US Patent Law Fundamentals
A patent issued by the U.S. Patent and Trademark Office (“USPTO”) grants the sole right to exclude others from making, using, selling, importing, i.e., infringing, as well as contributing to or inducing another, a claimed invention in the relevant jurisdiction. In the U.S., there are three basic types of patents–utility, plant and design. A utility patent protects a claimed useful, new and non-obvious innovation for a life cycle of 20 years from its filing date, provided post-issuance maintenance fees are timely paid to extend the life of a patent for 3.5 year increments following a patent’s issue date.
Unlike utility patents, design and plant patent life cycles extend through the full 14 and 20 year respective terms, without remitting maintenance fees. Design patent last for 14 years and plant patent last for 20 years. The subject matter of a design patent application protect ornamental innovations, such as, for example the look of a configuration or shape of an article, texture or surface ornamentation applied to an article. Plant patent subject matter covers a distinct and new variety of plant.
A provisional patent confers a very limited right–to an invention priority date for disclosed subject matter in the application. A provisional patent application requires no claims or formal papers other than a provisional cover sheet and is not examined. It merely reserves an invention priority date for up to 12 months, and does not trigger examination until it is converted to a formal nonprovisional patent application. Otherwise, the provisional application priority date lapses.
In contrast to most other countries requiring “absolute novelty,” under applicable U.S. law, an invention owner has a one year grace period in which to file a patent application, following an enabling public disclosure or commercialization of the invention. In most foreign countries, publication of the invention before the date of the application results in forfeiture of patent rights, as no grace period is afforded in most cases.
Of course, it is still important to file for patent protection in the United States as soon as possible, even if international patent protection is not desired, especially in view of the America Invests Act adoption of the first to file system on March 16, 2013.
U.S. law requires an owner of any invention born in the U.S. acquire a foreign filing license from the USPTO prior to applying for a patent overseas. Each patent application filing triggers a request for a foreign filing license, which must be acquired either before an application is filed in U.S. or before the expiration of six months from the filing of an application in U.S. The foreign filing license requirement automatically expires six months after the U.S. filing date, a license unless the filing receipt mandates the invention be kept secret, in which event the patent owner must first acquire USPTO permission to file overseas.
International Patent Strategy
Given the rapid developing, intensely competitive global reach of the marketplace, optimal monetization of an innovation entails a savvy international patent strategy. Navigating the individual country filing requirements, coordinating multiple foreign patent practitioners while docketing critical deadlines, together with the expense of translations, legal and government fees, renders international patent protection burdensome and expensive. Such complexities and costs have in recent decades have fueled growth of international patent conventions in the past few decades. The Paris convention which entitles an applicant from a member country to claim priority based on a filing date another member country, provided that the applicant files a subsequent application within 12 months for patents and utility models (or 6 months for industrial designs and trademarks) from the first filing. The other is The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions, helps patent Offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in 148 countries.
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