Patents
What Is a Patent?
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is
20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed,
subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain
circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling”
the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the
right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid
of the USPTO.
There are three types of patents:
1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new
and useful improvement thereof;
2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
Nature of Patent and Patent Rights.
The patent is issued in the name of the United States under the seal of the United States Patent and Trademark Office, and is either signed by the Director of the
USPTO or is electronically written thereon and attested by an Office official. The patent contains a grant to the patentee, and a printed copy of the specification and
drawing is annexed to the patent and forms a part of it. The grant confers “the right to exclude others from making, using, offering for sale, or selling the invention
throughout the United States or importing the invention into the United States” and its territories and possessions for which the term of the patent shall be generally 20
years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application
under 35 U.S.C. 120, 121 or 365(c), from the date of the earliest such application was filed, and subject to the payment of maintenance fees as provided by law.
The exact nature of the right conferred must be carefully distinguished, and the key is in the words “right to exclude” in the phrase just quoted. The patent does not grant
the right to make, use, offer for sale or sell or import the invention but only grants the exclusive nature of the right. Any person is ordinarily free to make, use, offer for sale
or sell or import anything he/she pleases, and a grant from the government is not necessary. The patent only grants the right to exclude others from making, using,
offering for sale or selling or importing the invention. Since the patent does not grant the right to make, use, offer for sale, or sell, or import the invention, the patentee’s
own right to do so is dependent upon the rights of others and whatever general laws might be applicable. A patentee, merely because he/she has received a patent for
an invention, is not thereby authorized to make, use, offer for sale, or sell, or import the invention if doing so would violate any law. An inventor of a new automobile who
has obtained a patent thereon would not be entitled to use the patented automobile in violation of the laws of a state requiring a license, nor may a patentee sell an
article, the sale of which may be forbidden by a law, merely because a patent has been obtained.
Neither may a patentee make, use, offer for sale, or sell, or import his/her own invention if doing so would infringe the prior rights of others. A patentee may not violate
the federal antitrust laws, such as by resale price agreements or entering into combination in restraints of trade, or the pure food and drug laws, by virtue of having a
patent. Ordinarily there is nothing that prohibits a patentee from making, using, offering for sale, or selling, or importing his/her own invention, unless he/she thereby
infringes another’s patent which is still in force. For example, a patent for an improvement of an original device already patented would be subject to the patent on the
device.
The term of the patent shall be generally 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a
specific reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), from the date of the earliest such application was filed, and subject to the payment
of maintenance fees as provided by law. A maintenance fee is due 3 1/2, 7 1/2 and 11 1/2 years after the original grant for all patents issuing from the applications filed
on and after December 12, 1980. The maintenance fee must be paid at the stipulated times to maintain the patent in force. After the patent has expired anyone may
make, use, offer for sale, or sell or import the invention without permission of the patentee, provided that matter covered by other unexpired patents is not used. The
terms may be extended for certain pharmaceuticals and for certain circumstances as provided by law.
Patent Laws.
The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads “Congress shall have power . . . to
promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The patent laws underwent a
general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code. Additionally, on November
29, 1999, Congress enacted the American Inventors Protection Act of 1999 (AIPA), which further revised the patent laws. See Public Law 106-113, 113 Stat. 1501
(1999).
The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and
Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents.
What Can Be Patented.
The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.
In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and
primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are
made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new
chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.
The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon 42 U.
S.C. 2181 (a).
The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose
and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be
granted a patent.
Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical
phenomena, and abstract ideas are not patentable subject matter.
A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea
or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.
Novelty And Non-Obviousness, Conditions For Obtaining A Patent.
In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if: “(a) the invention was known
or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or
“(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the
application for patent in the United States . . .”
If the invention has been described in a printed publication anywhere in the world, or if it was known or used by others in this country before the date that the applicant
made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this
country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when
the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in
a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will
be lost. The inventor must file on the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries.
Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already
known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used
or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution
of one color for another, or changes in size, are ordinarily not patentable.
Attorneys and Agents.
The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO or Office) to obtain the
patent is an undertaking requiring the knowledge of patent law and rules and Office practice and procedures, as well as knowledge of the scientific or technical matters
involved in the particular invention.
Inventors may prepare their own applications and file them in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or
study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no
assurance that the patent obtained would adequately protect the particular invention.
Most inventors employ the services of registered patent attorneys or patent agents. The law gives the USPTO the power to make rules and regulations governing
conduct and the recognition of patent attorneys and agents to practice before the USPTO. Persons who are not recognized by the USPTO for this practice are not
permitted by law to represent inventors before the USPTO. The USPTO maintains a register of attorneys and agents. To be admitted to this register, a person must
comply with the regulations prescribed by the Office, which require a showing that the person is of good moral character and of good repute and that he/she has the
legal, and scientific and technical qualifications necessary to render applicants for patents a valuable service. Certain of these qualifications must be demonstrated by
the passing of an examination. Those admitted to the examination must have a college degree in engineering or physical science or the equivalent of such a degree.
Who May Apply For A Patent.
According to the law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were
obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If the inventor is
dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is insane, the application for patent may
be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or, if there is no joint inventor available, a person having a
proprietary interest in the invention may apply on behalf of the non-signing inventor.
If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes only a financial contribution is not a joint inventor and
cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as
an inventor.
Officers and employees of the United States Patent and Trademark Office are prohibited by law from applying for a patent or acquiring, directly or indirectly, except by
inheritance or bequest, any patent or any right or interest in any patent.
Application For Patent.
