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Patent Information Service and Patent Education: Applying Patents

The University of Macau Library provides Patent Information Service to support UM’s research and collaborative innovation.

Applying Patents

US Patent Application Process

► US patent application notes:

First, 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

There are three types of patents:

  1. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
  2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
  3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

The categories of patent applications can be referred to: https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applicationsproceedingsObjects 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.

There 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);

  • Apply for a patent to the United States through the Paris Convention ( only 12 months priority);
  • Apply for a patent to the United States through the PCT Patent Cooperation Treaty (priority right can be up to 30 months).

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.

Patent 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.

 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.

Non-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.

The USPTO transacts business in writing. Applicants may submit replies to Office actions via the following channels:

Restriction & 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:

  • There are two or more independent or related inventions in the application. For example, if the examiner thinks that the creative reasons of the two technical schemes are different, even if it is technically relevant, it can be regarded as two different groups. invention.
  • Bring a serious burden of seriousness. The criteria for reviewing the burden are whether there are different types, different search categories, different technical areas, and so on. The two criteria are not available.

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:

  • Individual subclasses are independent or patentably distinct. Independence refers to an embodiment in which each subclass must be unrelated in design, operation, or effect, that is, independent of each other, and patent distinguishability refers to at least a subgroup of a subgroup relative to another subgroup ( It is assumed to be prior art) to be non-obvious.
  • Bring a serious burden of seriousness. The criteria for reviewing the burden are whether there are different types, different search categories, different technical areas, and so on. The two criteria are not available.

If 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.

The 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:

  1. The term of protection for invention patents is 20 years, counting from the date of filing. After the invention patent is granted, the maintenance fee or annual fee will be paid, otherwise the patent right will be invalid. The period for paying the maintenance fee is: the third year and a half from the date of registration authorization, and the annual fee or maintenance fee must be paid for the seventh and a half years and the eleventh year and a half. The scope of protection relates to a patent or a patent for a method of using the composition, which can be extended for up to 5 years.
  2. The patent protection period for new plant varieties is 20 years, counting from the date of application. After the plant patent is granted, there is no need to pay a maintenance fee or an annual fee.
  3. The patent protection period of the design is 14 years, counting from the date of registration authorization, no maintenance fee or annual fee is required after authorization. 

The way to view and pay fees:https://fees.uspto.gov/MaintenanceFees

 

► Reference and website:

  1. General information concerning patents https://www.uspto.gov/patents-getting-started/general-information-concerning-patents
  2. Patent process overview https://www.uspto.gov/patents-getting-started/patent-process-overview#step1
  3. American Patent System https://baike.baidu.com/item/%E7%BE%8E%E5%9B%BD%E4%B8%93%E5%88%A9%E5%88%B6%E5%BA%A6/4642364?fr=aladdin
  4. Patent Laws, Consolidated35 U.S.C§121(2017)
  5. Patent Rules, Consolidated37 CFR 1.142(2017)
  6. Patent Rules, Consolidated37 CFR 1.146(2017)
  7. 曹桓. 淺析美國專利實踐中的限制性要求[J].中國發明與專利,2016(4):98-99.
  8. 美國專利商標局(USPTO)專利在線申請網址:https://www.uspto.gov/trademarks-application-process/filing-online

 

 

                                                           Written by: Gao Xueqi,

Master Student of Civil Law and Intellectual Property Law, Faculty of Law, University of Macau

 

中國專利申請流程

 

注意事項:

1.中國專利有三種類型:發明專利、實用新型專利和外觀設計專利。

發明專利保護方法和產品的技術改進;實用新型專利只保護產品;外觀設計專利的保護範則是疇對於以產品為載體的外觀,設計產品的形狀、圖案、色彩等。在申請專利之前,申請人首先要根據《專利法》對這三種專利的定義,判斷專利所屬類型。

2.申請專利應當提交哪些申請文件:

(1)申請發明專利的,申請檔應當包括:發明專利請求書、說明書摘要(必要時應當提交摘要附圖)、權利要求書、說明書(必要時應當提交說明書附圖);

(2)申請實用新型專利的,申請檔應當包括:實用新型專利請求書、說明書摘要及其摘要附圖、權利要求書、說明書、說明書附圖;

(3)申請外觀設計專利的,申請檔應當包括:外觀設計專利請求書、圖片或者照片(要求保護色彩的,應當提交彩色圖片或者照片)以及對該外觀設計的簡要說明。

3.專利申請的提交形式

申請人應當以電子形式或者書面形式提交專利申請。

(1)申請人以電子檔形式申請專利的,應當事先辦理電子申請使用者註冊手續,通過專利局專利電子申請系統向專利局提交申請檔及其他文件。

(2)申請人以書面形式申請專利的,可以將申請檔及其他檔當面交到專利局的受理視窗或寄交至“國家智慧財產權局專利局受理處”(以下簡稱專利局受理處),也可以當面交到設在地方的專利局代辦處的受理視窗或寄交至“國家智慧財產權局專利局×××代辦處”。

4.提交申請時如何排列申請文件

(1)發明或者實用新型專利申請檔應當按照下列順序排列:請求書、說明書摘要、摘要附圖、權利要求書、說明書(含氨基酸或核苷酸序列表)、說明書附圖。

(2)外觀設計專利申請檔應當按照下列順序排列:請求書、圖片或照片、簡要說明。申請檔各部分都應當分別用阿拉伯數字順序編寫頁碼。

5.更多具體注意事項請登入國家知識產權局查看http://www.sipo.gov.cn/zhfwpt/zlsqzn_pt/zlsqspcxjs/zlsqxgsxjs/index.htm

 

參考:

1. 國家知識產權局:http://www.sipo.gov.cn/zhfwpt/zlsqzn_pt/zlsqspcxjs/zlsqxgsxjs/index.htm

2. 專利申請的一般流程和注意事項:http://www.siilu.com/news/20190327/13680.shtml

 

 

撰文:澳門大學法學院國際法專業碩士 王嘉苗

 

 

Overview of the procedure for the grant of a European patent

: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. 

: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:

  • an indication that a European patent is sought
  • particulars identifying the applicant
  • a description of the invention or
  • a reference to a previously filed application.

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. 

: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. 

: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.

: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.

: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.

: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.

: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.

 

References

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:

  1. Filing: you file an international application with a national or regional patent Office or WIPO, complying with the PCT formality requirements, in one language, and you pay one set of fees.
  2. International Search: an “International Searching Authority” (ISA) (one of the world’s major patent Offices) identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention’s potential patentability.
  3. International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of your international application is disclosed to the world.
  4. Supplementary International Search (optional): a second ISA identifies, at your request, published documents which may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.
  5. International Preliminary Examination (optional): one of the ISAs at your request, carries out an additional patentability analysis, usually on an amended version of your application.
  6. National Phase: after the end of the PCT procedure, usually at 30 months from the earliest filing date of your initial application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.

 

 

Written by:JIANG LEI

Master Student of Civil Law and Intellectual Property Law, Faculty of Law, University of Macau