Expediting Patent Applications: US

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We recently discussed options for speeding up grant of a European patent. As we mentioned, reasons to expedite grant include the existence of a potential infringer, or the need to obtain grant to enable licensing or sale.

uspto
 

Today, we’ll take a look at what options are available in the U.S.

Accelerated Examination Program
At first glance, this sounds like a great option. You may pay a small fee (or no fee if your invention is directed to environmental quality, development or conservation of energy resources, or counter terrorism) and prosecution will generally be completed within 12 months.

There are, however, some very significant restrictions. The quid pro quo for quick prosecution is that you get to do most of the work that would otherwise be done by the examiner. That means:

  • Showing how each feature of every claim is supported in the specification.
  • Performing a search on each and very claim. This doesn’t mean just presenting a few documents, either. You have to submit full details of your search statements.
  • Explaining how each claim is allowable over the documents uncovered by the search.

Quite aside from the effort (and cost, given most applicants will use a patent attorney), there are significant concerns among many applicants that being required to be your own searcher and examiner represents a conflict of interest. You’re basically being asked to characterize your invention’s relationship with the prior art – something that is generally avoided by applicants as far as possible to avoid potential estoppel issues (“estoppel” in this context is the legal principle under which asserting something at one stage prevents you from arguing the opposite later. “File wrapper estoppel” means that if you say something on the written record during patent prosecution before the EPO, you will be prevented from asserting anything contradictory later, including during litigation, for example).

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USPTO Published Proposed Rules Regarding First-To-File System

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On July 26th, 2012, the United States Patent and Trademark Office released the proposed set of rules which would govern the implementation of the “first inventor to file” provision of the America Invents Act. Currently, the United States is the only country to adhere to a “first to invent” patent system. However, its shift to the “first inventor to file” scheme, effective March 16, 2013, will bring the US patent system closer to that of the rest of the world.

Difference Between “First to File” and “First Inventor to File”

There is a subtle, but important, difference between America’s “first inventor to file” system and a “first to file” system. The US Constitution only grants Congress the authority to issue patents to inventors. Therefore, the US “first inventor to file” system grants patents to the first person/entity to file a patent application only if one of the applicants is an inventor. For those patent offices operating under a “first to file” system, the applicant does not have to be an inventor.
 

What are your thoughts on America’s switch to the “first inventor to file” system? Are you happy that it will create a clearly defined priority date for the public? Do you think it will hurt the sole inventor/small business who doesn’t have the funds to quickly file their application?
 

inovia Launches Direct Filing Service – Part 2 of 3

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What is the Paris Convention?

The phrases “direct filing” and “Paris Convention filing” are synonymous with each other; the process of applying for patent protection under the Paris Convention is commonly referred to as direct filing. Patent applicants who file their application under this treaty are granted the same intellectual property rights  in each member country that they would receive in their home country.

As depicted in the below diagram, a patent applicant has exactly 12 months from their priority date to file directly into the foreign countries that they seek protection in.  Keep in mind that no extensions can be given after the 12-month due date as it is a hard deadline.

Direct filing diagram

inovia‘s global instruction platform now handles direct filings in 17 countries: Argentina, Australia, Brazil, Canada, China, Eurasia, Europe, Germany, Israel, Japan, Korea, Mexico, Russia, Taiwan, Ukraine, the United Kingdom, and the United States of America. If you’d like country-specific information about any of these destinations, please contact us.  You can also read more about our direct filing service here.

Next: In Part 3 of this series, we’ll compare the processes of PCT national stage entry and direct (Paris Convention) filing.

inovia Launches Direct Filing Service – Part 3 of 3

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Paris Convention vs. PCT

Patent applicants planning to file for patent protection abroad understand that timing is critical. For this reason, it is essential to evaluate the two avenues available for foreign filing: the Paris Convention and the Patent Cooperation Treaty (PCT). Both treaties accomplish the same goal of acquiring protection in chosen jurisdictions, but their deadlines differ in terms of timing available to acquire funds, determine where to file, etc.

In the below chart, you can see that both the PCT and the Paris Convention require an applicant to file 12 months from their earliest priority date. If it is important to push the invention fast, filing via the Paris Convention may be the safest route to ensure quicker examination (and hopefully, quicker grant).

Applicants work with their attorneys to determine which method is best-suited for their invention. Generally, direct filing via the Paris convention is the preferred method when filing into 3 or fewer countries because it tends to be more cost-effective. Direct filing allows the applicant to customize their application to each destination while, under the PCT, one uniform application is sent to all chosen filing destinations.

Patent Cooperation Treaty

Paris Convention

146 contracting states.  Notable exceptions include Taiwan and Argentina.

174 contracting states.

Deadline for filing a PCT application is 12 months from the earliest priority date.  Then applicant has 18-19 months before the application needs to enter the national stage.

Deadline for filing directly into a Paris Convention country is 12 months from the earliest priority date.

The same PCT application is filed into each desired PCT member country.

The application can be custom-tailored for each jurisdiction.

Examination of application can be delayed due to 18/19 month period before national stage entry.  This is good for applicants hoping to delay costs.

Examination occurs sooner, so this is good for applicants wanting quicker issuance of patent.

 

For applicants wishing to file into several countries or want to keep open the option of doing so, a PCT application is the more cost-efficient route.

For applicants who know they only want to file into 1-3 countries, filing directly via the Paris Convention is usually the less expensive route.

For inovia registered users:

You can get an instant direct quote for your patent; simply enter your patent number and use your provisional application to enter your specs. Our streamlined approach allows you to file into multiple countries with one single instruction, at a fraction of the cost. Try running a quote for yourself, or contact us to learn more about our service suite.