Non-Provisional Application for a Patent:
A non-provisional application for a patent is made to the Director of the United States Patent and Trademark Office and includes:
(1) A written document which comprises a specification (description and claims), and an oath or declaration;
(2) A drawing in those cases in which a drawing is necessary; and
(3) Filing, search, and examination fees. Applicant must determine that small entity status is appropriate before making an assertion of entitlement to small entity status
and paying a small entity fee. Fees change each October. The fee schedule is posted on the USPTO Web site.
All application papers must be in the English language or a translation into the English language will be required along with the required fee set forth in 37 CFR 1.17(i).
All application papers must be legibly written on only one side either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on
flexible, strong, smooth, non-shiny, durable and white paper.
The papers must be presented in a form having sufficient clarity and contrast between the paper and the writing to permit electronic reproduction. Each document in the
application papers must all be the same size - either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with a top margin of at least 2.0 cm
(3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch) and a bottom margin of at least 2.0 cm (3/4 inch) with no holes
made in the submitted papers. It is also required that the spacing on all papers be 1 1/2 or double-spaced and the application papers must be numbered consecutively
(centrally located above or below the text) starting with page one. The specification must have text written in a nonscript font (e.g., Arial, Times Roman, or Courier,
preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm (0.125 inch) high, but may be no smaller than 0.21 cm (0.08 inch)
high (e.g., a font size of 6). The specification must have only a single column of text.
The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.
The portion of the application in which the applicant sets forth the claim or claims is an important part of the application, as it is the claims that define the scope of the
protection afforded by the patent. The claims must commence on a separate physical sheet of paper.
More than one claim may be presented provided they differ from each other. Claims may be presented in independent form (e.g. the claim stands by itself) or in
dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers back to more than one other
claim is considered a “multiple dependent claim.”
The application for patent is not forwarded for examination until all required parts, complying with the rules related thereto, are received. If any application is filed without
all the required parts for obtaining a filing date (incomplete or defective), the applicant will be notified of the deficiencies and given a time period to complete the
application filing (a surcharge may be required)—at which time a filing date as of the date of such a completed submission will be obtained by the applicant. If the
omission is not corrected within a specified time period, the application will be returned or otherwise disposed of; the filing fee if submitted will be refunded less a
handling fee as set forth in the fee schedule.
The filing fee and declaration or oath need not be submitted with the parts requiring a filing date. It is, however, desirable that all parts of the complete application be
deposited in the Office together; otherwise each part must be signed and a letter must accompany each part, accurately and clearly connecting it with the other parts of
the application. If an application which has been accorded a filing date does not include the filing fee or the oath/declaration, applicant will be notified and given a time
period to pay the filing fee, file an oath/declaration and pay a surcharge.
All applications received in the USPTO are numbered in sequential order and the applicant will be informed of the application number and filing date by a filing receipt.
The filing date of an application for patent is the date on which a specification (including at least one claim) and any drawings necessary to understand the subject
matter sought to be patented are received in the USPTO; or the date on which the last part completing the application is received in the case of a previously incomplete
or defective application.
Provisional Application for a Patent:
Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing
in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional
application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with
the invention. Provisional applications may not be filed for design inventions.
The filing date of a provisional application is the date on which a written description of the invention, and drawings if necessary, are received in the USPTO. To be
complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. The applicant
would then have up to 12 months to file a non-provisional application for patent as described above. The claimed subject matter in the later filed non-provisional
application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application. If a provisional application is not filed in
English, and a non-provisional application is filed claiming benefit to the provisional application, a translation of the provisional application will be required. See title 37,
Code of Federal Regulations, Section 1.78(a)(5).
Provisional applications are NOT examined on their merits. A provisional application will become abandoned by the operation of law 12 months from its filing date. The
12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which
claims benefit of the filing date of the provisional application.
A surcharge is required for filing the basic filing fee or the cover sheet on a date later than the filing of the provisional application.
Publication of Patent Applications.
Publication of patent applications is required by the American Inventors Protection Act of 1999 for most plant and utility patent applications filed on or after November
29, 2000. On filing of a plant or utility application on or after November 29, 2000, an applicant may request that the application not be published, but only if the invention
has not been and will not be the subject of an application filed in a foreign country that requires publication 18 months after filing (or earlier claimed priority date) or
under the Patent Cooperation Treaty. Publication occurs after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by
an application. Following publication, the application for patent is no longer held in confidence by the Office and any member of the public may request access to the
entire file history of the application.
As a result of publication, 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 applicant, and a patent issues from the application with a
substantially identical claim. Thus, damages for pre-patent grant infringement by another are now available.
Allowance and Issue of Patent.
If, on examination of the application, or at a later stage during the reconsideration of the application, the patent application is found to be allowable, a Notice of
Allowance and Fee(s) Due will be sent to the applicant, or to applicant’s attorney or agent of record, if any, and a fee for issuing the patent and if applicable, for
publishing the patent application publication (see 37 CFR 1.211-1.221), is due within three months from the date of the notice. If timely payment of the fee(s) is not
made, the application will be regarded as abandoned. See the current fee schedule at www.uspto.gov.
The Director may accept the fee(s) late, if the delay is shown to be unavoidable (35 U.S.C. 41, 37 CFR 1.137(a)) or unintentional (35 U.S.C. 151, 37 CFR 1.137(b)).
When the required fee are paid, the patent issues as soon as possible after the date of payment, dependent upon the volume of printing on hand. The patent grant then
is delivered or mailed on the day of its grant, or as soon thereafter as possible, to the inventor’s attorney or agent if there is one of record, otherwise directly to the
inventor. On the date of the grant, the patent file becomes open to the public for applications not opened earlier by publication of the application.
