Patents Comparative Guide

Author:Mr Anthony Del Monaco
Profession:Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
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1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

The primary sources of patent law in the United States are the US Constitution, federal statutes and regulations and case law. Article I, Section 8, Clause 8 of the US Constitution grants Congress the power "[t]o 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".

Pursuant to this grant, Congress has enacted statutes that govern different aspects of patent law, including patentable subject matter, conditions for patentability and remedies for infringement. These statutes are primarily codified in Title 35 of the United States Code. The US Patent and Trademark Office (USPTO) administers the patent laws as they relate to the granting of patents and has passed federal regulations governing its operations, which are codified in Title 37 of the Code of Federal Regulations.

Lastly, US district courts and the US International Trade Commission (ITC) also interpret patent statutes and regulations. The US Court of Appeals for the Federal Circuit has exclusive appellate jurisdiction for patent cases, and its decisions are binding on all US federal district courts and the US ITC. The Supreme Court will occasionally hear appeals from the Federal Circuit and its decisions are binding on the Federal Circuit, the US district courts and the ITC.

1.2 Who can register a patent?

Only the inventor, co-inventors or a party to which the inventor has assigned the invention may apply for a patent (35 USC § 118). An inventor must be a human (35 USC § 100(f)), but an assignee may be either a person or a non-human entity, such as a university or corporation. Inventors or assignees can apply for a patent themselves or engage a licensed patent agent or patent attorney to represent them before the USPTO.

If the inventor is unable to apply for a patent - for example, if the inventor is deceased or legally incapacitated - a legal representative may apply for a patent on behalf of the inventor (35 USC § 117).

Officers and employees of the USPTO cannot apply for or acquire the rights to any patents "during the period of their appointments and for one year thereafter" (35 USC § 4).

2 Rights

2.1 What rights are obtained when a patent is registered?

A patent is "a grant to the patentee, his heirs, and assigns, of 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, and if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof" (35 USC § 154(a)).

In the case of a plant patent, "the grant shall include the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States" (35 USC § 163).

2.2 How can a patent owner enforce its rights?

Once a patent is issued by the US Patent and Trademark Office (USPTO), the patent owner can enforce its right to exclude others through litigation, either in a federal court or at the US International Trade Commission (ITC).

US district courts have original jurisdiction to litigate all civil claims relating to patents (28 USC §§ 1331, 1338(a)). The ITC's jurisdiction is narrower. Under Section 337 of the Tariff Act of 1930, the ITC has jurisdiction to hear cases involving the import of articles that would infringe a US patent or the import of articles made by a process covered by a US patent (19 USC § 1337).

A patent owner may appeal a final district court or ITC decision to the US Court of Appeals for the Federal Circuit (28 USC § 1295). Federal Circuit decisions can be further appealed to the US Supreme Court by a petition for writ of certiorari (US Const art 3, § 2; 28 USC § 1254).

2.3 For how long are patents enforceable?

Subject to the payment of maintenance fees, utility and plant patents expire 20 years after the earliest effective filing date (35 USC § 154(a)(2)). Patents are not usually enforceable for 20 years, however, because the USPTO must issue the patent before it becomes enforceable. Thus, patents are enforceable from the time they issue until 20 years after the earliest effective filing date.

US design patents resulting from applications filed on or after 13 May 2015 have a 15-year term from the date of grant. Design patents issued from applications filed before 13 May 2015 have a 14-year term from the date of grant (35 USC § 173).

See question 3.6 for a discussion of patent term adjustment and extension, which may be available for qualifying patents.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

In the United States, patents are filed with, and prosecuted before, the US Patent and Trademark Office (USPTO).

3.2 What is the cost of registration?

The United States has a patent examination system, as opposed to a registration system. Applicants seeking a patent (utility, design or plant) file an application requesting examination by the USPTO. Except for provisional applications, for which only a filing fee is required, each application for a patent requires payment of a basic filing application fee, plus the appropriate search and examination fees and an issue fee. Additional claim fees are also due based on the number of claims presented (more than three independent claims and more than 20 total claims) and whether multiple dependent claims are presented. Up-to-date information on filing fees may be found at www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule. If the applicant qualifies as a small entity (37 CFR § 1.27) or micro entity (37 CFR § 1.29), any fees are subject to reduction as set forth in the USPTO fee schedule.

3.3 What are the grounds to reject a patent application?

The USPTO may reject utility patent application claims for:

failing to meet utility requirements or recite patentable subject matter (35 USC § 101); being anticipated by the prior art (or lacking novelty) (35 USC § 102); being obvious in view of the prior art (or lacking inventiveness) (35 USC § 103); or failing to meet the written description support, enablement and definiteness requirements (35 USC § 112). The USPTO can also reject an application for failure to disclose the best mode (35 USC § 112), although this is no longer a basis on which any claim may be cancelled or held invalid or otherwise unenforceable in patent validity or infringement proceedings.

In addition to these statutory grounds, a patent application can be rejected on double patenting grounds. There are generally two types of double patenting rejections. One is a 'same invention' type double patenting rejection based on 35 USC § 101, where the USPTO can reject a claim that is identical to a claim in a previously issued patent or pending application. The second is a 'non-statutory-type' double patenting (ODP) rejection, where the USPTO can reject a claim that, while not identical, is also not patentably distinguishable from a claim in a previously issued patent or pending application. ODP is a judicially created doctrine that "is designed to prevent an inventor from securing a second, later expiring patent for the same invention" (AbbVie Inc v Mathilda & Terence Kennedy Inst of Rheumatology Tr, 764 F3d 1366, 1373 (Fed Cir 2014)). An ODP rejection can be overcome by filing a terminal disclaimer. For double patenting to apply, the patents or applications identified in the rejection must have at least one common inventor or common applicant, and/or be commonly assigned or owned, or non-commonly assigned or owned but subject to a joint research agreement.

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

The USPTO takes part in the Patent Prosecution Highway programme, whereby an applicant may request fast-track examination of US claims corresponding to claims allowed by a participating patent office in another country.

Other ways to accelerate or fast track examination patent applications include:

a petition to make special; the Accelerated Examination programme; and the Prioritised Examination (Track 1) programme. A 'petition to make special' may be filed at any time during the pendency of a patent application in order to have the application examined sooner than a regular filed patent application. The goal of the USPTO is to examine and reach a final disposition (ie, allowance, final rejection or abandonment) of a patent application made special within one year of filing. Petitions based on the following grounds may be made without a fee:

the age of the inventor (65 or older); the inventor's failing health; or inventions associated with environmental protection, energy conservation, superconductive materials or counterterrorism. Other applications can be subject to a petition to make special upon payment of a fee, including the following:

The invention relates to DNA research, diagnosis, treatment or prevention of HIV, AIDS or cancer; The applicant has a prospective manufacturer that is prepared to begin manufacturing the invention, but will not manufacture unless it is certain that a patent will be granted; There is an infringing device or product on the market; or A small entity is filing a biotechnology application. The Accelerated Examination programme allows for the examination of a patent application in an expedited manner and provides for a final disposition (ie, allowance, final rejection or abandonment) of a patent application within 12 months of the filing date of the patent application. To qualify for the...

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