► US patent application notes:
①First, review the list of what can and cannot be patented and determine if your invention falls into one of those categories. Second, learn the basics of the patenting process from the materials provided by the USPTO at 800-PTO-9199 or 703-308-HELP or under "General Information." Next, a search of all previous public disclosures (prior art) including, but not limited to previously patented inventions in the U.S. (prior art) should be conducted to determine if your invention has been publicly disclosed and thus is not patentable. Secondly, applicants should check whether the creative standards are achieved: creative or non-obvious, which is an important requirement for obtaining patents. If the difference between the content of the patent application and the prior art is tiny that it will be apparent to those skilled in the art upon completion of the invention, the patent cannot be obtained. A search of foreign patents and printed publications should also be conducted. The best advice for the novice is to contact the nearest Patent and Trademark Resource Center (PTRC) and seek out search experts to help in setting up a search strategy. For related searches, please refer to the "seven-step strategy" recommendations by USPTO. https://www.uspto.gov/learning-and-resources/support-centers/patent-and-trademark-resource-centers-ptrc/resources/seven
②There are three types of patents:
The categories of patent applications can be referred to: https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applicationsproceedings. Objects which are not covered by US patent law: Objects that cannot be patented include but not limited to human organs, natural laws, physical phenomena, abstract concepts, mathematical methods and substances that exist in nature in nature. It should be noted that Chinese patent systems is different from American as computer software, business methods, animal and disease diagnosis and treatment methods are objects that can be protected by patent law in the United States.
③There are three ways to apply for a patent in the United States:
Apply for a patent directly to the United States (requires a confidentiality review in advance by the Chinese Patent Office. After the confidentiality review is passed, you can apply for a patent directly to the United States);
When submitting the application, the application fee, search fee, examination fee and application documents must be submitted at the same time, otherwise the late payment will be incurred.
④Patent Disclosure: After the formal examination is passed, the US Patent and Trademark Office may disclose the patent application within 18 months from the filing date or priority date, and may also disclose it according to the applicant's requirements.
⑤ At the trial stage of the trial committee, the applicant can check the submission status of the patent application through the Patent Application Information Search (PAIR) system. The Patent Application Information Retrieval (PAIR) system provides USPTO customers a safe, simple, and secure way to retrieve and download information regarding patent application status. There are two PAIR applications, Public PAIR and Private PAIR. Public PAIR provides access to issued patents and published applications. Private PAIR provides secure real-time access to pending application status and history using digital certificates.
⑥Non-Final Office Action：The non-final rebuttal given by the patent examiner requires the patent applicant to make an appropriate written response in order to continue to sue the application. The applicant's written response must respond to the various refusals and objections raised by the examiner.
⑦The USPTO transacts business in writing. Applicants may submit replies to Office actions via the following channels:
⑧Restriction & Election of Species
The restrictive selection requirements in US patent examination are further divided into the limitations of the invention and the selection of subcategories. For the limitation of the invention, the requirements are grouped according to the difference of the inventive ideas. If there are two or more separate and distinguishable inventions in a patent application, the invention may be claimed to be limited to the invention. The specific requirements are:
For the subclass of Election of Species, it is directed to multiple parallel, alternative implementations of the object, ie, the technical solution. A selection request can be made when the application contains a generic claim and multiple independent or patented subcategories. The specific criteria for the decision are:
⑨If the patent application meets the relevant legal requirements, the US Patent and Trademark Office grants a patent to the invention and announces the patent. The applicant must go through the patent registration formalities within three months from the date of receipt of the authorization notice and pay the registration fee.
⑩The Continuation Application (the technical plan is unchanged and the scope of protection is modified) means that the original application is the basic parent case, and the application filed by modifying the scope of patent protection without modifying the substance of the invention should normally After the final verification and approval, and before the original application has not been abandoned, the patent application shall be approved by modifying the patent claims without modifying the patent specification, and the original filing date shall be retained.
The Divisional Application (similar to the domestic partial priority requirement) means that when the original application needs to add new substantive content, it is based on the original application and applies for part of the continuous case before the original application is waived. The same part of the original case, the application date is the same as the original case, and the newly added part is the filing date of the new consecutive case.
