- What is patentable subject matter in the United States?
- What is patentable subject matter in the EU, Canada and Japan
- What is a domestic patent?
- Enforcing a domestic patent in the United States
- What is a regional patent?
- What is a PCT (international) application?
- What is a provisional patent application?
- What is a nonprovisional patent application?
- What is the difference between a provisional patent application and a nonprovisional patent application?
- What is the life of a patent
If you apply for and are granted a patent in the United States, it is not valid elsewhere unless you also apply for patents in other countries. A US patent grants “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. Article I Section 8 of the U.S. Constitution https://www.usconstitution.net/xconst_A1Sec8.html grants Congress the 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.” The US Patent and Trademark Office (USPTO) oversees and performs examinations of patent examinations. The US Patent and Trademark Office (USPTO) https://www.uspto.gov/patents-application-process/patenttrialandappealboard hears appeals to adverse examiner decisions and conducts trials. U.S. federal courts of appeals have exclusive court jurisdiction of patent matters when they are litigated in the courts.
We have already seen that not everything may be patented, and this is also true in the United States, which designates patentable subject matter and what subject matter must be excluded from patentability.
In the United States, there are three different kind patent of patents.
• Utility patents are for manufactured articles and machines as well as new processes or composition of matter. There are far more utility patent applications than other types.
• Design patents are for original ornamental design for an article of manufacture.
• Plant patents are for discovery or asexual reproduction of new plant varieties.
For subject matter for a utility patent to be considered patentable, it must adhere to these standards:
• Be new or novel
• Be useful
• Be a machine, manufacture, process or composition of matter as defined in §35 U.S.C. 101 patent
• Be non-obvious. In other words, it can’t be some obvious addition or extension to an existing patent
• Must be kept secret until the patent application is filed
§35 U.S.C. 101 patent states that “Whoever 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 therefor, subject to the conditions and requirements of this title.” For subject matter to be patentable in the United States, it must meet not only legislative but also judicial standards. U.S. courts have carved out exceptions to patentable subject matter that include laws of nature, abstract ideas and natural phenomena patent
Patent laws vary across the world, and not every idea is patentable. Patents are governed by the laws of individual countries and international treaties. Many countries specify what is patent eligible and exclude certain subject matter from patentability.
Patentability in the EU
Patents in the European Union (EU) countries are governed by each individual country. However, the European Patent Convention (EPC) patent has established base rules for when an invention is patentable. To be patent eligible, a utility invention must have these attributes:
• Novelty: The invention must be new or novel. It must be an innovation. It cannot have been made public any place in the world even if outside the EU. The European Patent Office (EPO) is more specific in what it considers novel than the United States Patent and Trademark Office.
• Inventive Step: From the viewpoint of a technological expert in the area, the invention cannot be an obvious next step to a prior patented invention.
• Industrially Applicable: The invention must be useful in industry. This includes agriculture. “Industry” means the use is not purely aesthetic or intellectual. Medical treatments do not apply.
Article 52(2) EPC patent provides a list of examples that are not considered inventions and are therefore not patentable subject matter in the EU.
These include
• Discoveries, scientific theories and mathematical methods
• Aesthetic creations
• Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers
• Presentations of information
Patentability in Canada
In Canada, only inventions as defined by categories in the Patent Act patent are patentable. They must be novel, not obvious (based on an inventive step) and have a utility, but they are still not patentable unless they fall into one of these five categories defined by the Canadian Intellectual Property Office patent
• Art
• Process
• Machine
• Manufacture
• Composition of Matter
Section 27(8) patent of the Patent Act excludes “mere scientific principle or abstract theorem.”
Patentability in the United Kingdom
The United Kingdom Intellectual Property Office (UKPO) patent, oversees patents and lays out rules for patentability in the United Kingdom.
According to Section 1: Patentability, Sections 1.01 – 1.47 of the Manual of Patent Practice patent
A patent may be granted only for an invention that meets these conditions
• The invention is new
• It involves an inventive step
• It is capable of industrial application
• The grant of a patent for it is not excluded in other sections of the law
Section 1(2) goes on to list some items that are not considered inventions and therefore are not patent eligible. These include
• A discovery, scientific theory or mathematical method
• A literary, dramatic, musical or artistic work or other aesthetic creation
• A scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer
• The presentation of information
These are just basic requirements, and there are others.
