Guide to Foreign Priority Patent Filings in the USA

By Austen Zuege

Introduction

The following is a guide to U.S. patent filings with the U.S. Patent & Trademark Office (USPTO) based on foreign or international priority. Included is a discussion of Paris Convention direct filings and Patent Cooperation Treaty (PCT) national phase entries in the USA. This guide is intended primarily for the benefit of patent attorneys in other countries seeking to understand the available options and legal requirements for U.S. counterpart patent filings. It encompasses recommended practices, common mistakes, and common questions, with emphasis on areas of U.S. patent law and practice that may differ from those of other countries.


Table of Contents:


Types of U.S. Patents and Patent Applications

There are three types of patents in the United States:

  • Utility
  • Design
  • Plant

But utility models are not available.

There are also a number of different types of patent applications in the USA:

Continuing applications are merely special types of nonprovisional applications that claim priority to a prior co-pending domestic U.S. nonprovisional application (or PCT application designating the U.S.). What is called a “divisional” application in many other countries might be called either a “continuation” or “divisional” application in the USA. PCT applications designating the U.S. are treated like domestic U.S. nonprovisional applications for substantive matters, though they there are some procedural differences in how PCT international applications and national phase entries are handled and examined. Though in the strict sense a PCT national phase entry is not separate from the PCT international application but merely represents a different (national) phase in the life of the same international application.

U.S. provisional patent applications do not permit priority claims, but all other types of U.S. patent applications can potentially include one or more domestic or foreign priority claim(s).

There are no annuity payments required for pending U.S. patent applications in the manner required in many other countries. Official fees associated with patenting in the U.S. generally involve initial filing fees, then an issue fee following allowance, and then periodic maintenance fees to keep a granted patent in force, plus various other official fees that may apply in particular situations. But it is not required to submit official “annuity” payments on a yearly basis to keep a pending U.S. application active. Maintenance fees must be periodically paid to keep a granted U.S. patent in force, but only after a patent is issued.

Non-Inventor Applicant(s): Entitlement

A U.S. patent application can name an applicant (or multiple applicants) other than the inventor(s), but only under certain circumstances where the applicant has a suitable entitlement to the invention and application.

The general rule in the USA is that an invention is initially owned by the inventor(s). Usually, a non-inventor entity—such as an employer—will have rights to (and be entitled to file a patent application on) an invention only if that invention has been assigned, there is an obligation to assign—through a duly signed written contract or operation of applicable local law (of a U.S. state or foreign country)—or if there is a non-assignment transfer of ownership rights by operation of applicable local law (of a U.S. state or foreign country). Transfers of ownership rights by operation of law might occur either through laws governing employee inventions (such as “service inventions”) or governing spousal co-ownership rights (such as in “community property” states). If an inventor is deceased or incapacitated, an estate or other similar entity can be the applicant. There is also the possibility for an entity with a “sufficient proprietary interest” to be a patent applicant, but that option will rarely apply and a number of unique procedural burdens must be satisfied (including a petition and extra fee payment).

On an Application Data Sheet (ADS) submitted with a new U.S. patent application, one (and only one) of the following options must be selected to identify each named applicant’s entitlement to the invention and application:

Annotated USPTO Application Data Sheet (ADS) Form PTO/AIA/14

Large/Small/Micro Entity Size Determination for Official Fees

Official fees for U.S. patent applications vary depending on whether the applicant(s) each qualify for a reduced fee status or not. Therefore, in order to calculate applicable official filing fees the entity size of each applicant must first be determined.

There are three possible entity sizes with different official fee rates:

  • Large Entity (Undiscounted)
  • Small Entity
  • Micro Entity

Large entity rates are the baseline or default fees that normally apply. Large entity fees are also referred to as undiscounted fees. Small and micro entity statuses allow for discounts on most official fees. Small entity fees are generally half (50%) of large entity fees, and micro entity fees are generally half (50%) of small entity fees or a quarter (25%) of large entity fees. Certain qualifications and, for micro entity status, certifications must be made in order to initially establish discounted fee status. Discounted small or micro entity status can also be lost over time, and such a loss of a discounted fee status generally requires submitting a formal notification. Fraudulent assertions of entitlement to discounted official fees will render a patent unenforceable, so it is important to accurately establish fee status and update it as circumstances change.

