Patent Filing Terms

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Patent Filing Terms
2013-11-11 13:18:10

Foreign Filing Fundamentals terminology
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  1. Annuity
    Fee paid to patent office to keep pending application or issued patent active
  2. Associate
    A foreign law firm
  3. Bar Date
    The final date on which a foreign application can be filed
  4. Disclosure
    Any act that makes an invention available to the public (may be different for different countries)
  5. Examination (formalities vs. substantial)
    • Formalities: country requirements met for complete application
    • Substantial: Review by patent examiner - novelty, obviousness, inventive step and/or industrial applicability
  6. Foreign Filing Date
    Time allowed under a treaty to file a paetnt application that claims priority to the initial application
  7. Grace Period
    Offered by some countries to allow for some type of disclosure before protection is barred.
  8. Novelty & Absolute Novelty
    • - Not patentable if disclosed prior to filing/priority date of application
    • - if disclosed, "absolute novelty" is not achieved, many countries deny protection
  9. PPH (Patent Prosecution Highway)
    Method to expedite patent prosecution (if 1st application was prosecuted and allowed, you can amend 2nd application to make it identical to 1st, examined much more quickly)
  10. Priority
    • - begins when the 1st application for an invention is filed.
    • - allows claimant to file in another company with an effective filing date as first priority date.
    • - Period of priority (time in which next application must be filed):
    • a) Utility - 12 months from 1st app
    • b) Plant app - 12 months
    • c) Design applications - 6 months
  11. Treaties
    • - Paris Convention
    • - PCT (Patent Cooperation Treaty - extends to 30 months)
    • - WTO (World Trade Organization - resolves trade disputes, rules of trade)
  12. Types of patents
    • Regular (examined, valid for 20 years)
    • Utility (less stringent requirements, 6-15 years validity, aka 'petty patent'/'innovation patent'
  13. Requirements for filing
    Be resident or citizen, or claim priority to application filed in treaty country. Patent offices require resident app.
  14. Determine where application should be filed
    Determined by owner and IP attorney
  15. Determine final date on which application can be filed
    • - What type? (Utility & plant = 12 months priority, design = 6 months priority)
    • - Under what condition (i.e. treaty)? 
    • (Paris = 12/6, PCT 30/31, WTO (same as Paris))
  16. Determine day you WANT application filed
    at least 1 day prior to due date, usually 2 for time differences etc.
  17. Who owns priority application?
    Who will be the applicant?
    • Whoever owns priority application owns the priority.
    • If applicant different than owner of priority, priority period is not owned by applicant and priority claim could be considered invalid.
  18. Steps required to file a foreign patent (1-2)
    • -Ensure priority application's owner and the applicant of the foreign app. are the same. Assignments should be signed before application is filed.
    • - Contact foreign associate in the country (sometimes require retainer fees, verify they have experience with the subject matter)
  19. Steps req. to file foreign patent (2)
    • Provide information about the priority app to associate
    • (bibliographic info *inventor and applicant names, addresses, citizenship, entity type (smaller companies sometimes get discounts),
    • copy of priority application w/ serial um and filing date *Word file is best,
    • copies of relevant prior art)
  20. Steps req. to file foreign patent (3)
    • Handle formality req:
    • PCT:
    • copy of PCT publication, ISR & Written opinion
    • Powers of attorney (dep. on country)
    • Other

    • Paris and WTO:
    • Copy of application
    • Power of attorney from applicant
    • Assignment if the applicant isn't inventor
    • Certified copy of priority app
    • May require legalization (via Apostille or Consular legalization)
  21. Steps req. to file foreign patent (4)
    Translations (dep. on country, includes formality docs, application and drawings), must specifically instruct associate not to translate if using a trans. company.