In cases where the publication of an application or the granting of a patent would be detrimental to the national security, the Comissioner of Patents will order that the
invention be kept secret and shall withhold the publication of the application or the grant of the patent for such period as the national interest requires. The owner of an
application which has been placed under a secrecy order has a right to appeal from the order to the Secretary of Commerce. 35 U.S.C. 181.
Maintenance Fees.
All utility patents that issue from applications filed on and after December 12, 1980 are subject to the payment of maintenance fees which must be paid to maintain the
patent in force. These fees are due at 3 1/2, 7 1/2 and 11 1/2 years from the date the patent is granted and can be paid without a surcharge during the “window-period”
which is the six-month period preceding each due date, e.g., three years to three years and six months. (See fee schedule for a list of maintenance fees.) In submitting
maintenance fees and any necessary surcharges, identification of the patents for which maintenance fees are being paid must include the patent number, and the
application number of the U.S. application for the patent on which the maintenance fee is being paid. If the payment includes identification of only the patent number, the
Office may apply payment to the to the patent identified by patent number in the payment or the Office may return the payment. (See 37, Code of Federal Regulations,
section 1.366(c).)
Failure to pay the current maintenance fee on time may result in expiration of the patent. A six-month grace period is provided when the maintenance fee may be paid
with a surcharge. The grace period is the six-month period immediately following the due date. The USPTO does not mail notices to patent owners that maintenance
fees are due. If, however, the maintenance fee is not paid on time, efforts are made to remind the responsible party that the maintenance fee may be paid during the
grace period with a surcharge.
Design Patents.
The patent laws provide for the granting of design patents to any person who has invented any new and nonobvious ornamental design for an article of manufacture. The
design patent protects only the appearance of an article, but not its structural or functional features. The proceedings relating to granting of design patents are the same
as those relating to other patents with a few differences. See current fee schedule for the filing fee for a design application. A design patent has a term of 14 years from
grant, and no fees are necessary to maintain a design patent in force. If on examination it is determined that an applicant is entitled to a design patent under the law, a
notice of allowance will be sent to the applicant or applicant’s attorney, or agent, calling for the payment of an issue fee. The drawing of the design patent conforms to
the same rules as other drawings, but no reference characters are allowed and the drawing should clearly depict the appearance, since the drawing defines the scope
of patent protection. The specification of a design application is short and ordinarily follows a set form. Only one claim is permitted, following a set form that refers to the
drawing(s).
Plant Patents.
The law also provides for the granting of a patent to anyone who has invented or discovered and asexually reproduced any distinct and new 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.
Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching,
etc. With reference to tuber-propagated plants, for which a plant patent cannot be obtained, the term “tuber” is used in its narrow horticultural sense as meaning a short,
thickened portion of an underground branch. Such plants covered by the term “tuber-propagated” are the Irish potato and the Jerusalem artichoke.
An application for a plant patent consists of the same parts as other applications. The term of a plant patent shall be 20 years from the date on which the application for
the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), from the
date the earliest such application was filed.
The specification should include a complete detailed description of the plant and the characteristics thereof that distinguish the same over related known varieties, and
its antecedents, expressed in botanical terms in the general form followed in standard botanical text books or publications dealing with the varieties of the kind of plant
involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad non-botanical characterization such as commonly found in nursery or seed
catalogs. The specification should also include the origin or parentage of the plant variety sought to be patented and must particularly point out where and in what
manner the variety of plant has been asexually reproduced. The Latin name of the genus and species of the plant should be stated. Where color is a distinctive feature of
the plant, the color should be positively identified in the specification by reference to a designated color as given by a recognized color dictionary. Where the plant
variety originated as a newly found seedling, the specification must fully describe the conditions (cultivation, environment, etc.) under which the seedling was found
growing to establish that it was not found in an uncultivated state.
A plant patent is granted on the entire plant. It therefore follows that only one claim is necessary and only one is permitted. The oath or declaration required of the
applicant in addition to the statements required for other applications must include the statement that the applicant has asexually reproduced the new plant variety. If the
plant is a newly found plant, the oath or declaration must also state that the plant was found in a cultivated area.
Plant patent drawings are not mechanical drawings and should be artistically and competently executed. The drawing must disclose all the distinctive characteristics of
the plant capable of visual representation. When color is a distinguishing characteristic of the new variety, the drawing must be in color. Two duplicate copies of color
drawings must be submitted. All color drawings should include a one-inch margin at the top for Office markings when the patent is printed.
Specimens of the plant variety, its flower or fruit, should not be submitted unless specifically called for by the examiner. The filing fee on each plant application and the
issue fee can be found in the fee schedule. For a qualifying small entity most fees are reduced by half. 35 U.S.C. 41(h)(1). Plant patent applications may be published
pursuant to Title 35, United States Code, Section 122(b), but the publication is not reduced for small entities.
Treaties and Foreign Patents.
Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country, an inventor who wishes patent
protection in other countries must apply for a patent in each of the other countries or in regional patent offices. Almost every country has its own patent law, and a person
desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country.
The laws of many countries differ in various respects from the patent law of the United States. In most foreign countries, publication of the invention before the date of the
application will bar the right to a patent. In most foreign countries maintenance fees are required. Most foreign countries require that the patented invention must be
manufactured in that country after a certain period, usually three years. If there is no manufacture within this period, the patent may be void in some countries, although in
most countries the patent may be subject to the grant of compulsory licenses to any person who may apply for a license.
