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This section provides quick answers to some of the most frequently asked questions about United States patent prosecution. For more detail, click on the links below.
United States Patent and Trademark Office Web Site
General Prosecution
UNITED STATES
Basic Rules
| First to file receives patent |
No. First to invent receives patent (2138.01 MPEP). Priority of inventorship is determined by a procedure called Interference by the Board of Patent Appeals and Interferences. 2300.01 MPEP
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| Languages of application |
English. An application may initially be filed in any language. 608.01 MPEP
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| Requirements for filing date |
Non-provisional applications must include a specification (in any language), at least one claim and, where necessary, drawings. 601.01(a) MPEP. The filing fee, translation of specification into English, and an inventor's Declaration may be filed later. 608.01 MPEP
Provisional application must include a specification and, where necessary, drawings. Filing fee and cover sheet identifying application as provisional can be submitted later. 601.01(b) MPEP
PCT national phase applications must include petition or PCT national entry form for patent application, government filing fee and a copy of PCT application (1893.01 MPEP), unless the application has been previously communicated by the PCT International Search Bureau or originally filed at the United States Patent Office.
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| Deadline to file translation |
Non-provisional: time set by the Office. 608.01 MPEP
Provisional: translation not required (translation is submitted in any non-provisional application claiming benefit of non-English language provisional application). 608.01 MPEP
National phase: translation of the application into English and the declaration may be submitted after the 30-month deadline within a period of time set forth by the United States Patent Office. 608.01 MPEP
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| Inventor/Applicant signature needed at time of filing? |
No, declaration may be submitted later. 201 MPEP
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| Small entity status |
Available for a university, a non-profit organization, an independent inventor or a company having fewer than 500 employees having no obligation to transfer or license to an entity that would not qualify as a small entity. 509.02 MPEP
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| Assignments (S) |
Can be filed at any time during prosecution or after patent issue 301 MPEP, but must be signed by the inventor(s) on the same date or later than the declaration.
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| Deadline for filing a request for examination |
Not applicable. All non-provisional applications are automatically examined.
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| Maintenance fees (S) |
Yes. Three maintenance fees are due during the term of a utility patent, namely at 3.5, 7.5 and 11.5 years after the issue date. Fees may be paid up to six months late with a surcharge. 2506 MPEP, 2590 MPEP
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| File wrapper estoppel |
Yes. Arguments and amendments made during prosecution may be used in interpretation of disputed claim terms and to limit the scope of the doctrine of equivalents.
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| Reinstatement of abandoned applications |
Yes. Applications abandoned unavoidably or unintentionally may be reinstated. 711.03(c), 711.04(c), 1124, 2590 MPEP
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| Duty to disclose prior art |
Yes. 2000 MPEP.
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| Is there a requirement to file first in the US or obtain a foreign filing license where the invention is made in the US? |
Yes. 140 MPEP.
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Statutory Bars
| On sale bar? |
Yes. On sale and offer for sale bars. There is a one year grace period for filing an application following sale or offer for sale of the claimed invention. 2133 MPEP
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| Grace period following public disclosure? |
Yes. There is a one year grace period after public disclosure by inventor(s). 2133 MPEP. The disclosure must be by exactly the same person or persons as named on the patent applications to be eligible for the grace period.
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| Rough estimate of time until receipt of first Office Action |
About 14 months or less is USPTO target in most technical areas. Patent Term Adjustment accrues for each day over 14 months. 2730 MPEP
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| Expedited examination |
Yes. A petition to make special is the request for expedited examination. 708.02 MPEP, 1504.30 MPEP (for design patents). Petitions filed after August 25, 2006 must also comply with 71 Fed. Reg. 36323.
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| Deadline to obtain allowance after receipt of first Office Action |
No.
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| Types of patents |
Utility patents, design patents, plant patents. 901.04 MPEP
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PCT National Phase Applications
| Time limit for national phase entry |
30 months from the priority date. 1893.01(a)(1) MPEP
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| Can National Phase Entry be made after this time limit? |
No. 1893.01(a)(1) MPEP. Applicant may file a petition to revive an abandoned application, but must provide reasons for the abandonment. 711.03(c) MPEP
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| Are copies of the International Application, International Search Report or International Examination Report required? |
No. Assumes that WIPO has had time to transmit these documents to the USPTO by the national entry date or if the PCT application was originally filed in the USPTO.
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| Can prior art be filed by a third party against a pending patent application? |
Yes. A protest can be filed by a third party if filed prior to the date the application was published or a notice of allowance was mailed, whichever occurs first. 1901 MPEP. Patents, publications, or other information must be submitted with an explanation of their pertinency, along with a listing of such information and an English translation of all the necessary and pertinent parts of any non-English information relied upon. 1901 MPEP
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Post-Allowance Issues
| Opposition of allowed application |
A protest cannot be submitted after a notice of allowance was mailed. 1901.04 MPEP. However, during the period of enforceability of a patent, any person may request an ex parte reexamination (2210 MPEP) and any third party may request an inter partes reexamination (2610 MPEP).
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| Patent term |
For patents issued from U.S. non-provisional applications filed on or after June 8, 1995 the term is 20 years from earliest effective U.S. non-provisional filing date (design patents, which have a term of fourteen years from the date of patent grant). For patents in force on June 8, 1995 or for patents issued from U.S. applications filed prior to June 8, 1995, the term is the longer of 17 years from issue date or 20 years from earliest effective U.S. non-provisional filing date. U.S. provisional applications and foreign priority applications do not affect patent term. 2701 MPEP
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| Compulsory Licensing? |
Not generally, but see, for example, US government march-in rights (35 USC 203), antitrust licensing, and mandatory licensing of air pollution prevention inventions (42 USC 7608).
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| Patent term extension? (S) |
Yes, for USPTO delay (2710 MPEP) or Food and Drugs Administration regulatory delay (2750 MPEP).
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| Marking requirements? |
Not mandatory, but recommended in order to avoid limitation on damages. 35 USC 287.
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| Prior user rights? |
Yes, but only for business methods (35 USC 273) and broadening reissue applications (35 USC 252)
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| Reasonable compensation for third party activities prior to grant? |
Available from the U.S. application publication date to U.S. patent issue date if a claim of a U.S. patent is infringed which is substantially identical to the invention as claimed in the published patent application and if infringer had actual notice of published application. 35 USC 154(d)
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| Reissue available? |
Yes. Broadening reissue only available within two years from patent grant. However, where any intent to broaden is indicated in the reissue application within the two years from the patent grant, a broadened claim can later be presented in the reissue after the two year period. Claim is considered a broadening claim if owner would be able to sue any party for infringement who owner previously could not. Not available to recapture previously narrowed claims. 1401 MPEP
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| Reexamination available? |
Yes. Inter partes and ex part reexamination available at any time during patent term. Available where there is "a substantial new question of patentability." 2209, 2609 MPEP
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| Disclaimer of invalid claims available? |
Yes. Statutory disclaimer: owner of patent may file disclaimer of complete claim or claims of patent. 35 USC 253. Examiner may also impose disclaimer on claims in order to reject the claims 706.03(u) MPEP. Terminal disclaimer available to disclaim entire term or any portion of term of patent or patent to be granted. 1490 MPEP
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