If you’re accustomed to how it’s done in another country, you may find some aspects of filing a patent application in the United States confusing.
As a company located outside the U.S., the patent firm you already use will normally coordinate with a U.S. firm to handle your U.S. patent filings. For example, we work with many law firms overseas and in Canada to handle patent applications for non-US applicants. In this capacity, we act as the U.S. agent for those law firms and represent the applicant before the USPTO.
As your U.S. Associate, we often answer questions about how the U.S. system is different than in other countries. It turns out the U.S. patent system has many idiosyncrasies, but here are five potential differences you might not have considered.
1. Duty to Disclose
In the United States, inventors, applicants, and representatives have a duty to disclose to the USPTO all information “known to that individual to be material to patentability.” Among other things, that means we must disclose any non-cumulative patent, patent application, or other reference that might help establish that the invention is unpatentable.
So what does that look like in practice? Usually, it means we will file an Information Disclosure Statement (IDS) any time we learn of prior art that is relevant to the application. Prior art often comes up, for example, because of a patentability search or a rejection in a parallel application in another country.
2. No Need to Request Examination
In many jurisdictions around the world, the applicant must formally request substantive examination. This is not a requirement in the U.S. Here, filing the application automatically acts as a request for examination. You don’t have to take any further action to enter into the examination process.
The USPTO will process your application and then automatically assign it to an examiner. He or she will examine your application when it comes up in the queue. There is no additional step where you request examination.
3. Maintenance Fees Only After Grant
In most countries, patent maintenance fees are due every year or every five years, and in some cases, maintenance fees are due even during the examination process. In the United States, however, maintenance fees are only due after the patent is granted, and then only for utility patents.
Utility patents generally expire twenty years after their filing date, and maintenance fees are due at 3.5 years, 7.5 years, and 11.5 years after grant. You can pay the maintenance fees up to six months early, or up to six months late (with a surcharge).
U.S. design patents expire fifteen years after they are granted, and have no maintenance fees whatsoever!
4. No Utility Models
Many countries, such as China and Germany, offer two types of utility-related protection: utility (invention) patents and utility models. Here in the United States, there is no such thing as a utility model. So, if you’re looking to protect the functionality of your invention in the U.S., you only have one choice: a utility patent.
5. Inventor Declaration Required
Every U.S. patent application must have at least one named inventor, and every inventor must submit a formal Inventor Declaration. This is a statement that you (as an inventor) authorized the application and believe yourself to be one of the inventors.
Since this is a requirement unique to the United States, we can give you the form to sign. This is really the only way to handle it for a Paris Convention filing. However, since inventors sometimes become unavailable over time, PCT applications actually include an optional U.S. inventor declaration form. When it comes time to enter the National Phase in the United States, we can easily use this signed form at the USPTO. (See below).
The path to obtaining a patent is generally similar in most countries. However, many aspects of the process are unique or different in the United States. We truly enjoy acting as the U.S. Associate in partnership with our colleagues in other countries. We treat our clients outside the U.S. with the same level of service and high-quality advice as our domestic clients. If you have any questions about how Kolitch Romano’s U.S. Associate Process works, please contact us and we’ll be happy to have a conversation with you.
Be sure to visit our Ultimate Guide to Patents for Your Business
Photograph © 2020 Dave Bourgeau
Blog Post © 2021 Kolitch Romano LLP
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.