Ten things you need to know about applying for a US patent

Patents are the vane of innovation. As more and more companies go abroad, how to protect their intellectual property rights and apply for patents abroad, from "Made in China" to "Intelligent Manufacturing in China" has become a problem faced by many companies. Here are the ten tips that the United States has to know to apply for a patent with Nanjing Hua Xun.

　　Tip 1:

Inventors, applicants (when they are not the same person as the inventor), agents, and other persons involved in the preparation and examination of patent applications have an active disclosure obligation when dealing with the United States Patent and Trademark Office (PTO). This is reflected in particular in the written statement signed by the applicant. The obligation to explain mainly includes informing the PTO of prior art or other facts that the applicant has known and are important to the examiner in the patent examination process. (e. g., test data contrary to the determination in the application document or opinion statement submitted to the examiner)

　　Tip 2:

The patent application must contain a description and at least one detailed example to enable a person skilled in the art to make or use the invention in accordance with the description without extensive experimentation (of course, some routine experimentation is acceptable). When a new substance is claimed, it is important to reveal how it is used. The court may sometimes improperly limit the scope of protection of a preferred embodiment. In order to avoid this risk, it is helpful for the applicant to mention in the application that alternative methods of making and using the present invention are mentioned. It is also an effective way to include information on both preferred and exemplary embodiments of the invention, so that when the patent office finds prior art in the course of examination that the applicant has not discovered at the time of filing the application and the applicant must circumvent the prior art by further defining the claims, the embodiments in the above description will be the basis for the modification of the new claims.

　　Tip 3:

Many objects can be patented in the United States, but may not be patented in other countries, such as plants, animals, and medical treatments. Unlike most other countries, the United States previously did not specifically require a technical solution when considering the patentability of an invention. However, as can be seen from recent court jurisprudence, it has slowly begun to emphasize that natural products and natural laws are not special compared to natural substances and abstract ideas, and therefore are not protected by patent law. This makes such inventions as genetic material, broadly conceived business methods, and diagnostic methods for diseases more difficult to protect under patent law unless they involve the use of a specific technology. Further, when a new substance is claimed, unless the use of the new substance is obvious, at least a reliable, detailed and substantial use needs to be disclosed in the specification.

　　Tip 4:

In order to be authorized, the invention must be novel, practical and non-obvious. This means that the invention was not publicly published in domestic or foreign publications, publicly used at home or abroad, or otherwise known to the public before the application to the patent office (in the case of a patent application claiming priority, before the priority date). However, it should be noted that the U.S. novelty grace period is as long as one year, and the disclosure made by the inventor himself within one year before the filing date does not constitute prior art.

　　Tip 5:

It is very important to fill in the correct inventor. The signature in the written declaration document can clearly indicate who is the inventor, and if there are multiple inventors, it belongs to the co-inventor. It is emphasized that as an inventor, one needs to make a substantial contribution to the invention process. Merely providing general opinions on the quality of the invention or making suggestions based on the enlightenment of other inventions are not considered substantive contributions. If two or more persons have made substantial creative contributions, they should be signed as joint inventors in the application documents. In the absence of any agreement between the co-inventors, they share ownership of the patent and the co-inventors may individually implement or license the patent to be implemented without the consent of the co-inventors.

　　Tip 6:

Before a patent is granted, the United States Patent and Trademark Office will examine the claims for novelty, utility, and non-obviousness. But the right to PTO is not always reliable. Sometimes there is a risk of being invalidated after a patent is granted. This usually occurs when the patentee implements his patent right and a third party requests the Patent Office to reexamine the patent right (at which time the Patent Office will re-examine its compliance with the authorization conditions based on the prior art defense provided by the requesting reviewer). A third person may also request the Patent Trial and Appeal Board to reexamine the patent and submit oath evidence. Before the final decision is made, the relevant person who made the oath needs to pass the inquiry review and conduct a hearing between the two parties.

　　Tip 7:

As long as the fees are paid in accordance with the regulations, the term of the invention patent right is twenty years, counting from the date of application.

　　Tip 8:

Usually a patent application is published 18 months from the date of application (priority means priority date). The contents of the patent application documents will also be disclosed. Of course, it is also possible to delay the publication of the patent application until its authorization, which requires the applicant to prove that the foreign patent application corresponding to the patent will not be published when the relevant applicant country is not authorized.

　　Tip 9:

Provisional applications may also be filed in U. S. patent applications. Note that the provisional application does not claim priority from another application. The United States Patent and Trademark Office does not review the provisional application, and if no "formal" application is filed within 12 months of the filing date, the provisional application expires. Obviously, the provisional application has its unique advantages. As mentioned in points 4 and 7 above, it can preempt a priority date for a "regular" application and at the same time delay the protection period of the invention patent by one year. On the other hand, when the patent protection period is delayed, the grant date of the patent may also be delayed.

　　Tip 10:

The U.S. patent system gives small entities (small entities) a halving of royalties and a 75 percent reduction for micro entities (micro-entity). The condition for meeting the qualification of a small-scale entity is that the applicant must be an independent inventor, a non-profit organization or a small and medium-sized enterprise with less than 500 employees, and its patent rights cannot be licensed, transferred or obliged to be licensed or transferred to other patent applicants who do not meet the conditions of a small-scale entity.

In addition to meeting the above-mentioned conditions for small-scale entities, applicants with micro-entity qualifications are also required to: 1) the total income of the previous year is less than $150,000, and the number of previous US patent applications cannot be more than 4; Or 2) applicants who have signed an agreement or are obliged to transfer and license the invention to higher education institutions in the United States. The qualification of micro-entities also needs to comply with the relevant requirements for the qualification of small entities, that is, the restrictions on the qualification of small entities in terms of transfer, licensing, etc. also apply to the qualification of micro-entities.