There is a treaty relating to patents which is adhered to by 168 countries, including the United States, and is known as the Paris Convention for the Protection of
Industrial Property. It provides that each country guarantees to the citizens of the other countries the same rights in patent and trademark matters that it gives to its own
citizens. The treaty also provides for the right of priority in the case of patents, trademarks and industrial designs (design patents). This right means that, on the basis of
a regular first application filed in one of the member countries, the applicant may, within a certain period of time, apply for protection in all the other member countries.
These later applications will then be regarded as if they had been filed on the same day as the first application. Thus, these later applicants will have priority over
applications for the same invention that may have been filed during the same period of time by other persons. Moreover, these later applications, being based on the
first application, will not be invalidated by any acts accomplished in the interval, such as, for example, publication or exploitation of the invention, the sale of copies of the
design, or use of the trademark. The period of time mentioned above, within which the subsequent applications may be filed in the other countries, is 12 months in the
case of first applications for patent and six months in the case of industrial designs and trademarks.
Another treaty, known as the Patent Cooperation Treaty, was negotiated at a diplomatic conference in Washington, D.C., in June of 1970. The treaty came into force on
January 24, 1978, and is presently (as of December 14, 2004) adhered to by over 124 countries, including the United States. The treaty facilitates the filing of
applications for patent on the same invention in member countries by providing, among other things, for centralized filing procedures and a standardized application
format.
The timely filing of an international application affords applicants an international filing date in each country which is designated in the international application and
provides (1) a search of the invention and (2) a later time period within which the national applications for patent must be filed. A number of patent attorneys specialize in
obtaining patents in foreign countries.
Under U.S. law it is necessary, in the case of inventions made in the United States, to obtain a license from the Director of the USPTO before applying for a patent in a
foreign country. Such a license is required if the foreign application is to be filed before an application is filed in the United States or before the expiration of six months
from the filing of an application in the United States unless a filing receipt with a license grant issued earlier. The filing of an application for patent constitutes the request
for a license and the granting or denial of such request is indicated in the filing receipt mailed to each applicant. After six months from the U.S. filing, a license is not
required unless the invention has been ordered to be kept secret. If the invention has been ordered to be kept secret, the consent to the filing abroad must be obtained
from the Director of the USPTO during the period the order of secrecy is in effect.
Foreign Applicants for U.S. Patents.
The patent laws of the United States make no discrimination with respect to the citizenship of the inventor. Any inventor, regardless of his/her citizenship, may apply for a
patent on the same basis as a U.S. citizen. There are, however, a number of particular points of special interest to applicants located in foreign countries.
The application for patent in the United States must be made by the inventor and the inventor must sign the oath or declaration (with certain exceptions), differing from
the law in many countries where the signature of the inventor and an oath of inventorship are not necessary. If the inventor is dead, the application may be made by
his/her executor or administrator, or equivalent, and in the case of mental disability it may be made by his/her legal representative (guardian).
No U.S. patent can be obtained if the invention was patented abroad before applying in the United States by the inventor or his/her legal representatives if the foreign
application was filed more than 12 months before filing in the United States. Six months are allowed in the case of designs. 35 U.S.C. 172.
An application for a patent filed in the United States by any person who has previously regularly filed an application for a patent for the same invention in a foreign
country which affords similar privileges to citizens of the United States shall have the same force and effect for the purpose of overcoming intervening acts of others as if
filed in the United States on the date on which the application for a patent for the same invention was first filed in such foreign country. This is the case, provided the
application in the United States is filed within 12 months (six months in the case of a design patent) from the earliest date on which any such foreign application was
filed and claims priority under 35 U.S.C. 119(b) to the foreign application. A copy of the foreign application certified by the patent office of the country in which it was
filed is required to secure this right of priority.
If any application for patent has been filed in any foreign country by the applicant or by his/her legal representatives or assigns prior to his/her application in the United
States, in order to claim priority under 35 U.S.C. 119(b) to the foreign application, the applicant must, in the oath or declaration accompanying the application, state the
country in which the earliest such application has been filed, giving the date of filing the application. If foreign priority is claimed, any foreign application having a filing
date before that of the application on which priority is claimed must also be identified in the oath or declaration. Where no claim for foreign priority under 35 U.S.C. 119
(b) is made in the U.S. application, the applicant should identify in the oath or declaration those foreign applications disclosing similar inventions filed more than a year
before the filing in the United States.
An oath or alternatively a declaration must be made with respect to every application. When the applicant is in a foreign country the oath or affirmation may be before
any diplomatic or consular officer of the United States, or before any officer having an official seal and authorized to administer oaths in the foreign country, whose
authority shall be proved by a certificate of a diplomatic or consular officer of the United States. The oath is attested in all cases by the proper official seal of the officer
before whom the oath is made.
When the oath is taken before an officer in the country foreign to the United States, all the application papers (except the drawing) must be attached together and a
ribbon passed one or more times through all the sheets of the application, and the ends of the ribbons brought together under the seal before the latter is affixed and
impressed, or each sheet must be impressed with the official seal of the officer before whom the oath was taken. A declaration merely requires the use of a specific
averment found in 37 CFR 1.68.
If the application is filed by the legal representative (executor, administrator, etc.) of a deceased inventor, the legal representative must make the oath or declaration.
When a declaration is used, the ribboning procedure is not necessary, nor is it necessary to appear before an official in connection with the making of a declaration.
A foreign applicant may be represented by any patent attorney or agent who is registered to practice before the United States Patent and Trademark Office.
For More Information, Please visit the USPTO Patent web page.