Large Entities

Undiscounted or large entity status applies whenever any applicant does not qualify for reduced fees as a small or micro entity. A for-profit business having more than 500 employees is a large entity. Also, an applicant is required to pay undiscounted (large entity) fees if associated with a large entity, such as through an affiliation, obligation to assign, licensing agreement, joint ownership, or shop rights

Small Entities

To qualify for small entity status, the applicant(s) must each be a person, small business concern (having no more than 500 employees), or nonprofit organization (including non-profit universities and certain nonprofit scientific or educational organizations).  But an applicant is required to pay undiscounted (large entity) fees if associated with an entity that does not qualify as a small entity, such as through an affiliation, obligation to assign, licensing agreement, joint ownership, or shop rights.  In general, entities are affiliates when one has the power to control the other or a third party has power to control both.

A security interest—using a patent application or granted patent as collateral for a loan or other form of credit—does not result in loss of small entity status unless there is a default that triggers the security interest such that a transfer of an ownership interest occurs. An inventor or applicant retaining a firm to build a prototype of an invention for the applicant’s own use is not considered to constitute a license for purposes of the small entity definition. Also, a license to a U.S. Federal agency does not result in loss of small entity status.

Small entity status can be established at the time of initial filing and continues through original examination. If small entity status is lost, a notification of the loss of entitlement to small entity fees must be filed but only as of the time of issue fee payment (the notification need not be filed earlier, during ongoing examination).

Micro Entities

There are two possible bases for micro entity status: gross income basis and institution of higher education basis. The requirements for each are rather complicated, and are each discussed in further detail below. Micro entity compliance requirements are also more burdensome than for small entity status. Because the USPTO funds its operations through collection of official fees, it has set up procedural obstacles around the highly discounted micro entity fees that might make establishing micro entity status unattractive even if the applicant would qualify for it.

Both possibilities for micro entity status require that the applicant(s) qualify as a small entity. Small entity status might be unavailable if there is a license granted in the invention to a large entity, for example.

Micro entity status can be lost during ongoing examination. All applicants must still be entitled to micro entity status to pay a fee in the micro entity amount at the time of any official fee payments. So, after initially establishing micro entity status though certification, it is further necessary to determine whether each applicant qualifies for micro entity status at the time each fee payment is made. That requirement makes ongoing compliance more burdensome than for small entity status. It is required to promptly file a notification of loss of entitlement to micro entity status when an applicant or inventor’s status changes.

Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, is considered fraud. Such fraud can make a resultant patent unenforceable.

If in doubt, it may be best to assert only small entity status instead of micro entity status. This is due to the additional burdens to initially certify and establish micro entity status and the ongoing burdens requiring a renewed determination of qualification for micro entity status with each filing where a fee may be due, coupled with the harsh penalty of potential unenforceability for an improper assertion of micro entity status.

Micro Entity—Gross Income Basis

To qualify for micro entity status—gross income basis, the applicant(s) must each certify the following on a form:

(i) the applicant qualifies as a small entity;

(ii) no applicant or inventor has been named as an inventor on more than four previously filed U.S. non-provisional patent applications (including PCT applications designating the U.S., but excluding certain applications as explained below);

(iii) no applicant or inventor had a gross income in the previous year of more than the “Maximum Qualifying Gross Income,” which is three times the U.S. median household income (this amount changes yearly); and

(iv) no applicant or inventor has assigned, granted, or conveyed, or is under an obligation to assign, grant, or convey, a license or other ownership interest to another entity that does not meet the “Maximum Qualifying Gross Income” limit.  

