Patent Filing in the USA

March 31, 2020

Patent fees

Get in touch with IIPLA today for Fees associated with patent filing in the USA.

Patent Filing Term in the USA

The term for filing a conventional or provisional application is 12 months from the priority date. In some cases, a patent application filed after 12 months can have the right to priority restored. Only if the delay in filing was unintentional. In this case, the application claiming priority should be filed within two months of the expiration of the 12 months with the appropriate fee.

Filing requirements in the U.S. for a non-provisional patent application

English is the official patent application filing language in the USA. A non-provisional patent application must be submitted in the English language together with a translation in the English language, an accurate translation statement, and its corresponding fee must be submitted in the patent office. If the statement, English translation, and its fee are not submitted at the time of filing, then a notice and time period will be issued to submit the missing items.

A patent application in the USA should have:

– specification (containing an abstract of the invention and at least one claim.)

– drawings

– oath or declaration of inventorship (can be submitted after filing date)

– fees (can be paid after filing date).

– application datasheet.

A certified copy of the Priority Document must be filed if the priority is to claim within later of 4 months from the filing date of the application, or 16 months from the filing date of the prior foreign application. 

There is no legalization of the signed POA required. There isn’t any deadline for submitting a POA when filing a patent application in the USA.

Examination of a patent application in the U.S

There is no request required for substantive examination. It is automatically initiated at the time of filing of patent application in the USA. An accelerated examination under PPH can be requested.

Information Disclosure Statement

Any information that is considered to be important in the determination of patentability of the claimed invention can be disclosed by the applicant using the Information Disclosure Statement (IDS). This information can be of various types, and includes, but is not limited to, prior art only. The duty goes on until a patent is issued or the patent application is abandoned. Failure to submit an IDS intentionally may result in the declaration of the patent as unenforceable.

If the IDS is filed within 3 months of the patent filing in the USA or before the 1st office action, then the filing of an IDS will be without any charge of government fee.

Additional fees must be paid if any information contained in the IDS was first cited in the communication from the foreign patent office in a counterpart foreign patent application more than three months prior to the filing of IDS.

Novelty grace period

The novelty grace period in the USA lasts 12 months before the U.S. filing date or before the priority date,

– If the disclosure occurs after public disclosure of the same invention by the parties set forth above.

– If the disclosure was made by the inventor or by a person who obtained the information from the inventor (directly or indirectly);

Grant, validity term and maintenance fees

The official issue fee for a patent filing in the USA should be paid within 3 months from the mailing of the Notice of Allowance. The due date for annual fees comes in 3.5, 7.5, and 11.5 years from the patent issue date. The annual fees can be paid within a five-month period preceding the due date without any surcharge. Late payment with a surcharge is possible within six months after the expiration. There is no early payment. The validity of a patent in the USA is 20 years from the USA filing date.

Duration of the registration procedure

The granting of a patent can take an average of 32 months from the USA filing date

Utility Model

There is no utility model protection available under the legislation of the USA.

Representation by a patent attorney

A registered patent attorney or agent from the USA is recommended for patent prosecution in the USA.

If you have any queries related to the patent registration in the USA, please contact IIPLA team. We will be more than happy to resolve your queries free of cost.

Leave a Comment