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is
20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed,
subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain
circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling”
the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the
right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid
of the USPTO.
There are three types of patents:
1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new
and useful improvement thereof;
2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
Nature of Patent and Patent Rights.
The patent is issued in the name of the United States under the seal of the United States Patent and Trademark Office, and is either signed by the Director of the
USPTO or is electronically written thereon and attested by an Office official. The patent contains a grant to the patentee, and a printed copy of the specification and
drawing is annexed to the patent and forms a part of it. The grant confers “the right to exclude others from making, using, offering for sale, or selling the invention
throughout the United States or importing the invention into the United States” and its territories and possessions for which the term of the patent shall be generally 20
years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application
under 35 U.S.C. 120, 121 or 365(c), from the date of the earliest such application was filed, and subject to the payment of maintenance fees as provided by law.
The exact nature of the right conferred must be carefully distinguished, and the key is in the words “right to exclude” in the phrase just quoted. The patent does not grant
the right to make, use, offer for sale or sell or import the invention but only grants the exclusive nature of the right. Any person is ordinarily free to make, use, offer for sale
or sell or import anything he/she pleases, and a grant from the government is not necessary. The patent only grants the right to exclude others from making, using,
offering for sale or selling or importing the invention. Since the patent does not grant the right to make, use, offer for sale, or sell, or import the invention, the patentee’s
own right to do so is dependent upon the rights of others and whatever general laws might be applicable. A patentee, merely because he/she has received a patent for
an invention, is not thereby authorized to make, use, offer for sale, or sell, or import the invention if doing so would violate any law. An inventor of a new automobile who
has obtained a patent thereon would not be entitled to use the patented automobile in violation of the laws of a state requiring a license, nor may a patentee sell an
article, the sale of which may be forbidden by a law, merely because a patent has been obtained.
Neither may a patentee make, use, offer for sale, or sell, or import his/her own invention if doing so would infringe the prior rights of others. A patentee may not violate
the federal antitrust laws, such as by resale price agreements or entering into combination in restraints of trade, or the pure food and drug laws, by virtue of having a
patent. Ordinarily there is nothing that prohibits a patentee from making, using, offering for sale, or selling, or importing his/her own invention, unless he/she thereby
infringes another’s patent which is still in force. For example, a patent for an improvement of an original device already patented would be subject to the patent on the
device.
The term of the patent shall be generally 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a
specific reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), from the date of the earliest such application was filed, and subject to the payment
of maintenance fees as provided by law. A maintenance fee is due 3 1/2, 7 1/2 and 11 1/2 years after the original grant for all patents issuing from the applications filed
on and after December 12, 1980. The maintenance fee must be paid at the stipulated times to maintain the patent in force. After the patent has expired anyone may
make, use, offer for sale, or sell or import the invention without permission of the patentee, provided that matter covered by other unexpired patents is not used. The
terms may be extended for certain pharmaceuticals and for certain circumstances as provided by law.
Patent Laws.
The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads “Congress shall have power . . . to
promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The patent laws underwent a
general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code. Additionally, on November
29, 1999, Congress enacted the American Inventors Protection Act of 1999 (AIPA), which further revised the patent laws. See Public Law 106-113, 113 Stat. 1501
(1999).
The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and
Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents.
What Can Be Patented.
The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.
In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and
primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are
made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new
chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.
The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon 42 U.
S.C. 2181 (a).
The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose
and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be
granted a patent.
Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical
phenomena, and abstract ideas are not patentable subject matter.
A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea
or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.
Novelty And Non-Obviousness, Conditions For Obtaining A Patent.
In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if: “(a) the invention was known
or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or
“(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the
application for patent in the United States . . .”
If the invention has been described in a printed publication anywhere in the world, or if it was known or used by others in this country before the date that the applicant
made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this
country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when
the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in
a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will
be lost. The inventor must file on the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries.
Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already
known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used
or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution
of one color for another, or changes in size, are ordinarily not patentable.
Attorneys and Agents.
The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO or Office) to obtain the
patent is an undertaking requiring the knowledge of patent law and rules and Office practice and procedures, as well as knowledge of the scientific or technical matters
involved in the particular invention.
Inventors may prepare their own applications and file them in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or
study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no
assurance that the patent obtained would adequately protect the particular invention.
Most inventors employ the services of registered patent attorneys or patent agents. The law gives the USPTO the power to make rules and regulations governing
conduct and the recognition of patent attorneys and agents to practice before the USPTO. Persons who are not recognized by the USPTO for this practice are not
permitted by law to represent inventors before the USPTO. The USPTO maintains a register of attorneys and agents. To be admitted to this register, a person must
comply with the regulations prescribed by the Office, which require a showing that the person is of good moral character and of good repute and that he/she has the
legal, and scientific and technical qualifications necessary to render applicants for patents a valuable service. Certain of these qualifications must be demonstrated by
the passing of an examination. Those admitted to the examination must have a college degree in engineering or physical science or the equivalent of such a degree.
Who May Apply For A Patent.
According to the law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were
obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If the inventor is
dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is insane, the application for patent may
be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or, if there is no joint inventor available, a person having a
proprietary interest in the invention may apply on behalf of the non-signing inventor.
If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes only a financial contribution is not a joint inventor and
cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as
an inventor.
Officers and employees of the United States Patent and Trademark Office are prohibited by law from applying for a patent or acquiring, directly or indirectly, except by
inheritance or bequest, any patent or any right or interest in any patent.
Application For Patent.