But applications resulting from prior employment are not counted against the total. So an inventor (or applicant) is not considered to be named on a previously-filed application for micro entity status purposes if he or she has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of his or her previous employment. Also excluded from the total are any PCT applications for which the basic national phase entry fee to enter the U.S. was not paid.

Income in a foreign currency must be converted to U.S. dollars using Internal Revenue Service (IRS) exchange rates.   

Micro Entity—Institution of Higher Education Basis

To qualify for micro entity status—institution of higher education basis, the inventor(s)-applicant(s) must each qualify as a small entity and certify micro-entity status based on one of two possibilities. Each micro entity inventor-applicant (who qualifies as a small entity) must either:

(A) obtain the majority of their income from a United States institution of higher education; or

(B)  have assigned, granted, or conveyed, or be under an obligation by contract or law to assign, grant, or convey an ownership interest in the application to such a United States institution of higher education.

These qualifications must be certified on an appropriate form. Importantly, the institution of higher education basis for micro entity status also requires that the inventor(s) be named as the applicant(s), not the university.

Extra Claim Fees and Multiple Dependent Claims

The basic filing fees for a new U.S. application allows for up to twenty (20) total claims and up to three (3) independent claims. Additional total and/or independent claims, whenever presented, require payment of extra claim fees. Those extra claim fees vary depending on large/small/micro entity status of the applicant(s).

It is possible to reduce the number of claims through one or more preliminary amendment(s) (which are like voluntary amendments). There is no official fee to file a preliminary amendment.

Be mindful of restriction practice (unity of invention), which arises when the USPTO examiner determines that the application directed to multiple distinct inventions. Paying for a large number of extra claims at initial filing may be wasteful if a restriction or election requirement (unity of invention rejection) is issued that necessitates removing some claims and potentially filing them in a separate (divisional) application. In some circumstances, it may be preferable to cancel some claims upon initial filing rather than pay extra claim fees where restriction seems likely. Keep in mind that a U.S. examiner can still issue a restriction requirement even if the priority application was found to have unity of invention by a different examining authority.

Multiple dependent claims are disfavored under U.S. practice. While technically available, there are prohibitive official fees for any multiple dependent claims. Additionally, regulations prohibit a multiple dependent claim from serving as a basis for any other multiple dependent claim. So it is necessary to remove any nested multiple claim dependencies. For all these reasons, it is recommended to remove any and all multiple claim dependencies at the time of U.S. filing. As an alternative, it may be preferable to present additional (new) dependent claims in place of a single multiple dependent claim with comparable overall scope, if so desired. Extra total claim fees might apply when adding additional dependent claims, but those official fees may be less than the prohibitive official multiple dependent claim fee.

It is preferable to make any and all claim reductions at the time of initial filing. However, it may be possible to do so after initial filing. For example, with PCT national phase entries in the USA it is possible to omit payment of extra claim fees upon initial national phase entry (even though extra claims are present in the application), which will result in the USPTO issuing a deficiencies notice that sets a two-month deadline to pay the extra claim fees or cancel claims to avoid those extra claim fees.

Application Size and Sequence Listings Fees

The USPTO has extra application size fees as well as fees for large DNA sequence listings. Lengthy applications or applications or sequence listings may require payment of these extra official fees.

An official application size fee applies for each 50 application pages over 133 electronic pages. The USPTO counts the pages of any preliminary amendment present on the filing date of the application, including multiple sets of drawings or multiple sets of a specification (e.g., clean and marked-up versions), in determining the application size fee required. The USPTO will not count the sheets of any English translation of a non-English specification if submitted with the application on filing. Large tables (other than a computer program or sequence listing) can be submitted as a separate ASCII text file for which each three kilobytes of content submitted will be counted as a sheet of paper for purposes of determining the application size fee. Any sequence listing or computer program listing appendix in a compliant electronic medium (ASCII text for computer program listings or an XML for a sequence listing, as part of a separate associated file) is excluded when determining the application size fee, but is included for application size calculations if submitted as an integral part of the specification. But large sequence listing (300MB to 800MB, or over 800 MB) submissions carry a separate additional fee in a two-tier fee structure.

