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Peculiarities of Patenting Technical Solutions in the USA.

April 17, 2017

Currently, one of the principal law-makers of the patent law is the United States of America (the USA). The USA national patent law establishes effective mechanisms to protect the rights to the patented technical solutions. Many applicants seek to obtain a patent exactly in the USA, as this country possesses one of the best systems for the protection of the exclusive rights of right holders and a large consumer market.

Unlike the patent law in the Russian Federation, in the USA technical solutions must be patented only in the form of an “invention.” As in the majority of countries, the claimed invention shall meet all requirements for patentability that are embodied in the novelty, level of invention and industrial applicability.

In the United States, the legal protection document for the invention has a particular legal term “Utility Patent.” The Utility Patent is a kind of the property right of the author, which gives him a monopoly right to the particular technical solution.

The patent issued in the USA grants time-limited exclusive property rights to the inventor, namely, the right to prohibit other people from manufacturing, using, offering for sale, implementing or restricting the import of the products in which the invention is embodied (applicable), to which the patent has been obtained in the USA. The utility patent holder shall dispose of it at his own discretion, that is, he can use it for his own commercial purposes or assign the rights to it to other people, give licenses for the right to use his invention.

Usually, the term of the legal protection of the exclusive rights, certified by the patent, as in the majority of the countries of the world is 20 years from the date of filing an application for an invention, and in individual cases such a term starts from the date of filing of a preliminary application for an invention. The patent issued in the USA protects the rights to the invention only within the USA territory.

The payment of the relevant fees for the maintenance of the validity of the invention is an important aspect of providing the legal protection to the invention with the help of the patent.

According to the USA patent law, the following technical solutions can be protected as the inventions:

  1. a process (an action or method that includes production and technological processes);
  2. a technical device, an industrial article or its integral part;
  3. a composition of the substance (all compositions consisting of 2 or more substances, all composite articles, whether the results of a chemical compound or mechanical mixtures, gases, liquids, powders or solid particles, an artificially created chemical compound or a mixture of chemical ingredients that are endowed with certain new properties);
  4. a significant improvement of the already existing industrial article, substance, process.

The peculiarity of the USA patent law is the possibility of obtaining the legal protection not only for traditional inventions, under which the aforesaid subject-matters are understood, but also for the methods of doing business (business methods), as well as for the software.

According to the USA patent law, the invention must have the following qualities:

– the usefulness for satisfying the needs of potential users of such an article or its application in the production and technological process for the creation of goods and services in a particular field of activity;

– the possibility of a practical use of the invention according to the intended purpose, which is applied by the inventor;

– the compliance with the current level of scientific and technological progress of mankind.

The objective laws of the nature, physical phenomena, abstract ideas or proposals that can not be put into production; the objects that contradict the public order and moral values of a society cannot be patented and are not subject to the legal protection as an invention.

There are two kinds of applications for granting a patent for an invention, which shall be drawn up in English and meet all the formal requirements of the United States Patent and Trademark Office (USPTO):

– The preliminary application (the so-called “Provisional Application”) is a quick and less financially expensive opportunity for inventors, which provides for the establishment of the date of disclosure of the invention by filing an application with the USPTO. Such an application does not describe the claims. And the patent office does not carry out a qualification examination for the claimed subject-matter. This application shall expire after 12 months from the date of its receipt by the Patent Office of the USA and shall not be accepted for consideration by this institution after the expiration of its validity. The information on filing a preliminary application can be used in future with the purpose of filing a “nonprovisional application” to preserve the priority date of filing. This is necessary for:

– establishing a priority date with respect to the applied invention in favor of the applicant;

– analyzing the possibility of obtaining an advantage in the competitive environment during the previous application (for example, to investigate the future economic, social effect from the industrial application of the subject-matter of the patent law, to establish contractual relations with potential partners for the usage of the invention on the USA market, by concluding license agreements, etc.);

– applying an earlier date from which the exclusive rights to the invention in the USA will be applied for a future patent for an invention.

The official application for obtaining a patent, entitled “Nonprovisional Application,” after it is filed by the applicant to the Patent Office of the USA, provides for carrying out appropriate examination procedures to identify and comply with all necessary conditions for patentability of the applied subject-matter of intellectual property and formal requirements, i.e. the presentation of all documents for its official registration.

The application filed with the USPTO must contain:

  • An application that must include the name of the applied invention, the information about the applicant and other information stipulated by the patent law of the USA;
  • A description, which should disclose the summary of the applied technical solution, the best variant of its implementation, the applicant's arguments in support of its usefulness;
  • The claims that will determine the main scope of the applicant's claims, which he wants to protect;
  • A document that confirms the payment of the relevant fees;
  • The declarations in which the author makes an oath (in the fullest sense) that he is the original and first inventor of the applied technical solution.

After receiving an official application for obtaining a patent for an invention, the USPTO shall carry out a formal examination to identify the infringements of the documentation of the presented application for an invention. If the applicant complies with all formal requirements of the patent legislation and the requirements of the procedural rules of the USA, the USPTO shall officially publish the information on the receipt of an application for an invention.

Carrying out a qualification examination of the applied invention or the so-called substantive examination of the application for the compliance of this subject-matter with the criteria for patentability is a long term stage of the official registration of an invention in the USA. Based on the results of this stage, the Patent Office of the USA shall accept either of the two decisions: on the satisfaction of the application and granting a patent for an invention or rejecting an application for a patent.

After obtaining the desired patent for an invention, the applicant independently shall undertake all measures to commercialize this subject-matter of intellectual property and ensure the protection of his personal non-property and property rights on the territory of the USA.

If the application for a patent is rejected, the applicant has the right to defend his rights in the court.

The judicial system of the USA on intellectual property refers to the Anglo-Saxon legal system, i.e. in the USA there is a case law. If in the course of the examination the applicant has been refused to grant a patent for an invention, and he does not agree with this decision, the applicant has the opportunity to file an objection to the actions of the office to the court. The peculiarity is that the basis for filing an objection may be positive decisions of the USA court (precedents) concerning a similar situation, which have been made earlier.

Before filing an application for an invention in the USA, it is necessary to study in detail all subtleties and nuances of the patent law of the USA in order to reduce possible costs, as patenting in the USA is one of the most expensive in the world.

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Marianna Boykova

Marianna Boykova

Assistant to Patent Attorney