Non-Provisional Application for a Patent:
A non-provisional application for a patent is made to the Director of the United States Patent and Trademark Office and includes:
(1) A written document which comprises a specification (description and claims), and an oath or declaration;
(2) A drawing in those cases in which a drawing is necessary; and
(3) Filing, search, and examination fees. Applicant must determine that small entity status is appropriate before making an assertion of entitlement to small entity status
and paying a small entity fee. Fees change each October. The fee schedule is posted on the USPTO Web site.
All application papers must be in the English language or a translation into the English language will be required along with the required fee set forth in 37 CFR 1.17(i).
All application papers must be legibly written on only one side either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on
flexible, strong, smooth, non-shiny, durable and white paper.
The papers must be presented in a form having sufficient clarity and contrast between the paper and the writing to permit electronic reproduction. Each document in the
application papers must all be the same size - either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with a top margin of at least 2.0 cm
(3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch) and a bottom margin of at least 2.0 cm (3/4 inch) with no holes
made in the submitted papers. It is also required that the spacing on all papers be 1 1/2 or double-spaced and the application papers must be numbered consecutively
(centrally located above or below the text) starting with page one. The specification must have text written in a nonscript font (e.g., Arial, Times Roman, or Courier,
preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm (0.125 inch) high, but may be no smaller than 0.21 cm (0.08 inch)
high (e.g., a font size of 6). The specification must have only a single column of text.
The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.
The portion of the application in which the applicant sets forth the claim or claims is an important part of the application, as it is the claims that define the scope of the
protection afforded by the patent. The claims must commence on a separate physical sheet of paper.
More than one claim may be presented provided they differ from each other. Claims may be presented in independent form (e.g. the claim stands by itself) or in
dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers back to more than one other
claim is considered a “multiple dependent claim.”
The application for patent is not forwarded for examination until all required parts, complying with the rules related thereto, are received. If any application is filed without
all the required parts for obtaining a filing date (incomplete or defective), the applicant will be notified of the deficiencies and given a time period to complete the
application filing (a surcharge may be required)—at which time a filing date as of the date of such a completed submission will be obtained by the applicant. If the
omission is not corrected within a specified time period, the application will be returned or otherwise disposed of; the filing fee if submitted will be refunded less a
handling fee as set forth in the fee schedule.
The filing fee and declaration or oath need not be submitted with the parts requiring a filing date. It is, however, desirable that all parts of the complete application be
deposited in the Office together; otherwise each part must be signed and a letter must accompany each part, accurately and clearly connecting it with the other parts of
the application. If an application which has been accorded a filing date does not include the filing fee or the oath/declaration, applicant will be notified and given a time
period to pay the filing fee, file an oath/declaration and pay a surcharge.
All applications received in the USPTO are numbered in sequential order and the applicant will be informed of the application number and filing date by a filing receipt.
The filing date of an application for patent is the date on which a specification (including at least one claim) and any drawings necessary to understand the subject
matter sought to be patented are received in the USPTO; or the date on which the last part completing the application is received in the case of a previously incomplete
or defective application.
Provisional Application for a Patent:
Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing
in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional
application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with
the invention. Provisional applications may not be filed for design inventions.
The filing date of a provisional application is the date on which a written description of the invention, and drawings if necessary, are received in the USPTO. To be
complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. The applicant
would then have up to 12 months to file a non-provisional application for patent as described above. The claimed subject matter in the later filed non-provisional
application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application. If a provisional application is not filed in
English, and a non-provisional application is filed claiming benefit to the provisional application, a translation of the provisional application will be required. See title 37,
Code of Federal Regulations, Section 1.78(a)(5).
Provisional applications are NOT examined on their merits. A provisional application will become abandoned by the operation of law 12 months from its filing date. The
12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which
claims benefit of the filing date of the provisional application.
A surcharge is required for filing the basic filing fee or the cover sheet on a date later than the filing of the provisional application.
Publication of Patent Applications.
Publication of patent applications is required by the American Inventors Protection Act of 1999 for most plant and utility patent applications filed on or after November
29, 2000. On filing of a plant or utility application on or after November 29, 2000, an applicant may request that the application not be published, but only if the invention
has not been and will not be the subject of an application filed in a foreign country that requires publication 18 months after filing (or earlier claimed priority date) or
under the Patent Cooperation Treaty. Publication occurs after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by
an application. Following publication, the application for patent is no longer held in confidence by the Office and any member of the public may request access to the
entire file history of the application.
As a result of publication, 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 applicant, and a patent issues from the application with a
substantially identical claim. Thus, damages for pre-patent grant infringement by another are now available.
Allowance and Issue of Patent.
If, on examination of the application, or at a later stage during the reconsideration of the application, the patent application is found to be allowable, a Notice of
Allowance and Fee(s) Due will be sent to the applicant, or to applicant’s attorney or agent of record, if any, and a fee for issuing the patent and if applicable, for
publishing the patent application publication (see 37 CFR 1.211-1.221), is due within three months from the date of the notice. If timely payment of the fee(s) is not
made, the application will be regarded as abandoned. See the current fee schedule at www.uspto.gov.
The Director may accept the fee(s) late, if the delay is shown to be unavoidable (35 U.S.C. 41, 37 CFR 1.137(a)) or unintentional (35 U.S.C. 151, 37 CFR 1.137(b)).
When the required fee are paid, the patent issues as soon as possible after the date of payment, dependent upon the volume of printing on hand. The patent grant then
is delivered or mailed on the day of its grant, or as soon thereafter as possible, to the inventor’s attorney or agent if there is one of record, otherwise directly to the
inventor. On the date of the grant, the patent file becomes open to the public for applications not opened earlier by publication of the application.