For a national stage entry application, the application size is determined on the basis of the international application as published by WIPO. This is different than the way the number of pages is calculated for other types of U.S. applications.

DOCX Format and Non-DOCX Surcharge

Beginning January 1, 2023, a surcharge will be imposed for non-DOCX format patent application filings.  In recent years, most U.S. patent applications have been filed electronically in PDF format.  DOCX-format filings are currently possible. But non-DOCX, PDF-format filings are still permitted through the end of 2022 without a surcharge. 

Note that the non-DOCX surcharge will not apply to PCT national phase entries into the USA (at least for now). The applicability of the non-DOCX surcharge to applications filed under 37 C.F.R. § 1.52(d)(1) in a language other than English is unclear (the USPTO has not yet specified if a DOCX copy of only the English translation, only the non-English original, or both the original and translation is required to avoid the non-DOCX surcharge). 

In general, the greatest concerns about DOCX format have to do with complex application content, which may not render as the applicant intended at the USPTO side. Experience to date has shown that USPTO-side conversion/rendering errors may arise for applications with:

  • embedded mathematical equations created with a word processing program’s equation editing functionality
  • embedded chemical formulas created with a word processing program’s formula editing functionality
  • pseudo computer code with special indenting
  • text in unusual characters or fonts
  • anything created on a word processing program other than the Microsoft Word®

If mathematical equations or chemical formulas are present in the text, consider inserting images of those equations/formulas in the DOCX file rather than utilizing the equation/formula editing function of the word processing program in order to help minimize rendering/conversion errors. Though any such inserted images must be of a suitable size and resolution.

Additional DOCX submission difficulties also currently arise if any of the following are present:

  • line numbering
  • claim autonumbering (that is, automatic numbered list formatting of claims using word processing program functionality rather than manual claim numbering)
  • use of proprietary word processor plug-ins that restrict changes to document formatting (for instance, machine translation plugins or patent application drafting plugins)
  • drawings (figures) placed in the same DOCX file as the specification text (such as figures appearing at the end of the same file as the application text)

It has long been a challenge to edit application documents that were provided in “editable” format where different word processing programs, different versions of the same word processing program, or different word processor settings or plug-ins, are used. For instance, paragraph numbering is sometimes implemented in a way that makes it difficult to change that paragraph numbering when amendments are made at the time of filing in the USA. Such challenges may be even more prevalent with DOCX-format filings. Providing a suitable DOCX-format copy of the application will therefore be more important than before.

Metadata should ideally be deleted from DOCX files before filing. The USPTO claims that metadata is automatically removed upon filing. But affirmative removal of metadata prior to filing may still be beneficial to ensure that it is fully removed.

While the DOCX format is an administrative convenience for the USPTO, its mandated use is a more of a burden than a benefit for applicants.  The need for applicants and their counsel to review and correct potential USPTO-side DOCX rendering errors (which may occur more frequently than with certain PDF-format filings) may make PDF-format filing and payment of the non-DOCX surcharge preferable in some situations. Paying the surcharge rather than having an attorney review the rendering of an extensive number of equations or formulas may simply be more cost-effective. Though for applications containing only simple text, without complex or unusual formatting or embedded equations/formulas (other than equations inserted as images), DOCX-format filing should not pose any major problems. 

Translations

U.S. patent applications must be in the English language. Therefore, an English translation is required for any application that is not in the English language. With any translation of a new application, it is necessary to translate all text, including any text appearing in the drawings.

For PCT national phase entries into the U.S., an English translation of each of the following is required:

  • the PCT international application as filed
  • amendments, if any, to the claims under Article 19
  • any annexes to the international preliminary examination report (IPRP), including Article 34 amendments, if a Chapter II demand was made

Filing of a required English translation after the 30-month national phase entry deadline carries a late filing official fee surcharge. Verification (that is, certification by the translator) of the English translation is normally not necessary for PCT national phase entries. Also, sequence listings (if any), generally do not require translation if in compliance with PCT Rules.