Patentability in Japan
Japan Patent Office: patent oversees patents in Japan. Article 1 of the Patent Act patent defines inventions which are patentable.
Article 1 of the Patent Act provides that “inventions” are to be protected. Article 2 defines inventions as creation of technical ideas of a high level which uses laws of nature. Article 29 says that only those inventions that are industrially useful may be patented.
Here are categories that are not considered to be inventions and do not meet the standard of creation of technical ideas using laws of nature in Japan:
• Discoveries that are not actually inventions
• Anything contrary to a law of nature
• Inventions not using a law of nature
• Inventions that are not based on technical ideals
• Those applications that clearly are unable to solve the problem as claimed
A domestic patent is simply one that is applied for and enforceable in the country where the patent application was filed, and the application granted. So, if you are granted a patent in the United States but do not file applications in other countries, you can only enforce it within the United States. You can’t stop someone in another country from producing or selling the subject of your patent in another country.
Inventors and businesses depend on the law to protect intellectual property they have researched, built and developed. Without this kind of protection, technological progress would be stymied. To clarify, let’s distinguish patents patent from trademarks, servicemarks and copyrights in the United States.
• Patent: A patent for an invention is the grant of a property right issued by the United States Patent and Trademark Office. It grants the right to the owner of the patent to enforce excluding others from producing the patented item within the jurisdiction of the patent. The United States Patent and Trademark Office generally grants patents for 20 years from the date of application, but that time may sometimes be extended.
• Trademark and Servicemark: A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. For example, companies trademark brand names and logos.
• Copyright: Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic and other intellectual works.
To enforce a patent that has been granted in the United States, the owner of the patent must take action if another infringes the patent by manufacturing, selling, putting up for sale or importing the patented item as described in 35 U.S. Code § 271 patent.
The patent owner may sue for damages to be compensated for patent infringement under 35 U.S.C. § 284 patent, lost profits, and in some egregious cases, the patent owner may be awarded enhanced damages up to three times the actual damages.
The patent owner may sue in federal court for patent infringement only after their patent is issued. However, under 35 U.S. Code § 154 patent, if you have not yet been granted your patent, but you have filed for it, you may be able to get royalty damages for infringing activities specified in the statute if the patent is substantially identical to the subject of the claim and if the infringing party had “actual notice” of the patent application.
Direct Infringement
Although the United States Patent Act does not specify between direct and indirect infringement, direct infringement is considered to be when someone “without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent” under 35 U.S.C. § 271(a) patent.
Direct infringement does not require knowledge of the patent or intent to infringe.
Indirect Infringement
A person may also indirectly infringe a patent under 35 U.S.C. § 271(b) patent by inducing infringement” and 35 U.S.C. § 271(c) patent by offering to sell or import into the United States “a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention” knowing it has been made or adapted for the purpose of infringing a patent. Indirect infringement requires some knowledge that the patent exists and an intent to infringe it. Indirect infringement can only occur if there has also been a direct infringement. Indirect infringement may be committed by a party contributing to another’s direct infringement.
Some countries have cooperated to form regional patent offices where patents may be filed, searched and examined. When you get a patent in a regional office, it is valid in all member counties.
The world’s regional patent offices patent are
• African Intellectual Property Organization (OAPI) patent: OAPI or AIPO) is a union of French speaking African countries patent which are Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.
• African Regional Intellectual Property Organization (ARIPO): patent ARIPO is a union of some English speaking African countries: patent Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sao Tome and Príncipe, Sierra Leone, Somalia, Sudan, Eswatini, Tanzania, Uganda, Zambia and Zimbabwe.
• Eurasian Patent Organization (EAPO): patent EAPO member countries are Turkmenistan, Republic of Belarus, Republic of Tajikistan, Russian Federation, Republic of Kazakhstan, Azerbaijan Republic, Kyrgyz Republic and the Republic of Armenia. The official language is Russian.
• European Patent Organisation (EPO): patent Member states patent are Albania, Austria, Belgium, Bulgaria, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, United Kingdom, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, Former Yugoslav Republic of Macedonia, Malta, Netherlands, Norway, Poland, Portugal, Romania, Serbia, Sweden, Slovenia, Slovakia, San Marino and Turkey.
• Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent office): patent Member states patent are Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and United Arab Emirates (UAE).
Let’s look at the EPO as an example. The European Patent Organisation (EPO) was set up to administrate the European Patent Convention (EPC) which was created in 1973. Today, if you file a patent application in the European Patent Office in any of the countries that are members that are part of the European Patent Convention, then you can get a patent in all EPO member countries with a single application. Your patent will be treated as a national patent in each of the member states once it is granted. You do, however, have the option of only filing an application in an individual country if you so choose.
Before the European Patent Convention, it was necessary to apply in each individual country for a patent, and each application had to be filed in the national language. The EPO has vastly streamlined the process for getting patent protection in all member countries. It makes protection easier, less expensive, more uniform and more reliable.
There is no such thing as an international patent, but there is a way to preserve your patent in approximately 150 member countries in the Patent Cooperation Treaty (PCT) patent while you decide where beyond your original country of patent application you would like to file another patent application. Most countries where you are likely to want to file a patent are members of the PCT including the United States.
Once you file a patent application in a PCT member state, you have one year to file a PCT application on the patent (also called an “international application”.) Filing the PCT application gives you another 18 months to file a national or a regional patent application. The advantage is a granted patent will have the same date as the original, earliest filing. Whoever files first gets the patent, so this is important.
The PCT procedure patent can be summarized as follows:
1. File: File a PCT application with a national or regional patent office or the World Intellectual Property Organization (WIPO). You can file in one language, but you must comply with PCT formality requirements.
2. Search: An international search is triggered with you file the PCT application. An International Searching Authority (ISA) performs the search and gives a written opinion of patentability.
3. International Publication: 18 months following your earliest filing date, your PCT application is made public.
4. Optional Supplementary International Search: You can request that a second ISA search for published documents that were not found by the first ISA.
5. Optional International Preliminary Examination: You can request that one of the ISAs do another patentability analysis. Generally, this is done after you submit an amended application.
6. National Phase: after the end of the PCT procedure, you can pursue your patent application in the national or regional patent office of the countries where you would like to have a patent. This is usually 30 months from your first patent application.
To clarify, the PCT application does not ever grant you a patent in and of itself. Rather it preserves your right to file in other nations or regions and get the benefit of your initial filing date. You may decide after bringing your product to market that it is not commercially viable in the countries you had originally thought or that you want to abandon the project completely. In this case, you need not file for patents in other countries or regions. Thus, filing a PCT application not only preserves your filing date, but it can save you quite a lot of money if you choose not to move forward with your idea.
A provisional patent application (PPA) patent is a temporary measure that enables the filer to get the protection of a filing date without the costs and examination procedures of filing for a nonprovisional or “regular” patent application. However, a nonprovisional application must be filed within a year of filing the PPA to retain the benefit of the filing date of the PPA. A filer can use the year to determine the viability and marketability of the invention, improve it, seek additional financing or whatever else may require more time. The PPA is not made public until and unless the filer goes ahead and files a nonprovisional patent application.
Should the filer fail to file for a nonprovisional patent within a year after filing for the provisional patent, they will lose the benefit of the PPA’s filing date. Be aware that most countries outside the United States also base filing time on the date of the PPA, so when you file your nonprovisional U.S. patent, you will probably have to file any foreign applications at the same time in order to retain the PPA filing date. You will not be able to retain the PPA filing date if your PPA is deemed not to have adequately described the nonprovisional application.
Filing dates are critical, so it is important that you adequately preserve the earliest filing date possible. A later filing date could mean that something similar has been applied for or come onto the market, and your invention may not be deemed patentable due to lack of novelty. You may be able to show evidence that your invention was created substantially before the patent filing date, but that is not always easy. Otherwise, the filing date is considered the date when publications, public use and sales may be used as “prior art” against the invention. “Prior art” is a standard that patent offices use to show whether an invention is non-obvious and novel. Another hazard is that the invention could be made public in foreign nations between the time of the PPA and the nonprovisional patent application. It is, therefore, important that the content of your PPA is adequate and that you know from the beginning about all aspects of patenting your invention in all countries that interest you, including understanding the factors of public disclosure of an invention. Otherwise, you could lose patenting rights in some countries.
