The legal protection of industrial property in the USA is given increased attention. The national patent law provides for many special nuances that are not characteristic of other legal systems. - The list of protected objects has been significantly expanded, and additional options and stages of patenting have been introduced. In this article we will analyze what designs can be patented in the USA, and what documents the applicant will have to deal with.
As in other legal systems, full legal protection for industrial property in the U.S. will arise only after registration. The USPTO (United States Patent and Trademark Office) is in charge of this. Not only a domestic developer, but also a representative of a foreign country can file an application with this office.
Registration of a patent in the U.S. is subject to the following rules:
The U.S. is not a party to most international conventions in the field of patents. For example, this prevents the U.S. from being listed as a state on the PCT application. However, recent changes in national law have partially eliminated the problems of transferring applications to international status, and vice versa, and it has become significantly easier to validate a patent under the PCT or become substantially easier.
General rules for interaction between national and international patent services are as follows:
The foreign developer, who has already applied for a patent under the PCT, can transfer the application to the national status of the United States. It is necessary to do it within 30 months after the receipt of the application and the granting of the conventional priority. The simplified procedure also applies to holders of international patents.
The content of the application for registration will vary significantly, depending on the type of subject matter to be patented, the stage of development testing, as well as other factors. This is due to the peculiarities of the patenting system, which includes two independent stages. It is not even necessary to disclose the essence of the development at the preliminary stage, since all the claims and its description can be presented already at the main stage of registration.
While in most other countries a patent can be obtained after an examination, in the US a preliminary stage of patenting is also applied. It is declaratory in nature and may not lead to the final registration of the industrial property object. In the preliminary stage the law provides for the following steps and formalities:
Thus, the content of the priority regime in the U.S. is significantly broader than in other states. Within 12 months, the developer has the right to refine the technology and its claims, as these data have not yet been disclosed to the patent offices and third parties. It is allowed to introduce the technology into industrial production, including for commercial purposes. This makes it possible to narrow down the intended use of the subject matter, to make sure that all the features of patentability are present.
At the main stage of registration (Nonprovisional), the claims can no longer be changed. The developer must file an application in which all the criteria for patentability will be disclosed. To confirm these features, the USPTO will conduct examinations, which will result in a decision to grant a patent. Let us highlight a number of features that need to be taken into account for a positive consideration of the application at the main stage of patenting:
The Prior Act is key to the disclosure of patentability features. This document must be ordered by the developer himself in order to substantiate the validity of the application and the possibility to obtain a patent. Prior Act is obtained by applying to private or state expert organizations, presenting information on the used achievements in science and technology.
Conducting examinations on the basis of Prior Act implies the following activities:
Inventive step is confirmed if the USPTO examiners confirm that the presented development does not follow explicitly from the existing state of the art. To confirm the novelty it is necessary to make sure that no other persons have previously applied for a patent for a similar object of industrial property. The usefulness of the object is subjective and does not present any problems in proving it - it is enough for the developer to prove that the object can be introduced into industrial production.
If the expert examinations ended in a positive result, the developer will receive a patent. Depending on the type of registered subject matter, the USPTO may issue:
Simultaneously with the issuance of the patent, information will be entered into the USPTO registers - about the main characteristics of the development, about the right holder, about the disclosed information.
The regime of legal protection will be maintained for 20 years (inventions), 10 years (utility models), 5 years (industrial designs). To keep a patent in force, fees must be paid. However, in the U.S., these fees are not annual, but are transferred after 3.5. 7.5 and 11.5 years after the registration of rights to the invention.
Of particular importance for patenting will be the composition and order of the documentation. As indicated above, most of the criteria and features of the development will be fixed in the Prior Act, which is issued after an expert study. On the basis of the Prior Act, a preliminary and main application as well as a special declaration document - Information Disclosure Statement - are executed.
Although the amount and content of the information included in the Information Disclosure Statement depends on the developer, errors or incompleteness of the submitted information may affect the registration procedure and legal protection regime:
The Information Disclosure Statement must contain a formal notification to the patent authorities of the level of technology that became known to the developer while working on the subject matter;
Information Disclosure Statement will also contain a block of information about all the ways of using the new technology. In order to prepare the main application, the developer will have to choose the best way to use it, as it will be included in the list of information in the registry. Naturally, the general features of the development and its patentability must be identical in the preliminary and main application.
Our company offers services for registration of any industrial property in the United States. We will help you draw up all necessary documents, taking into account the peculiarities of the US legislation, represent your interests in the patent office and in the consideration of possible disputes and objections. The list of services we offer to developers includes:
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