United States Patent Law & Process FAQS

How can we be assured a Reputable Law Firm will handle the United States Application?

The Buche Law Firm, PC is a United States law firm experienced in handling United States Patent applications. We use advanced software to track the United States applications and to monitor critical filing deadlines. Our clients receive regular updates about the status of applications, and prompt advice about the likely costs of proceeding with specific procedures. We are easy to reach by email and by telephone.

What is required to be a United States Patent Attorney?

To practice as a United States “Patent Attorney” a practitioner must have a scientific educational background and pass both a federal and a state bar exam. In addition, to be a Patent Attorney, the practitioner must have a law degree from an accredited law school, pass a state ethics examination, maintain state continuing legal education training, and pass federal FBI and state background checks.

Samples of United States Patents?

UTILITY PATENTS/APPS

DESIGN PATENTS

Why File Patent Applications in the United States?

First, as one of the largest markets in the world, protection for inventions in the United States is highly valuable. Under 35 U.S.C. § 271, the holder of a United States patent has the right to exclude all other businesses or persons from making, selling, using, or importing infringing products. Second, in addition to the sheer size of the markets, the United States has a highly developed legal system in place for the enforcement of patent rights. In addition to the powerful U.S. federal court system, the holder of a United States Patent has access to remedies through the International Trade Commission, such as Section 337 investigations and exclusion orders.

What Procedural Requirements Exist to Receive a United States Patent?

In the United States, applicants are required to prove that an invention is (1) new; (2) useful; and (3) nonobvious. Also, an inventor must provide an “enabling” written description under 35 U.S.C. § 112 that teaches those skilled in the relevant art how to practice the invention.

What can be patented in the United States?

Patents can be granted for articles of manufacture, designs on articles of manufacture, living organisms, plants, chemical compositions, nonobvious methods of using existing inventions, and on certain methods.

What types of patents are available in the United States?

Utility patents are available for processes, machines, manufactured items, and compositions of matter. The utility patents last 20 years from the effective filing date.

Design patents protect the overall appearance of an invention and are for “ornamental” designs for articles of manufacture. A design patent lasts 14 years from the date it issues. There may be overlap between design patent protection, copyright and trade dress protections.

What happens after a United States patent application is filed?

After a patent application is filed, the applicant will receive an “office action” – usually between 18-24 months after filing of the application. A patent examiner at the U.S. patent office assigned to the application will issue this office action. The office action may allow certain subject matter, and it may also have rejections and/or objections for reasons of either form or substance. If there are objections or rejections, it is the job of the patent attorney to make appropriate arguments or make amendments to get the broadest protection available. If the rejections and/or objections are overcome, the inventor will receive a “Notice of Allowability” setting forth the scope of allowable protection on the invention. Thereafter, an issue fee must be paid for the patent to issue.

After a United States patent issues, are there fees to maintain the patent?

Yes. Maintenance fees must be paid at 3.5, 7.5 and 11.5 years to keep the patent in force. Our firm uses patent specific software to track these dates and send out reminders to our clients when the fees are due.

How long does a United States patent last?

A utility patent lasts 20 years from the filing date. A design patent lasts 14 years from issuance.

What is the time frame to file for Patent Protection in the United States?

The United States is a member of the Patent Cooperation Treaty, so to enter the national stage in the United States, an international applicant must fulfill the requirements of 35 U.S.C. § 371 and file an application within thirty (30) months of the priority date. The application must be filed with a copy of the international application and the basic national fee. Also, to be complete, the application will need a proper translation into English, declaration(s) of inventorship, examination and search fees. Also, if any amendments and annexes were made to claims under PCT Article 19, these must all be furnished within thirty (30) months of the priority date.

Who can file for a patent in the United States?

United States patent law provides that inventors may apply for a patent. Inventors applying for patents in the United States can have any citizenship. It is not necessary to be a United States citizen. An inventor will be required to make an oath or declaration of inventorship. If the invention was jointly invented, applications can be filed jointly. In some cases, patents can be applied for on behalf of inventors who have died by a representative of the estate, or in rare cases where an inventor suffers from mental incapacity, by a guardian. If one inventor refuses to sign, or is unavailable, a joint inventor or other person having a proprietary interest in the invention may apply on behalf of the non-signing inventor. Of course, despite the requirements for inventors to be applicants, it is commonplace for inventive rights to be assigned so that an application will frequently identify the inventors and the assignees who may actually own the application and intellectual property rights to the invention. A United States utility patent cannot be obtained if the invention was patented outside of the United States if the foreign application was filed more than 12 months before filing in the United States. A United States design patent cannot be obtained if a design patent was obtained elsewhere and the foreign application was filed more than 6 months before the United States application. See 35 U.S.C. §172.

A foreign applicant may be represented by any patent attorney or agent who is registered to practice before the United States Patent and Trademark Office.

Should we file a PCT application in the United States?

It can be advantageous to file a PCT application in the United States, if available. To file a PCT application using the United States as a receiving office, usually at least one of the applicants has to be a U.S. national or resident. A PCT application is useful since it allows delaying U.S. and foreign national patent prosecution for generally up to thirty (30) months from the earliest priority date. For a variety of reasons, it can be beneficial to file a PCT application in the U.S. receiving office and to have United States attorneys serve as a home base for later international filings. For one, if the United States will be a primary market, it makes sense to have a United States attorney familiar with U.S. patent and business laws to prepare your claims. All initial communications at the initial phase of the PCT process can be consolidated and streamlined in English with the U.S. office rather than with many foreign offices; a single set of priority documents can be used instead of many; and multiple countries can be designated on the original Request form in the United States. If it is not possible to use the U.S. as a receiving office because of lack of being a U.S. national or resident, it may still be possible to have U.S. attorneys represent you for PCT purposes if one of the applicants is a national or resident of a PCT contracting state, by filing a PCT application with WIPO in Geneva.

Is it possible to file a patent application in the United States claiming foreign priority without a PCT application?

Yes. If another patent application has been previously filed in a foreign country by the applicant, and the applicant wants to claim priority back to the date of the prior foreign application, a U.S. application must be made within 12 months from the earliest date of the foreign filing (and six months in the case of a design patent). To make a priority claim under 35 U.S.C. § 119(b) to the prior foreign application, the applicant in the oath or declaration accompanying the U.S. application must state the country and date when the earliest application was filed, as well as identify any other applications made before the application on which priority is claimed. In addition, the applicant must provide a copy of the foreign application certified by the patent office of the country in which it was originally filed.

Does your firm handle filing of United States trademarks?

Yes. Our firm routinely files trademarks. It is not necessary to be a United States citizen to apply for a trademark in the United States. For information on trademarks, see https://buchelaw.com/trademark-faq/