A nonprovisional patent application patent is a normal or conventional patent application that the United States Trademark and Patent Office will examine. If the application is approved, your patent will be granted. Once you have your patent, you can enforce it against others who try to create, sell or import the same innovation into the country where you hold the patent. You do not have to file a provisional patent application before filing a nonprovisional patent application. A nonprovisional patent application is complex, and you must follow all the rules and regulations if you expect your patent to be approved.
As already described in the section above titled “What is a Domestic Patent?,” there are three kinds of nonprovisional patent applications in the United States. They are for utility, design and plants. A utility patent covers how an invention operates, design covers how it looks and a plant patent is for a new type of plant.
Delivering a Nonprovisional Utility Patent Application
Utility patent applications patent are far more numerous than the other types. There are three ways to file a nonprovisional utility patent.
• The USPTO’s electronic filing system (EFS-Web)
• U.S. mail to the office in Alexandria, Virginia
• Hand delivery to the office in Alexandria, Virginia
Be aware there is usually an additional $400 charge for the non-electronic option for filing a nonprovisional utility patent application. You can get more information on EFS-Web patent on the USPTO website.
Applying for a Nonprovisional Utility Patent
A nonprovisional utility patent application must be in English or be accompanied by a translation. It must also have the following in this order:
• Utility Patent Application Transmittal Form or Transmittal Letter: This lists what is being filed, the applicants, type of application, title of the invention and any enclosures.
• Fees: Appropriate fees include filing, search and examination fees.
• Application Data Sheet patent (See 37 CFR § 1.76 patent
• Specification: The specification must include at least one claim and a description. The description of the invention should detail how it is made and used. The specification ends with claims to the invention.
• Any necessary drawings: If drawings are needed to understand the application, you must include them.
• An oath or declaration: An oath or declaration is a formal statement that must be made by the inventor in a nonprovisional application, including utility, design, plant and reissue applications. Either form PTO/AIA/01 patent or PTO/AIA/08patent may be used to make the required declaration in a utility application.
• Nucleotide and Amino Acid Sequence Listing (when necessary)
• Large Tables or Computer Listings (when necessary)
For more information see the USTPO’s Nonprovisional (Utility) Patent Application Filing Guide patent
Provisional patent applications and nonprovisional patent applications are very different animals. Here are the basic differences.
Purpose
Nonprovisional: The purpose of filing a nonprovisional patent application is to obtain a patent that grants enforcement rights to exclude others from manufacturing, selling or importing your invention. It starts the legal ball rolling toward getting you enforcement rights.
Provisional: The purpose of a provisional to preserve a fling date and get a year’s grace to perfect your invention, get financing, test the market and or do whatever else you need before filing for a nonprovisional patent application. A provisional patent application does not result in a patent being granted, and it is not necessary to file a provisional patent application before filing a nonprovisional application. You might look at a provisional patent application as holding your place in line.
Speed and Effort
Nonprovisional: Nonprovisional patent applications are highly structured and must be able to hold up to examination by the USPTO before a patent is granted. If you are wise, you will involve a lawyer with preparing your nonprovisional patent application, because the procedure is complex and lengthy.
Provisional: Provisional patent applications are not examined, and they are easy and fast to file. However, you should still take care, because a nonprovisional patent application you file later will not garner the benefit of the provisional patent application filing date if you did not adequately describe your invention in the provisional application.
Cost
Nonprovisional: A nonprovisional patent application is more expensive to file than a provisional application, plus you will likely be paying attorney fees. Currently, the cost to file is $800.
Provisional: You may be able to submit a provisional patent application on your own without an attorney, because it only requires basic descriptions and drawings. But you must be sure you have adequately described your invention in the provisional application, so you will be able to maintain your provisional application filing date when you file a nonprovisional application. Currently, cost to file a provisional patent application is $130.
Privacy
Nonprovisional: A nonprovisional patent application is a matter of public record.
Provisional: A provisional patent application is confidential.
Nonprovisional: the date you file your nonprovisional patent application is the first day of your 20-year patent term.
Provisional: The date you file a provisional application does not count toward the 20-year patent term if you do go ahead a file a nonprovisional application within the year.
