Source: IPNote, https://ipnote.pro/en/blog/registration-of-a-utility-patent-in-the-us-what-you-need-to-know/
A Step-by-Step Guide In the dynamic US market, establishing and protecting one's brand image is crucial to a company's success. The utility model protects the creation of technical ideas that utilize the laws of nature, focusing on improvements in function, technology, manufacturing, and ease of use, including substances, articles, methods, biological materials, and their uses. This guide aims to clarify the complexities of utility model registration in US so that businesses can effectively register their utility model and protect their intellectual property assets. These may be granted to anyone who invents or discovers a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvements of these. Contents
1. What can and cannot be patented in the US?
2. The utility model Registration Process in US?
3. Reasons for refusal of a utility model application in us?
4. Documents Required for utility model in US
5. Utility model Costs in US are these fees correct?
6. What is an Information Disclosure Statement?
7. Conclusion
1. What can and cannot be patented in the US?
(1) To qualify for patenting, the invention must be:
◆ Novel (In the USA, the novelty grace period is 12 months before the US filing date or before the priority date);
◆ Non-obvious;
◆ Adequately described or enabled (for one of ordinary skill in the art to make and use the invention);
◆ Claimed by the inventor in clear and definite terms.
(2) What can be patented:
◆ Process
◆ Machine
◆ Article of manufacture
◆ Composition of matter
◆ Improvement of any of the above
(3) What cannot be patented:
◆ Laws of nature
◆ Physical phenomena
◆ Abstract ideas
◆ Literary, dramatic, musical, and artistic works (these can be Copyright protected)
◆Inventions which are not useful (such as perpetual motion machines) or offensive to public morality.
2. The utility model Registration Process in US? ◆Patentability search for utility patent A patentability search is conducted to determine whether an invention is new and non-obvious. This can help the inventor decide whether to pursue a patent application. It can also help the inventor identify areas of the invention that may need further development to increase its patentability.
The search involves an extensive examination of the prior art, including any public information related to the invention. This includes patents, published applications, scientific publications, and other relevant literature.
◆Formal examination
At this stage of the utility patent registration process, the application is checked for compliance with the formal requirements of the patent office. For example, it may be the availability of documents or the payment of official fees.
If your application is incomplete, you will be notified of the deficiencies by an official letter from the USPTO. You will be given time to complete the application filing (a surcharge may be required.) If the omission is not corrected within a specified period, the application will be returned or otherwise disposed of; the filing fee, if submitted, will be refunded less a handling fee as outlined in the fee schedule.
◆Publication
Publication occurs after the expiration of 18 months following the earliest effective filing date or priority date claimed by an application. After publication, the patent application is no longer held in confidence by the Office, and any public member may request access to the entire file history of the application.
As a result of this step of the utility patent registration process, an applicant may assert provisional rights. These rights provide a patentee with the opportunity to obtain a reasonable royalty from a third party that infringes a published application claim, provided actual notice is given to the third party by the applicant and patent issues from the application with a substantially identical claim. Thus, damages for pre-patent grant infringement by another are now available.
◆Substantive examination
A substantive examination is a step of the utility patent registration process that automatically initiated by filing a patent application in the USA. Once your application has been accepted as complete, it will be assigned for analysis. Substantive examination is the most important step of the utility patent registration process.
Your examiner will review the contents of the application to determine if the application meets the requirements of 35 U.S.C. 111(a). If the examiner does not think your application meets the requirements, the examiner will explain the reason(s). You can make amendments or argue against the examiner’s objections.
Your application will be abandoned if you fail to respond to the examiner’s requisition within the required time. If your application is rejected twice, you may appeal the examiner’s decision to the Patent Trial and Appeal Board (PTAB.)
◆Granting of a utility patent
If the examiner determines that your application is in satisfactory condition and meets the requirements, you will receive a Notice of Allowance. But the utility patent registration process isn’t finished, you must pay the issue fee for a patent in the USA within three months of mailing the Notice of Allowance.
The notice of allowance will list the issue fee and may also include the publication fee that must be paid before the Patent is issued.
Utility and reissue patents are issued about four weeks after the issue fee, and any required publication fee are received in the Office. A patent number and issue date will be assigned to an application, and an Issue Notification will be mailed after the issue fee has been paid and processed by the USPTO.
Maintenance fees are due at years 3.5, 7.5, and 11.5 from the patent issue date and may be paid within 5 months preceding the due date without a surcharge. Late payment with a surcharge is possible within six months after the expiry period. Early payment is not available.
