What’s the News on Patent Reform? The Leahy-
New Filing Guide! The USPTO has issued a new Nonprovisional (Utility) Patent Application Filing Guide that incorporates and strongly encourages electronic filing. (The USPTO now charges substantially more for applications submitted on paper.)
Steps to Patent an Invention-
* Idea to conception: Develop your idea or innovation to a complete description of a machine, part, process, or other acceptable subject matter (a patent cannot be obtained on an idea or suggestion). While developing, testing, and preparing to patent, Avoid Public Disclosure: There is a one year US limit (a ‘grace’ period) on public disclosure, offer for sale or publication after which you are completely barred from getting a US patent. See How to Keep a Trade Secret for more information on public disclosure.
* Patent Search-
* Reduction to Practice:-
MPEP 2164: The Enablement Requirement: The enablement requirement refers to the requirement of 35 U.S.C. 112, first paragraph that the specification describe how to make and how to use the invention. The invention that one skilled in the art must be enabled to make and use is that defined by the claim(s) of the particular application or patent.
* File a Non-
* Patent Pending/Publication of Patent Application: An inventor may place the words
‘Patent Pending’ on an invention after a patent application has been filed. These
words (with actual notification) only take on legal effect, known as provisional
rights, after the patent application has published which is generally 18 months after
**OPTIONAL–FILE AN INTERNATIONAL PATENT APPLICATION CLAIMING THE BENEFIT OF THE NONPROVISIONAL PATENT APPLICATION–WITHIN 12 MONTHS OF FIRST FILING
(SEE PCT BELOW)
* Office Actions: If the examiner finds an application does not have patentable subject
matter, the application will be rejected or if the examiner finds that the claimed
invention lacks novelty or differs only in an obvious manner from what is found in
the prior art, the claims may also be rejected. Some or all of the claims in an application
are usually rejected on the first Office action by the examiner; relatively few applications
are allowed as filed. An average first Office action currently is about 25 months
from the filing date of a non-
* Responses to Office Action-
* Final Disposition: Allowance and Issue of Patent or Final Rejection and Abandonment or Appeal. If an examiner finds that a patent application meets the requirements, the patentee will receive a notice and has a limited time to pay the issuance fees. See USPTO Fee Schedule for more information on issue fees.
If the examiner finds that the patent application does not meet the requirements, the patentee will receive a Final Rejection and can then either Abandon or Appeal the application or continue with a new application.
* Patent Marking; A patentee was previously required to mark the articles with the word “Patent” and the number of the patent. Sec. 16 of the America Invents Act spells out the new law on Patent Marking:
U.S. Patents protect patents in the U.S. only. Foreign patents must be obtained to protect in foreign countries.
Protection from counterfeit imports into the U.S. may be obtained through the International Trade Commission.
Note: Every patent prosecution is different and the steps shown here are illustrative,
Basic PCT Principles [International Patent Filing]
(extracted from http://www.uspto.gov/web/offices/pac/mpep/documents/1800_1801.htm)
MAJOR CONCEPTS OF THE PCT
The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application,
"an international application," in a standardized format in English in the U.S. Receiving
Office (the U.S. Patent and Trademark Office), and have that application acknowledged
as a regular national or regional filing in as many Contracting States to the PCT
as the applicant "designates" or "elects," that is, names, as countries or regions
in which patent protection is desired. . . . [T]he filing of an international application
will automatically constitute the designation of all contracting countries to the
PCT on that filing date. In the same manner, the PCT enables foreign applicants to
file a PCT international application, designating the United States of America, in
their home language in their home patent office and have the application acknowledged
as a regular U.S. national filing. The PCT also provides for an international search
report and written opinion [ ] that are established normally at 16 months from the
priority date, and publication of the international application after 18 months from
the priority date. Upon payment of national fees and the furnishing of any required
translation, usually 30 months after the filing of any priority application for the
invention, or the international filing date if no priority is claimed, the application
will be subjected to national procedures for granting of patents in each of the designated
countries. For any countries remaining whose national laws are not compatible with
the 30 month period set forth in PCT Article 22(1), the filing of a demand for an
international preliminary examination electing such countries within 19 months from
the priority date will result in an extension of the period for entering the national
stage to 30 months from the priority date. An up-
The PCT offers an alternative route to filing patent applications directly in the
patent offices of those countries which are Contracting States of the PCT. It does
not preclude taking advantage of the priority rights and other advantages provided
under the Paris Convention and the WTO administered Agreement on Trade-
The filing, search and publication procedures are provided for in Chapter I of the PCT. Additional procedures for a preliminary examination of PCT international applications are provided for in optional PCT Chapter II.
In most instances a national U.S. application is filed first. An international application for the same subject matter will then be filed subsequently within the priority year provided by the Paris Convention and the priority benefit of the U.S. national application filing date will be claimed.
More on the PCT
The Patent Cooperation Treaty or PCT is an international patent treaty, administered by the World Intellectual Property Organization (WIPO), between more than 140 Paris Convention countries. (See list of all Contracting Parties to the PCT.) The PCT makes it possible to seek patent protection for an invention simultaneously in each Contracting Party (or countries) by filing a single “international” patent application meeting the requirements of Article 11 of the PCT, instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “National Phase”.
Not Just Patents can write a new PCT application or reformat and add new specifications
and claims (if necessary) to an existing priority patent application (provisional
or nonprovisional) that has already been filed, and file your application as an international
application through the PCT(filed electronically with PCT Easy zip file, the lowest
cost filing format). We offer very competitive rates and fast filing. If your 12-
For more information on PCT Filing and a brief summary of the Steps to a PCT Patent Application, see http://nonprovisional.com/pctpatentapplication.html.
For more information from Not Just Patents, see our other sites.
Ornamental Refusal (a type of Specimen Refusal)