Bsusiness Lawyers Toronto Barrie

Filing USA Patent Application

1. Rights of Patentee

The patent, in the case of utility and design patents, grants the right to exclude others from making, using, selling or offering to sell the invention and, in the case of a utility patent claiming a process, importing, using, selling or offering to sell a product produced outside the United States, using the process subject to the utility patent and, in the case of plant patents, asexually reproducing the plant or selling or using the plant so reproduced throughout the United States.

2. Who May Apply

Any person who has invented or discovered any new and useful invention may obtain a patent. The application ordinarily cannot be filed in the name of an assignee. However, anyone authorized by the actual inventor( s) may file application for patent. If not made by the actual inventor(s), the oath or declaration must state the relationship to the actual inventor and, upon information and belief, the facts which the inventor is required to state. Where the inventor or a joint inventor refuses to join in an application or cannot be found, a joint inventor, or anyone with a proprietary interest in the invention may, upon presenting proof thereof to the Commissioners of Patent and Trademarks, and submitting oath and declaration, obtain the issuance of a patent upon such conditions as the Commissioner may prescribe. Joint inventors must make joint applications; a separate oath or declaration is required from each inventor. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. Patent will issue to assignee if the assignment has been recorded in the Patent and Trademark Office at a date not later than the date on which the issue fee is paid and the issue fee transmittal form is so completed as to give the name of the assignee and confirm that the assignment was recorded.

3. What Is Patentable

Patentable by means of a utility patent is any new, useful and unobvious process, machine, manufacture, or composition of matter, or new and useful and unobvious improvement thereof. Patentable by means of a design patent is any new, original, ornamental and nonobvious design for an article of manufacture. A plant patent will be issued for a distinct, new and unobvious variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.

Not patentable are principles or laws of nature, naturally occurring articles, printed matter, and mental processes. However, (1) a man-made micro organism is patentable; (2) nonhuman multi-cellular living organisms, including animals, are patentable; (3) while mathematical equations, mathematical algorithms and methods of calculation are not patentable, the use or application of such equations, algorithms or methods may be patented if the result is a practical application in the technological arts (e.g., a rubber moulding process in which the time for opening the mould is calculated by means of a computer program; (4) method and apparatus claims which rely on the programmed operation of a digital computer are not rendered unpatentable on that account alone. In other words, claims to a nonmathematical, computer implemented algorithm may be patentable in conjunction with a physical method or apparatus. This assumes that no mathematical algorithm, equations or calculations are themselves preempted. Patentability will depend on the usual criteria of utility, novelty and unobviousness. Business methods are treated in the same manner as other subject matter, that is, claims describing a method of doing business are not rejectable solely on that basis. The keystone of patentable subject matter is in the production of a practical application, that is, the invention must produce a useful, concrete and tangible result.

4. Documents Required With Application

(1) Specification and claims; (2) Executed declaration or oath and power of attorney; (3) Drawing, unless invention does not admit of illustration; (4) Assignment: If it is desired that patent issue to assignee, or that assignee appear as owner upon the record and be secure against a subsequent purchaser, assignment is necessary; (5) Small entity status: a statement claiming such status is to be included in the application papers or within three months of the filing of the application in order for the applicant to receive the benefit of the 50 percent fee reduction from the outset. Alternatively, small entity status is granted based on payment of the small entity-filing fee, even without a statement. Later notification of small entity status is permitted, without retroactive effect.

5. Examination

Applications are classified according to subject matter and taken up for examination in regular order of filing in each group. During the pendency of the application, a paper is considered to be filed as of its date of receipt by the USPTO or as of its date of mailing, provided that the paper bears a "certificate of mailing" certifying the mailing date and signed and dated by the mailer. The results of examination are communicated to the applicant in writing by an "Official Action," the examiner stating his objections to any informalities in the application and citing the patents or publications upon which he based his rejection of claims. The applicant may amend in response to the objections and rejections by the examiner within a term of six months, or such shorter period as may be set, from the date of the official action (the period set is usually three months). In so amending, the applicant must clearly point out all of the patentable novelty which he thinks the case presents in view of the state of the art disclosed by the references cited or the objections made. He must also show how the amendments avoid such references or objections. The written statement or "amendment" must direct the alterations, cancellations, and insertions to be made in the specification and claims and then, under the heading "Remarks," present all explanations and arguments. The original numbering of the claims must be preserved throughout the prosecution. When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as requested by the applicant or as indicated when the claims were first presented. Where claims are added by amendment or substituted for cancelled claims, they must be numbered by the applicant consecutively, beginning with the number next following the highest numbered claim previously in the case.

6. Publication

The November 29, 1999 amendments to the U.S. patent laws include publication of applications, effective November 29, 2000. The amendments relating to publication apply to all national stage applications and international applications complying with (entry into U.S. national stage) filed on or after November 29, 2000. Applications are published 18 months after their earliest claimed filing date, and provide provisional rights to a reasonable royalty for infringement of claims the same as or substantially similar to the claims in the issued patent. Publication can be avoided if an applicant certifies that no foreign application for the invention has been or will be filed and requests that the U.S. application not be published. This certification can be rescinded by the applicant at any time, if a foreign filing is made, after which the U.S. application is published.

7. Allowance of Application and Issuance of Patent

If on examination it is found that the applicant is entitled to a patent, a notice of allowance is sent him or his attorney, calling for the payment of the issue fee within three months from date of the allowance. The Commissioner is empowered to accept a more-than-three months late payment of the issue fee upon a showing of unavoidable delay or a statement that the delay was unintentional. Persons who made, purchased, or used anything covered by the patent after the patent application was abandoned or lapsed for non-payment but before its restoration may continue the use of or sell the specific thing made, purchased, or used; the court is empowered to authorize continued manufacture, use, or sale.

8. Maintenance Fees

Maintenance fees are due 3 ½, 7 ½, and 11 ½ years after grant with payment of a surcharge for late payment within six months. Unintentionally and unavoidably lapsed patents may be revived, subject to intervening rights. The United States Patent and Trademark Office is required to set patent fees at a level to recover all of its costs. The USPTO is authorized to adjust the fees every three years to reflect fluctuations in the Consumer Price Index during the preceding three years. Maintenance fees are required for any patent actually applied for on or after December 12, 1980, whether or not the patent is entitled to the benefit of an earlier filing date under 35 U.S.C.A. § 120 or right of priority under 35 U.S.C.A. § 119. These maintenance fees are required to be paid 3 ½ years, 7 ½ years, and 11 ½ years after the date of issuance of the patent. According to the rules, these fees may be paid during the six-month period preceding the due date without a surcharge or during the six-month grace period after the due date with a surcharge. In addition, the USPTO may accept the payment of any maintenance fee after the six-month grace period and reinstate a lapsed patent if a surcharge is paid and a petition is filed showing that the delay was unavoidable.