For direct Paris Convention filings, the English translation can serve as the U.S. application and it is not required to submit the non-English version (other than to provide a certified copy of the foreign priority application). Submission of a non-English-language application is possible (37 C.F.R. § 1.52(d)(1)), but doing so requires payment of an official surcharge and a translation with a statement that the translation is accurate—extra requirements that can be avoided entirely by submitting only the English translation as the U.S. application.

Also worth noting, an English-language translation of a non-English language foreign priority application (that is, of the certified copy of the priority document) is normally not required except in the following (uncommon) situations: (i) when the application is involved in an interference or derivation proceeding; (ii) when necessary to overcome the date of a reference relied upon by the examiner; or (iii) when specifically required by the examiner. If an English-language translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.

English translations of prior art references submitted to satisfy the duty of disclosure are also required. Machine translations of prior art references are usually acceptable, though if a human translation has been obtained that must be used instead.

Certified Copies

Whenever a foreign priority claim is made in the U.S. patent application, submission of a certified copy of the foreign priority application is required. The deadline to submit the certified copy (for utility and plant patent applications) is sixteen (16) months from the priority date or four (4) months from U.S. filing, whichever is later. However, it is possible to submit a non-certified “interim copy” of the priority document within the applicable time period and then later submit the certified copy while the U.S. application is still pending. For design patent applications, the deadline for submission of the certified copy is by the payment of issue fee—there is no earlier deadline fixed before an allowance.

Procedurally, electronic transmission of certified priority documents is preferable. The USPTO can effectuate electronic retrieval of a certified copy via WIPO’s Digital Access Service (DAS) exhange for participating offices. This requires first registering the priority application with the WIPO DAS exchange and then providing a DAS access code with the U.S. application filing papers. Though for U.S. design patent applications, submission of a hard copy certified priority document is still common.

For PCT applications entering the U.S., prior PCT Rule 17 submission of a certified priority document avoids need to separately submit certified copy in the national phase.

Additionally, in any later-filed application (that is, continuation, CIP, divisional, or reissue application) claiming priority to the same foreign application, it is not necessary to re-submit another certified copy. The prior submission of a certified copy in the U.S. parent application is sufficient.

Inventor Oaths/Declarations

One requirement for U.S. patent applications that differs from practice in other countries is that a signed oath/declaration of inventorship from each inventor is required. The terms “oath” and “declaration” are used somewhat interchangeably here, though there are other types of (optional) declarations possible other than declarations of inventorship. In any event, obtaining inventor signatures on declarations of inventorship is one area were delays can arise, particularly when inventors are difficult to locate or are uncooperative.

An inventor declaration containing certain specific language is a requirement for any U.S. patent to issue. In that sense, obtaining executed declaration(s) of inventorship is crucial. It is not necessary to file inventor declaration(s) at the time a new U.S. application or national phase entry is filed. However, if any or all inventor declaration(s) are missing, their late filing carries an official fee surcharge.

For PCT national phase entry applications, there is a somewhat unusual potential declaration filing deadline. Submission of all declarations of inventorship are required before a request for continued examination (RCE) can be filed in a PCT national phase entry. The term “zombie” applications is sometimes used to describe non-compliant applications, because a PCT national phase entry application is abandoned if an RCE is filed without all declarations. However, this declaration deadline applies exclusively to PCT national phase entry applications and it does not apply to RCEs in Paris Convention (direct) filings or PCT “bypass” applications (such as those filed as continuations or divisionals of the PCT international application). If obtaining inventor declarations is likely to be difficult, filing a PCT “bypass” application rather than a true national phase entry may be desirable.

Each declaration must: identify the inventor or joint inventor executing it by his or her legal name; identify the application to which it is directed; include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and state that the application was made or was authorized to be made by the person executing the oath or declaration. An identification of all inventors (that is, an identification of the complete inventive entity) and inventor mailing addresses are also required but are usually included on a separate form (ADS).

