filed on the same day as the related U.S. application. Thus, assuming a U.S. patent application is filed with the USPTO before any sale or public disclosure of an invention, the foreign filing rights are intact, provided corresponding applications are filed no later than one year from the earliest U.S. filing date.
Most foreign countries can be consolidated into a single patent filing under the terms of the Patent Cooperation Treaty (PCT), thereby reducing total filing costs and deferring certain expenditures, such as translations, for several months. A PCT application must also be filed within one year of the first-filed related U.S. application, and must designate all countries in which patent protection is desired.
The filing of a PCT application is primarily a cost deferral strategy to avoid incurring the major expenditures for foreign filings until more information can be obtained regarding possible patentability of the related U.S. application. The PCT Division will render a “search report” at approximately 15 months from the filing date of the first-filed U.S. application (the priority date). This report provides important information regarding the likely scope of patentability in the United States and other countries. The application is then published and available worldwide at the 18 month mark from the priority date. The deadline for filing foreign national patents is 30 months from the priority date, but it is not required that an application be filed in every country originally designated in the PCT application.
One of the designation options in a PCT application is the European Patent Office, under which sub-designations can be made to pursue coverage in European nations. When filing in three or more member countries, it is cost-effective to file in the EPO.
Foreign applications filed in Non-PCT countries must be filed within one year from the earliest U.S. filing date. If applications are not filed by this date, it may still be possible to file foreign patent applications; however, backdating the filing date of the foreign application is not possible since the benefits of the International Treaty would not be available.