► Other supplement on patent maintenance:
US patent protection period:
► Reference and website:
Written by: Gao Xueqi,
Master Student of Civil Law and Intellectual Property Law, Faculty of Law, University of Macau
①：The Patent Organizations in Europe do not accept applications for utility model patents.The European Patent Office accepts applications under the European Patent Convention (EPC) and the patent cooperation treaty (PCT). If you are seeking protection in only a few countries, the best approach may be to apply directly to each country office for a national patent. The application can be submitted in any language in the European Patent Office. However, the official languages of the European Patent Office are English, French and German. If the application is not submitted in any of these languages, translation must be submitted.
②：The first step in the European Patent Granting Procedure is the examination on filing. This includes checking whether all necessary information and documentation has been provided in order to give the filing date of the application.
The following are required:
If no claims are filed, they need to be submitted within two months.
This is followed by a formalities examination relating to certain formal aspects of the application, including the form and content of the grant request, drawings and abstract, designation of inventors, appointment of professional representatives, necessary translations and fees due.
③：At the same time as the formal review, a European search report was drafted listing all documents available to the Office related to the assessment of novelty and creativity. The search report is based on patent claims, but the description and any drawings are also considered. Immediately after preparation, the search report will be sent to the applicant together with a copy of any cited documents and a preliminary opinion on whether the claimed invention and application meet the requirements of the European Patent Convention.
④：The application is published - normally together with the search report - 18 months after the date of filing or, if priority was claimed, the priority date. Applicants then have six months to decide whether or not to pursue their application by requesting substantive examination. Alternatively, an applicant who has requested examination already will be invited to confirm whether the application should proceed. Within the same time limit the applicant must pay the appropriate designation fee and, if applicable, the extension fees. From the date of publication, a European patent application confers provisional protection on the invention in the states designated in the application. However, depending on the relevant national law, it may be necessary to file a translation of the claims with the patent office in question and have this translation published.
⑤：Following a request for review, the European Patent Office examines whether a European Patent Application and invention meets the requirements of the European Patent Convention and whether a patent may be granted. The division is normally composed of three inspectors, one of whom is in contact with the applicant or the representative. Decisions on applications are taken by the reviewing departments as a whole to ensure maximum objectivity. If the Examining Authority decides that a patent may be granted, it will decide accordingly. Once the translation of the claim has been submitted and the grant and publication costs have been paid, a description of the grant is published in the European Patent Gazette. The granting decision shall take effect from the date of publication.
⑥：After a European Patent is granted, third parties (usually competitors of the applicant) may object if they believe the patent should not be granted. For example, this may be because the invention lacks novelty or does not involve creative steps. Notice of opposition may be filed only within nine months of the grant mentioned in the European Patent Gazette. The opposition is dealt with by the opposition sector, which is usually composed of three inspectors.
⑦：This stage may also consist of revocation or limitation proceedings initiated by the patent proprietor himself. At any time after the grant of the patent, the patent proprietor may request the revocation or limitation of his patent. The decision to limit or to revoke the European patent takes effect on the date on which it is published in the European Patent Bulletin and applies ab initio to all contracting states in respect of which the patent was granted.
⑧：Decisions of the European Patent Office – refusing an application or in opposition cases, for example – are open to appeal. Decisions on appeals are taken by the independent boards of appeal. In certain cases it may be possible to file a petition for review by the Enlarged Board of Appeal.
1. How to apply for a European patent https://www.epo.org/applying/basics.html
2.Overview of the procedure for the grant of a European patent：http://documents.epo.org/projects/babylon/eponot.nsf/0/F12DAE5D123AE049C12582A5005E324D/$File/European_patent_grant_process_en.pdf
Written by:Wang Jiamiao
Master Student of International Law, Faculty of Law, University of Macau
WIPO Patent Application Process
The PCT is an international treaty with more than 150 Contracting States.1 The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
The PCT procedure includes:
Written by:JIANG LEI
Master Student of Civil Law and Intellectual Property Law, Faculty of Law, University of Macau
University of Macau
Macao Economic Bureau
Patent Offices and Patent Search Platforms