The USPTO provides an inventor declaration form, which is also available in a variety of dual-language versions. These forms have space to list the title of the application and have checkboxes to either indicate that it corresponds to an attached copy of an application provided to the inventor (this option always applies for declarations signed before an application is filed) or to a prior U.S. or PCT international application identified by serial number and filing date. Though it is not required to use the USPTO-supplied inventor declaration form. Sometimes custom forms are utilized, which may combine a declaration, assignment, and/or power of attorney.

It is possible for inventors to sign declaration before PCT international or national phase filing, or during the international phase (prior to national phase entry). See PCT Rule 4.17(iv) and Rule 51bis.1(a)(iv); and PCT RO Guideline 192A. This can involve obtaining electronic signature(s) from the inventor(s) on the PCT request when prepared utilizing ePCT, or by obtaining signatures from the inventor(s) in Box No. VIII(iv) of the paper version PCT request form (PCT/RO/101). It is also possible to create an inventor declaration form utilizing the exact text from PCT Administrative Instructions Section 214(a) or by completing the USPTO’s declaration form using the PCT application details.

Signed inventor declarations that meet all requires can generally be re-submitted for subsequent U.S. continuation and divisional filings. This helpfully avoids having to obtain newly signed inventor declarations all over again in continuing cases. CIP applications that add new matter may or may not require new oaths/declarations—if any new inventor(s) are added they will each need to execute an oath/declaration.

The requirements for a inventor’s signature on the oath/declaration to be acceptable (including electronic/digital signature requirements) are discussed below.

Assignments

An assignment is generally required in order to name the applicant as an entity other than the inventor(s)—although a valid and legally binding obligation for the inventor(s) to assign the application is minimally sufficient even if the assignment has not yet been signed. Also, an executed assignment will be required in order for a non-inventor applicant-patentee to later enforce any resulting patent. By law, an assignment of an interest in a U.S. patent must be in writing.

It is customary for U.S. assignments to be signed only by the assignor. The assignee does not need to also sign the assignment for it to be valid—unlike in certain other countries. An assignee could optionally sign the assignment, however, which might help allow a single assignment document to be used across multiple jurisdictions.

Notarization (or apostille) is not required on a U.S. patent assignment. But optional witness signatures or notarization still have benefits. In particular, such notarization or witness signatures help reduce the possibility that an inventor or other party will later dispute the authenticity of an inventor signature.

If there are multiple assignees/applicants, U.S. law says that each joint owner can assign (or license) their interest in entire application/patent without accounting to the other joint owners. But all co-owners of a patent must join any infringement lawsuit.

Assignment terms are subject to state or foreign law. While some aspects of U.S. federal law govern patent assignments, such as the requirement that they be in writing and the requirements for recordability, other aspects are considered mattes of general contract law that are governed by the relevant state or foreign jurisdiction(s). There may be choice of law issues that govern such questions. But, generally, the jurisdiction where the assignment was entered into and/or the jurisdiction where the invention was made will be relevant considerations in determining applicable law.

Sometimes U.S. state or foreign law effectuates an assignment of an invention to employer by operation of law. Also, inheritance laws may effectuate an assignment of patent rights to an heir or estate of a deceased inventor. In such cases, it is possible to execute and record a “confirmatory” and/or “quitclaim” assignment that provides a recordable document that by its terms merely confirms the assignment that was previously effectuated by operation of law.

Assignor estoppel is a concept that may apply to a patent assignment to prevent the assignor from later challenging the validity of the assigned patent application. Though this concept is potentially most significant for assignments executed after initial filing of an application, particularly for assignments of granted patents.

The requirements for an assignor’s signature to be acceptable (including electronic/digital signature requirements) are discussed below.