3. Reasons for refusal of a utility model application in us? ◆Reason 1: Lack of Novelty
A common reason for a patent application to be rejected is the lack of novelty. In order to be granted a patent, the invention described in the application must be significantly different from anything else known to the public. This includes previously patented items, published materials, and products currently available in the market. The scope of public knowledge extends globally, so an invention may be considered non-novel even if it combines existing devices or ideas in a unique manner.
If the Patent Examiner discovers a similar existing invention or product, often referred to as "prior art," the application may be rejected due to the lack of novelty. To address this rejection, arguments can be presented that emphasize differences in parts, function, or use compared to the prior art.
◆Reason 2: Obviousness
Another frequent cause for rejection of a patent application is the concept of "obviousness." Even if an invention is novel, a patent might not be approved if the differences between the invention and existing knowledge are such that the entire subject matter would have been apparent to a person with average skills in the relevant field at the time the invention was created.
During the assessment process, even if the Patent Examiner does not find identical existing knowledge, they may still deny the application referring to references that, while not individually identical to the invention, contain elements that would have been obvious to combine to arrive at the invention. Arguments to dispute this rejection can involve demonstrating that the combination of existing knowledge references as proposed by the Examiner would not have been obvious and emphasizing unique features or components in the invention.
◆Reason 3: Abstract Idea
Another common reason for rejecting a patent application is when the covered invention is considered to be an "Abstract Idea." This traditionally encompassed mathematical formulas, natural phenomena, and printed matter. However, recent court decisions have expanded the scope of the Abstract Ideas rejection to include software and business method inventions.
For instance, in a patent application for an electronic device with specific components, Patent Examiners may argue that these components involve algorithms or data processing and then claim that the described limitations are not significantly different from an abstract idea. This broader application of abstract idea rejection has affected certain utility/apparatus applications.
To counter a Patent Examiner's rejection based on the abstract idea, one could argue that the rejection is unfounded and highlight granted patents containing similar components. Another approach is to assert that the rejection is a procedural error that overlooks a thorough analysis of all elements of the claim limitations. Furthermore, it can be argued that the assertion claiming the claim limitations are not significantly different from the abstract idea is an unsubstantiated allegation.
◆Reason 4: Issues in the patent application
Another frequent cause of patent application rejections arises from mistakes within the application itself. These mistakes generally fit into two main categories: informalities and insufficiency.
＊Informalities issues:
These issues involve minor omissions or inconsistencies in the patent application, such as paragraph numbering, line numbering, discrepancies in numbering between the description and drawings, grammatical or punctuation issues, and improper language usage. Rectifying informalities errors is usually straightforward and considered minor.
＊Insufficiency issues:
These issues arises when the written description in a patent application lacks sufficient or detailed information to enable understanding of the invention's operation. A fundamental requirement of a patent application is a complete disclosure of the invention, including its vital components and functionality. Once filed, any amendment involving new material is prohibited, making it crucial to ensure a comprehensive initial filing.
4. Documents Required for utility model in US
A nonprovisional application for a patent should include:
◆ A written document that comprises a specification (description and claims);
◆ Drawings (when necessary);
◆ An oath or declaration;
◆ Payment of filing, search, and examination fees;
◆ Priority document (when necessary);
◆ Power of Attorney (when necessary).
The official language of the US patent application is English.
You must file the priority document within four months from the application date or 16 months from the prior foreign application.
5. Utility model Costs in US are these fees correct?
6. What is an Information Disclosure Statement?
The applicant is obligated to submit an Information Disclosure Statement (IDS) containing any information that could impact the patentability of the claimed invention. This obligation extends to the applicant's legal representative and all individuals involved in the application process.
The information to be disclosed encompasses a wide range of types, including but not limited to, prior art. This obligation endures until a patent is granted or the application is abandoned. Deliberate failure to submit an IDS may result in a subsequent declaration of the patent as unenforceable.
If the IDS is submitted within three months from the filing date or before the first office action, no government fee is required. However, if the applicant or their representative was aware of the information in the IDS more than three months prior to filing, or if the information was previously cited by a foreign patent office, additional fees must be paid.
7. Conclusion
The US utility model registration process is a multifaceted journey that demands careful planning, thorough research, and strategic decision-making. By understanding the intricacies of the process and leveraging professional guidance when necessary, businesses can effectively protect their brand identity and capitalize on growth opportunities in the dynamic US market. With its efficient registration system, robust legal framework, and strategic positioning in the Asia-Pacific region, US remains an attractive destination for businesses seeking to establish and safeguard their utility model.
In the team of our law firm, each of attorneys, agents and experts is experienced in obtaining and protecting a utility model, from utility model prosecution to handling infringements, appeals and litigations before the courts. We, Lewis & Davis Patent Attorneys Office, are capable to give you the most secure protection on your utility model and intellectual property rights.
Contact us if you wish to find out more about IP protection.