In cases where the publication of an application or the granting of a patent would be detrimental to the national security, the Comissioner of Patents will order that the
invention be kept secret and shall withhold the publication of the application or the grant of the patent for such period as the national interest requires. The owner of an
application which has been placed under a secrecy order has a right to appeal from the order to the Secretary of Commerce. 35 U.S.C. 181.
Maintenance Fees.
All utility patents that issue from applications filed on and after December 12, 1980 are subject to the payment of maintenance fees which must be paid to maintain the
patent in force. These fees are due at 3 1/2, 7 1/2 and 11 1/2 years from the date the patent is granted and can be paid without a surcharge during the “window-period”
which is the six-month period preceding each due date, e.g., three years to three years and six months. (See fee schedule for a list of maintenance fees.) In submitting
maintenance fees and any necessary surcharges, identification of the patents for which maintenance fees are being paid must include the patent number, and the
application number of the U.S. application for the patent on which the maintenance fee is being paid. If the payment includes identification of only the patent number, the
Office may apply payment to the to the patent identified by patent number in the payment or the Office may return the payment. (See 37, Code of Federal Regulations,
section 1.366(c).)
Failure to pay the current maintenance fee on time may result in expiration of the patent. A six-month grace period is provided when the maintenance fee may be paid
with a surcharge. The grace period is the six-month period immediately following the due date. The USPTO does not mail notices to patent owners that maintenance
fees are due. If, however, the maintenance fee is not paid on time, efforts are made to remind the responsible party that the maintenance fee may be paid during the
grace period with a surcharge.
Design Patents.
The patent laws provide for the granting of design patents to any person who has invented any new and nonobvious ornamental design for an article of manufacture. The
design patent protects only the appearance of an article, but not its structural or functional features. The proceedings relating to granting of design patents are the same
as those relating to other patents with a few differences. See current fee schedule for the filing fee for a design application. A design patent has a term of 14 years from
grant, and no fees are necessary to maintain a design patent in force. If on examination it is determined that an applicant is entitled to a design patent under the law, a
notice of allowance will be sent to the applicant or applicant’s attorney, or agent, calling for the payment of an issue fee. The drawing of the design patent conforms to
the same rules as other drawings, but no reference characters are allowed and the drawing should clearly depict the appearance, since the drawing defines the scope
of patent protection. The specification of a design application is short and ordinarily follows a set form. Only one claim is permitted, following a set form that refers to the
drawing(s).
Plant Patents.
The law also provides for the granting of a patent to anyone who has invented or discovered and asexually reproduced any distinct and new 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.
Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching,
etc. With reference to tuber-propagated plants, for which a plant patent cannot be obtained, the term “tuber” is used in its narrow horticultural sense as meaning a short,
thickened portion of an underground branch. Such plants covered by the term “tuber-propagated” are the Irish potato and the Jerusalem artichoke.
An application for a plant patent consists of the same parts as other applications. The term of a plant patent shall be 20 years from the date on which the application for
the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), from the
date the earliest such application was filed.
The specification should include a complete detailed description of the plant and the characteristics thereof that distinguish the same over related known varieties, and
its antecedents, expressed in botanical terms in the general form followed in standard botanical text books or publications dealing with the varieties of the kind of plant
involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad non-botanical characterization such as commonly found in nursery or seed
catalogs. The specification should also include the origin or parentage of the plant variety sought to be patented and must particularly point out where and in what
manner the variety of plant has been asexually reproduced. The Latin name of the genus and species of the plant should be stated. Where color is a distinctive feature of
the plant, the color should be positively identified in the specification by reference to a designated color as given by a recognized color dictionary. Where the plant
variety originated as a newly found seedling, the specification must fully describe the conditions (cultivation, environment, etc.) under which the seedling was found
growing to establish that it was not found in an uncultivated state.
A plant patent is granted on the entire plant. It therefore follows that only one claim is necessary and only one is permitted. The oath or declaration required of the
applicant in addition to the statements required for other applications must include the statement that the applicant has asexually reproduced the new plant variety. If the
plant is a newly found plant, the oath or declaration must also state that the plant was found in a cultivated area.
Plant patent drawings are not mechanical drawings and should be artistically and competently executed. The drawing must disclose all the distinctive characteristics of
the plant capable of visual representation. When color is a distinguishing characteristic of the new variety, the drawing must be in color. Two duplicate copies of color
drawings must be submitted. All color drawings should include a one-inch margin at the top for Office markings when the patent is printed.
Specimens of the plant variety, its flower or fruit, should not be submitted unless specifically called for by the examiner. The filing fee on each plant application and the
issue fee can be found in the fee schedule. For a qualifying small entity most fees are reduced by half. 35 U.S.C. 41(h)(1). Plant patent applications may be published
pursuant to Title 35, United States Code, Section 122(b), but the publication is not reduced for small entities.
Treaties and Foreign Patents.
Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country, an inventor who wishes patent
protection in other countries must apply for a patent in each of the other countries or in regional patent offices. Almost every country has its own patent law, and a person
desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country.
The laws of many countries differ in various respects from the patent law of the United States. In most foreign countries, publication of the invention before the date of the
application will bar the right to a patent. In most foreign countries maintenance fees are required. Most foreign countries require that the patented invention must be
manufactured in that country after a certain period, usually three years. If there is no manufacture within this period, the patent may be void in some countries, although in
most countries the patent may be subject to the grant of compulsory licenses to any person who may apply for a license.
