Patent granting procedure: How European companies can protect their inventions in the USA

When it comes to protecting an invention with a patent in the United States, the patent granting process must be completed before the USPTO. In the United States, a distinction is made between utility patents, design patents, and plant patents. Utility patents can be divided into provisional and nonprovisional applications. Nonprovisionals largely correspond to what is known as a patent application in Germany and Europe. In this post, we will explain the process for obtaining a utility patent in the United States in detail.

Overview of the patent granting process

Types of US patents

In the United States, there are three main types of patents: utility patents, design patents, and plant patents. Utility patents are the most commonly filed patents and protect new and useful processes, machines, manufacturing methods, or compositions of materials. They can be filed as provisional or nonprovisional applications. Design patents, on the other hand, protect the novel design or aesthetic appearance of a product, but not its functionality. Plant patents are granted for new and distinguishable plant species. This diversity allows inventors to choose the appropriate patent protection depending on the nature of their innovation. It is important for European companies to understand the differences and specifics of these patent types in order to obtain appropriate protection for their inventions in the USA.

Significance for European companies

For European companies, understanding the US patent prosecution process is crucial to securing their innovations in the global marketplace. The US market offers enormous business opportunities, but also significant risks from patent litigation and counterfeiting. A well-thought-out patent prosecution process can provide a decisive competitive advantage. It also helps companies protect their investments in research and development. Because the legal and procedural differences between the European and US patent systems are significant, filing a US patent application requires careful planning and strategic consideration. European companies should familiarize themselves with the specific requirements and deadlines to fully reap the benefits of a US patent. Working with a specialized law firm experienced in both European and US patent law can be extremely beneficial. A strong patent portfolio not only strengthens a market position but is also relevant for investments from US investors.

Filing of the patent application

Components of a complete application

A complete patent application in the U.S. includes several important documents and information that must be carefully prepared and then filed. This includes the Utility Patent Application Transmittal Form or a letter of transmittal that lists the submitted documents. Fees must also be paid for the application, search, and examination. An Application Data Sheet (ADS) is required to indicate priorities or other relevant information. The specification is the heart of the application and should contain a comprehensive description of the invention, including at least one claim and an abstract. Drawings that illustrate the invention in detail may be required. Each inventor must sign an oath or declaration confirming their inventorship. Additional documents such as an assignment, a power of attorney, and an information disclosure statement (IDS) are also necessary to complete the application and comply with the law.

Fees and forms

Filing a U.S. patent application requires payment of fees and specific forms. The filing fee covers processing and registration, while additional fees may apply for search and examination. Additional fees apply for specifications and drawings exceeding 133 pages, or for claims with more than three independent claims, or for claims with more than 20 claims. Payments can be made electronically. The Transmittal Form (Form PTO/AIA/15) lists all documents, while Form PTO/AIA/14 is used for the Application Data Sheet (ADS). These forms are critical for proper filing and avoiding delays.

Examination and granting

Examination procedure

After a patent application is filed, the examination process begins, which is conducted by the United States Patent and Trademark Office (USPTO). First, the applicant receives an acknowledgment, which usually includes a Foreign Filing License. The application is then assigned to a special examination unit (Art Unit) and a responsible patent examiner. The examiner evaluates whether the application meets all patentability requirements, including novelty, inventive step, and sufficiency. If the application is admitted, a Notice of Allowance is issued. Otherwise, a Non-final Office Action is issued, which highlights deficiencies.

Response to examination notices

Once an initial action, known as a non-final office action, is issued, the applicant has the opportunity to respond to the examiner's objections. With a non-final office action, amendments can be made to the claims or description to address the issues raised by the examiner. It is important that the response be substantive and well-reasoned to increase the chances of success. The applicant can also request an examiner interview to discuss directly with the examiner and explore possible solutions. If a final office action is issued after the non-final office action, the applicant can file an after-final response, specifically to claim allowable aspects, or request a request for continued examination (RCE). Alternatively, the applicant can appeal the refusal to the Patent Trial and Appeal Board (PTAB). Each of these options requires a strategic decision to successfully advance the patent application.