Patents

Why Patent in the U.S.?

Obtaining patent protection is a requirement for many businesses, especially those involved in leading-edge technologies. The U.S., being among the largest markets in the world, is a worthwhile market for patent protection. More patent applications for U.S. patents are now filed by companies based outside the U.S. than inside the U.S.

 

Claiming Priority

One of the requirements for obtaining a patent for an invention is novelty.  A novelty search is performed to determine if a description of the invention was publicly available before the filing date of the patent application.  If prior disclosure of the invention is found, the application is denied.  Claiming priority is a commonly used procedure for those filing patent applications in  more than one country.  If one files an application for patent in Sweden and then files an application for the same invention in the U.S. within 12 months, it is possible to "claim priority" to the Swedish application and obtain an "effective" filing date that is the date the Swedish application was filed.  This means that the novelty search conducted in the United States will use the same filing date as the Swedish patent application.  Consequently, public disclosures of the invention made after the filing of the "priority" application cannot be used as prior art to reject patent claim based upon novelty.

 

Patent Cooperation Treaty (PCT)

The PCT process is a means for facilitating and simplifying the filing of patent applications in multiple countries.  The PCT process in and of itself does not result in the issuance of any patents.  There is no such thing as a "world patent."  Rather than simultaneously filing national patent applications in many different countries, the PCT process allows one to file an application first in a single country and then file a PCT application within 12 months of the first filed application.  One may also file a PCT application before filing a national application in any country.  The PCT application may be converted into one or more national (national-stage) applications that are filed with the patent offices in countries selected by the applicant at the time the PCT is filed.  There are absolute deadlines for filing national-stage applications once the initial application is filed.  The PCT application itself can be filed with one of a number of patent offices around the world including the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO).  Tomas Friend LLC has experience with preparing, filing, and prosecuting PCT applications with the USPTO.  

 

Patent Filing Strategies

Several strategic options are available to those seeking patent protection in more than one country.  The options include the language and venue for the initial application as well as the selection of countries in which to file national-stage applications.  Factors that influence the strategy include how quickly patent protection is desired, the technology to be protected, and costs including filing fees, translations, and representation.  Tomas Friend LLC helps educate clients about obtaining U.S. patent protection, using the PCT process in relation to obtaining U.S. patent protection, and how to include U.S. patent protection in their overall patent filing strategies.

 

Patent Protection in the United States

If one applies for a patent in Sweden, a patent application for the same invention may be submitted in the U.S. within 12 months of the Swedish application and claim priority to the Swedish application.  Patent law in the U.S. differs significantly  from patent law in other countries and is changing over time.  In the Unites States, a patent is issued to the "first to invent" an invention and not the "first to apply" for a patent.  Also, the inventors of an invention the applicants for a patent.  An owner of an invention may file a patent application but list the inventors as applicant and provide signed declarations from the inventors, in most cases.