There is a treaty relating to patents which is adhered to by 168 countries, including the United States, and is known as the Paris Convention for the Protection of
Industrial Property. It provides that each country guarantees to the citizens of the other countries the same rights in patent and trademark matters that it gives to its own
citizens. The treaty also provides for the right of priority in the case of patents, trademarks and industrial designs (design patents). This right means that, on the basis of
a regular first application filed in one of the member countries, the applicant may, within a certain period of time, apply for protection in all the other member countries.
These later applications will then be regarded as if they had been filed on the same day as the first application. Thus, these later applicants will have priority over
applications for the same invention that may have been filed during the same period of time by other persons. Moreover, these later applications, being based on the
first application, will not be invalidated by any acts accomplished in the interval, such as, for example, publication or exploitation of the invention, the sale of copies of the
design, or use of the trademark. The period of time mentioned above, within which the subsequent applications may be filed in the other countries, is 12 months in the
case of first applications for patent and six months in the case of industrial designs and trademarks.
Another treaty, known as the Patent Cooperation Treaty, was negotiated at a diplomatic conference in Washington, D.C., in June of 1970. The treaty came into force on
January 24, 1978, and is presently (as of December 14, 2004) adhered to by over 124 countries, including the United States. The treaty facilitates the filing of
applications for patent on the same invention in member countries by providing, among other things, for centralized filing procedures and a standardized application
format.
The timely filing of an international application affords applicants an international filing date in each country which is designated in the international application and
provides (1) a search of the invention and (2) a later time period within which the national applications for patent must be filed. A number of patent attorneys specialize in
obtaining patents in foreign countries.
Under U.S. law it is necessary, in the case of inventions made in the United States, to obtain a license from the Director of the USPTO before applying for a patent in a
foreign country. Such a license is required if the foreign application is to be filed before an application is filed in the United States or before the expiration of six months
from the filing of an application in the United States unless a filing receipt with a license grant issued earlier. The filing of an application for patent constitutes the request
for a license and the granting or denial of such request is indicated in the filing receipt mailed to each applicant. After six months from the U.S. filing, a license is not
required unless the invention has been ordered to be kept secret. If the invention has been ordered to be kept secret, the consent to the filing abroad must be obtained
from the Director of the USPTO during the period the order of secrecy is in effect.
Foreign Applicants for U.S. Patents.
The patent laws of the United States make no discrimination with respect to the citizenship of the inventor. Any inventor, regardless of his/her citizenship, may apply for a
patent on the same basis as a U.S. citizen. There are, however, a number of particular points of special interest to applicants located in foreign countries.
The application for patent in the United States must be made by the inventor and the inventor must sign the oath or declaration (with certain exceptions), differing from
the law in many countries where the signature of the inventor and an oath of inventorship are not necessary. If the inventor is dead, the application may be made by
his/her executor or administrator, or equivalent, and in the case of mental disability it may be made by his/her legal representative (guardian).
No U.S. patent can be obtained if the invention was patented abroad before applying in the United States by the inventor or his/her legal representatives if the foreign
application was filed more than 12 months before filing in the United States. Six months are allowed in the case of designs. 35 U.S.C. 172.
An application for a patent filed in the United States by any person who has previously regularly filed an application for a patent for the same invention in a foreign
country which affords similar privileges to citizens of the United States shall have the same force and effect for the purpose of overcoming intervening acts of others as if
filed in the United States on the date on which the application for a patent for the same invention was first filed in such foreign country. This is the case, provided the
application in the United States is filed within 12 months (six months in the case of a design patent) from the earliest date on which any such foreign application was
filed and claims priority under 35 U.S.C. 119(b) to the foreign application. A copy of the foreign application certified by the patent office of the country in which it was
filed is required to secure this right of priority.
If any application for patent has been filed in any foreign country by the applicant or by his/her legal representatives or assigns prior to his/her application in the United
States, in order to claim priority under 35 U.S.C. 119(b) to the foreign application, the applicant must, in the oath or declaration accompanying the application, state the
country in which the earliest such application has been filed, giving the date of filing the application. If foreign priority is claimed, any foreign application having a filing
date before that of the application on which priority is claimed must also be identified in the oath or declaration. Where no claim for foreign priority under 35 U.S.C. 119
(b) is made in the U.S. application, the applicant should identify in the oath or declaration those foreign applications disclosing similar inventions filed more than a year
before the filing in the United States.
An oath or alternatively a declaration must be made with respect to every application. When the applicant is in a foreign country the oath or affirmation may be before
any diplomatic or consular officer of the United States, or before any officer having an official seal and authorized to administer oaths in the foreign country, whose
authority shall be proved by a certificate of a diplomatic or consular officer of the United States. The oath is attested in all cases by the proper official seal of the officer
before whom the oath is made.
When the oath is taken before an officer in the country foreign to the United States, all the application papers (except the drawing) must be attached together and a
ribbon passed one or more times through all the sheets of the application, and the ends of the ribbons brought together under the seal before the latter is affixed and
impressed, or each sheet must be impressed with the official seal of the officer before whom the oath was taken. A declaration merely requires the use of a specific
averment found in 37 CFR 1.68.
If the application is filed by the legal representative (executor, administrator, etc.) of a deceased inventor, the legal representative must make the oath or declaration.
When a declaration is used, the ribboning procedure is not necessary, nor is it necessary to appear before an official in connection with the making of a declaration.
A foreign applicant may be represented by any patent attorney or agent who is registered to practice before the United States Patent and Trademark Office.
For More Information, Please visit the USPTO Patent web page.
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