Recording Assignments, Licenses, and the Like

Assignments should be recorded with the USPTO. Recordation requires at least the names of all inventors and either the application serial number (identification of the application serial number of the foreign priority application or PCT application is sufficient) or the title of the invention (if the application serial number is not yet known) in the assignment document. It is common, and recommended, for assignments to include an express authorization for the serial number to be inserted after signing once ascertained, to facilitate recordation. Keep in mind, however, that the USPTO does not substantively assess the terms of recorded assignments but merely performs a non-substantive review to ensure that a submitted document meets the minimum requirements for recordability.

An English translation signed by the translator is required for recordation of a non-English assignment document. This is not specifically a certification requirement.

An assignment identifying a PCT international application can be recorded against the U.S. national phase entry. It is not necessary to specifically identify the U.S. national phase entry application serial number if the PCT international application serial number is provided.

Recordation of a patent assignment is not required by the USPTO. But, U.S. law provides a potential subsequent purchaser defense that makes timely recordation desirable:

“An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.”

35 U.S.C. § 261

In other words, if an assignment is not recorded and the assignor-inventor later executes a conflicting assignment to another entity, then the original assignment is void against the subsequent assignee and the original assignee’s remedy would be against the inventor-assignor for damages.

Obligations to assign such as employment agreements, master services agreements, or the like obligating assignment can sometimes be recorded (for instance, if an inventor is unavailable or uncooperative) but usually are not. But such other types of documents that include an assignment may lack the required identifying information to be recordable. That is, while they may legally assign ownership, they still may not be recordable, because USPTO assignment recordation standards are distinct from the legal requirements to transfer ownership of an invention.

If an assignment is just one part of a larger agreement, it may not be desirable to record the entire agreement, which would become publicly accessible. In such situations, execution of a separate confirmatory assignment for recordation may be preferable. Alternatively, if there is only a limited amount of information that is sought to be kept confidential, a redacted assignment could be recorded. For example, it is possible to redact the purchase price from the version of the assignment sought to be recorded. U.S. patent assignments are not required to show the purchase price, as is required in some other countries.

Licenses and security interests can be recorded at USPTO like assignments. But it is not required to record licenses or security interests. Recordation of patent licenses is not common.

Mergers and changes of name can also be recorded. That is, if the applicant (or patentee) changes its corporate name, or merges with another company, such changes can be recorded at the USPTO. It is recommended to do so, in order to have an accurate record of the current owner and to avoid questions about ownership if a patent is ever later enforced.

Additionally, an assignment of a parent application can be recorded against any later divisional or continuation application(s). However, CIP application(s) that add new matter require an assignment of the new matter in addition to the previously-assigned matter.

Dealing With a Defective or Unrecordable Assignment

If an assignment has already been executed but is defective or unrecordable, there are two main ways to address such problems:

  1. Mark-up changes (on the defective or unrecordable assignment) by lining out text to be deleted and writing in text to be added, and have each signatory (or at least each assignor) initial and date each of those changes; or
  2. Have all of the signatories execute a new corrective or confirmatory (nunc pro tunc) assignment.

But only one or the other approach is necessary, not both.

These sorts of changes or corrections are most common when an assignment exists but lacks the information needed to be recordable. For instance, an assignment executed before an invention was conceived may be valid and effective to transfer ownership but it would not be recordable at the USPTO because it does not identify the title or application number associated with the application against which the assignment is sought to be recorded.

Power of Attorney

The USPTO requires that juristic entity applicants (that is, corporate or organization applicants) be represented by a USPTO-registered patent attorney (or agent). It is possible for U.S. patent counsel (acting in a “representative capacity”) to file new applications and take many actions without a signed power of attorney (POA). But there are a certain number of actions that the USPTO only permits counsel to take if an executed POA from the applicant(s) is submitted. Therefore, it is customary and desirable for U.S. counsel to obtain a signed POA from each applicant (or inventor).

