Presentation on US Filing

7/30/2019 Presentation on US Filing

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Provisional Filing in India First Filing in IndiaRequest for a foreign filing

permit

Filing in US**12 months*

6 weeks

Publishing (18 months)

Early publication can be filed

Examination Report

Non- final office action- duewithin 3 months

Final Office Action- due within 2

month

Examiner decision (grant/refusal)

US Patent Process

Was the filing a

complete or a

provisional?

File the complete specification (12months)

Provisional

Complete


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Important Deadlines

Filing patent application (either no claim of foreign priority or under

Paris Convention)Due within one year from public disclosure, offer for sale, provisional

filing date, or foreign priority date under the Paris Convention.

Filing U.S. National Stage patent application (under the national stage

of the PCT)

Due within 30 months from the earliest priority date.

Information Disclosure Statement (IDS)

1.Generally before mailing of the first Office Action on the merits

2. Within 3 months from the date the prior art was cited in acorresponding foreign application.

3. At the time of National-Phase filing


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Assignment

At any time during patent application pendency OR even

after issuance.

Certified Priority Document (Assuming application was

filed under Paris Convention)

Before patent issues.

Preliminary Amendment

Before first Office Action

Response to Notice of Missing Parts

Due within two months from the Notice of Missing Parts.

Extension fees can be paid if filed after two months.


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Notice of Publication

Receive 18 months from the earliest priority/filing date.

Response to Election of Species or Restriction Requirement

Due within one month from the Notice. Extension fees can bepaid if filed after one month.

Non-final Office Action on the merits

No timing. It typically happens approximately 2-4 years afterfiling the application.

Amendment or response to Non-final Office Action

Due within 3 months from the Office Action. Extension fees canbe paid if filed after 3 months.


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File a divisional, continuation, or continuation-in-part application

Must be filed while parent application is still pending (i.e., prior toabandonment or payment of issue fee of the parent application)

Certified Priority Document (Assuming application was filed underParis Convention)

Before patent issues.

Final Office Action

No timing. It typically happens approximately 3-9 months afterfiling the amendment.

Amendment or response to Final Office Action

Preferably due within 2 months from the date of the Final OfficeAction.


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File Request for Continued Examination (RCE)

Due within 3 months from the Final Office Action date. Extensionfees can be paid if filed after 3 months.

Notice of Allowance; pay issue fee

Due within 3 months from the Notice of Allowance. Timing cannotbe extended.

Maintenance Fees

Maintenance fees are due at three intervals after issuance in order tokeep the patent active.


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3 years after issuance

Due between 3 and 3 years after issuance. If paid between 3to 4 years after issuance, then government surcharge is due


Due between 7 and 7 years after issuance. If paid between7 to 8 years after issuance, then government surcharge is due


Due between 11 and 11 years after issuance. If paid between11 to 12 years after issuance, then government surcharge is due


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Important stepsOffice of Initial Patent Examination

This is the first place that a patent application goes to inthe U.S. Patent Office. This office is primarily concernedwith reviewing the components of the patent applicationto ensure that all of the components of the applicationare completed. If some component of the application ismissing or is improperly prepared, this office will requestthe proper information or components from the patentapplicant. This office will typically assign the patent aserial number as well.


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Art Unit Once the patent application has cleared the Office of Initial

Patent Examination, it is assigned to an art unit depending onthe technology the invention is primarily concerned with. Theapplication is usually assigned to an examiner shortly afterbeing assigned to an art unit.

i i


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Patent Examination

One of the first things that an examiner may try to determineis the number of inventions claimed in the application. By law,a patent can only have one claimed invention. If the examinerdetermines that there is really more than one claimed invention

in the application, he will request that the inventor restrict theapplication to only one. When the examiner is satisfied thatthere is only one invention in each application, he will reviewthe application to determine if the claimed invention ispatentable.


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RejectionA patent rejection can mean that the examiner has found

some reference that he feels describes the claims of thepatent application.

Sometimes only a few of the claims will be rejected while

other claims are allowed by the examiner. The only wayout is amending the claims or persuasively arguing withthe examiner.

.


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If the examiner does not accept the amendments orarguments, he may issue a final rejection on the case. The

inventor still has several options :1) file another application depending from (meaning linked to)the old application and try to present the invention in such away that the examiner will allow the application;

2) amend the claims or argue with the examiner again, but ifthe examiner still doesnt accept the inventors position the

application will become abandoned;

3) agree with the examiner and give up on the patent

application or

4) file a request and a fee to keep the examination going.


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Notice of allowance Patents give inventors the exclusive right to make, use

or sell their invention for 20 years after the patent isapproved. When the U.S. Patent Office issues a noticeof allowance for a patent, it means that thegovernment has decided your patent is a genuinelynew invention and intends to grants you a patent.Issuefees are drew generally within three months of the

Notice of Allowance.

I f i di l


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Information disclosure statement

An information disclosure statement(often abbreviated as IDS)refers to a submission of relevant background art or information tothe United States Patent and Trademark Office (USPTO) by an

applicant for a patent during the patent prosecution process. Thereis a duty on all patent applicants to disclose prior art or backgroundinformation that may be relevant to the patentability of theapplicant's invention


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Advisory Action After filing a response to a final office action, the examiner may

issue an advisory action that either continues the rejection orhopefully indicates agreement to allow some or all of the claims

(if all the claims will be allowed, a notice of allowability will issueinstead).

R t C ti


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Request or Continue

Examination (RCE)

A request for continued examination (RCE) is a request by aninventor for continued prosecution after the patent office has issueda "final" rejection. An RCE is not considered a continuing patentapplication - rather, prosecution of the pending application isreopened. The inventor pays an additional filing fee and continues

to argue his case with the patent examiner.

Apply to utility or plant applications filed (a) on or after June 8,1995, or international applications filed. The request for continued

examination provisions do not apply to: (1) a provisionalapplication; (2) an application for a utility or plant patent (a) beforeJune 8, 1995; (3) an international application (4) an application for adesign patent; or (5) a patent under re-examination.


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An applicant may obtain continued examination of an applicationby filing a submission and the fee set forth in 37 CFR 1.17(e)prior to the earliest of:

(1) the date a patent is granted (but after payment of the issue feeonly if a petition under 37 CFR 1.313 is granted);

(2) abandonment of the application; or

(3) the date applicant seeks court review of a decision by theBoard of Patent Appeals and Interferences (unless the courtaction is terminated).

An applicant cannot request continued examination of an

application until after the prosecution in the application is closed.


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Notice of allowance If, on examination, it appears that the applicant is entitled to a

patent under the law, a notice of allowance will be sent to theapplicant. The notice of allowance shall specify a sum

constituting the issue fee which must be paid within three monthsfrom the date of mailing of the notice of allowance to avoidabandonment of the application. The sum specified in the noticeof allowance may also include the publication fee, in which casethe issue fee and publication fee must both be paid within three

months from the date of mailing of the notice of allowance toavoid abandonment of the application. This three-month periodis not extendable.


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Thank You

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