How may an invention be patented?
In the US, an invention may be patented if described and defined in enough detail to be made or used (35 U.S.C. § 112), and if the USPTO determines the invention is novel (35 U.S.C. § 102), not obvious (35 U.S.C. § 103), and directed to patent-eligible subject matter (35 U.S.C. § 101). An invention is presented to the USPTO in a patent application describing and claiming the invention. We write patent applications describing and claiming inventors' inventions, and work with USPTO examiners to prosecute the patent applications through the USPTO.
If you have an invention you would like to discuss, please let us know.
Is my invention patentable?
Maybe. The scope of patentable subject matter is limited by court decisions in addition to 35 U.S.C. § 101. Please contact us for more information.
What is a provisional patent application?
A provisional patent application temporarily 'holds your place' in line with respect to filing dates in the USPTO. A provisional application for patent (provisional application) is a U.S. national application filed in the USPTO under 35 U.S.C. § 111(b). A provisional application is not required to have a formal patent claim or an oath or declaration. Provisional applications also should not include any information disclosure (prior art) statement since provisional applications are not examined. A provisional application provides the means to establish an early effective filing date in a later filed nonprovisional patent application filed under 35 U.S.C. § 111(a). It also allows the term "Patent Pending" to be applied in connection with the description of the invention.
What is a PCT patent application?
The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, "an international application," in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in any State or region that is party to the PCT.
We filed a Provisional Patent Application ("Application A") over a year ago; may we still file a Non-provisional claiming benefit of Priority to "Application A?" (Missed Filing Non-provisional within Provisional Priority Year (Missed Filing Non-provisional before Provisional Expiration))
Perhaps. The period to file a subsequent application claiming priority to a parent case may be up to fourteen months in some circumstances (MPEP 211.01(a)II, PCT Rule 26bis.3, 37 C.F.R. § 1.78(b)), if the benefit of the prior-filed application is restored. Even if the benefit of a prior-filed application is restored, some rights may have been lost, and some jurisdictions (for example, non-US jurisdictions) may not recognize the restored benefit claim. Please contact us for more information.
We filed a Provisional Patent Application ("Application A") over a year ago; may we still file a Patent Application under the Patent Cooperation Treaty (PCT) claiming benefit of Priority to "Application A?"
Possibly. There is a two-month time period after the priority year, during which two-month time period an Applicant may make a request for restoration of the right of priority under PCT Rule 26bis.3. Even if right of priority is restored, some rights may have been lost, and some jurisdictions (for example, non-US jurisdictions) may not recognize the restored right of priority. Please contact us for more information.
We filed a Provisional Patent Application ("Application A") a year ago today, today is an official government holiday in our locale, and our locale's Receiving Office (RO) is closed; may we still file a Patent Application under the Patent Cooperation Treaty (PCT) on the next business day in our locale's Receiving Office (RO) claiming benefit of Priority to "Application A?"
We filed a Provisional Patent Application ("Application A") a year ago yesterday; yesterday and today are not official government holidays in our locale, and our locale's Receiving Office (RO) was open yesterday and today; may we still file a Patent Application under the Patent Cooperation Treaty (PCT) today claiming benefit of Priority to "Application A," without making a request for restoration of the right of priority?
Maybe. You may have at least a chance of saving a filing today without making a request for restoration of the right of priority, however, with the given fact pattern, you will at least need to find another RO to file in. Each PCT contracting state's RO posts their Intellectual property Offices’ closed dates at https://www.wipo.int/pct/dc/closeddates/faces/page/index.xhtml , and if you are so fortunate as to find a PCT contracting state's RO that was closed on the day of the missed filing deadline, you may be able to file in that RO on the next normally open day for that RO, such that the application stays in that RO, and is not forwarded to the International Bureau for some reason, such as, for example, lack of competence by that RO to receive an application in the language of filing. For example, you may need to file the application in that RO which was closed in a language for which that RO is competent, and with an appropriate Applicant of Convenience, and do anything else required, so that the application would stay in that RO.
What does it mean if we offered our invention for sale, or told someone about the invention, before filing a Patent Application? Isn't there a one-year grace period for disclosures or sales by the inventor?
Depending on who disclosed the invention, what type of disclosure was made, where the disclosure was made, when the disclosure happened, and where your Patent Application is filed and prosecuted, it is possible no patent may be obtained anywhere, due to the disclosure prior to filing. There is a so-called grace period in the US for certain disclosures by the inventor(s), however, other jurisdictions may require absolute novelty. For example, in the EPO (European Patent Office) any disclosure before patent application filing eliminates the possibility of obtaining a patent. Even in the US, courts have placed limitations on patent rights when an invention is disclosed before filing a patent application. Please contact us for more information.
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