A POA need not be in any particular format so long as it is a written document that authorizes one or more patent practitioners or joint inventors to act on the applicant’s (or patent owner’s) behalf. It is possible for a POA to be combined with another signature document, such as in a combined declaration and POA. The USPTO also provides a general POA form (available in dual language versions) that can be signed prior to an application being filed, which is then submitted with a transmittal form signed by U.S. patent counsel to identify the particular application for which the general POA is being submitted. Use of a general POA is beneficial because it can be re-used for later applications and because it avoids the need to wait until the application is filed to insert the application serial number before being signed (which then requires a later POA filing separate from the application filing). A person signing a POA on behalf of a corporation should identify his or her corporate title.

POAs can identify a group of practitioners by a “Customer Number” that a firm maintains with the USPTO. The USPTO uses the Customer Number to identify the specific set of USPTO-licensed practitioners and their correspondence address for official communications. When a general POA form is used that identifies a Customer Number (and will be accompanied by a transmittal signed by U.S. counsel), the application number, filing date, and firm information fields on the POA form should be left blank (completing those other sections would conflict with the use of the USPTO Customer Number and might lead to official communications not being sent to U.S. counsel).

Signature Requirements

Patent-related documents requiring a signature must be personally signed by the named individual or by a person having authority to sign on behalf of a corporate entity (also called a juristic entity). While “wet” or “ink” signatures are always acceptable, the acceptability of electronic or digital signatures on patent-related documents, and the format of such signatures, varies depending on the type of document and potentially also local law. These and other issues related to signatures on patent-related documents are addressed below.

General Guidelines for Signature Blocks

Generally, any patent-related document requiring a signature must include, at a minimum, both a signature and also indicate the name of the person or entity signing in typed or printed (non-script) lettering. It is customary—and in some instances required—for the signature to appear immediately above the typed or printed name. It is important that the typed or printed name be the signatory’s legal name, including his or her first name and last name (surname). Use of the signatory’s middle name or middle initial is not required but should be included if the signatory has a common name or customarily includes such information when signing documents. A date when the document was signed is typically added—and it is recommended to do so—but a date may not be strictly required.

When a document is signed on behalf of a corporate entity, then the signature block should include the name of the corporate entity as well as the name of an individual signing on behalf of that corporate entity and his or her corporate title. The preferred format for indication of a corporate title is “Title, Company Name”. In some instances further steps or additional terms/affirmations may be required to establish that the person signing on behalf of a corporation has authority to do so, as addressed below. Just as with an individual signing in a personal capacity, the date when the document was signed on behalf of a corporation is typically added but may not be strictly required.

Authority to Sign

With respect to individuals, the named individual must personally sign the document in question. Patent-related documents usually cannot be signed on behalf of (or “for”) the named individual or by the named individual’s agent. This is a matter of who is named as the individual signing the document. In some cases, an attorney or other person acting on behalf of an individual may have authority to sign a document but that attorney/agent must be identified as the signatory. Moreover, there are special provisions governing who can sign relevant documents when an inventor is deceased or legally incapacitated, and what can be done when an inventor cannot be found or reached or has refused to sign an oath/declaration.

For persons signing on behalf of a corporation, organization, or other juristic entity, he or she must have authority to bind the corporation with regard to the document(s) in question. In general, any person can be authorized (empowered) to act on behalf of a corporation. But that authority must be sufficiently established to be recognized by the USPTO. Sometimes, providing the signing person’s corporate title is sufficient on its face to establish authority to sign. Other times, additional confirmation of authority to sign may be required.

Normally an officer (President, Vice-President, [corporate] Secretary, Treasurer, or Chief Executive Officer [CEO]) of a corporation should sign necessary patent-related documents on behalf of that corporate entity. But different types of corporate entities, such as limited liability corporations (LLCs), may have a Managing Member or other titles for persons with controlling authority rather than traditional U.S. corporate officer titles. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director. Modifications of basic corporate titles are acceptable, such as vice-president for sales, executive vice-president, assistant treasurer, vice-chairman of the board of directors. In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer or the equivalent of an officer. Therefore an exception is made for the USPTO to presume that people with such titles have authority to sign on behalf of a foreign juristic entity (foreign corporation).

The USPTO views certain titles as generally inadequate to establish signing authority for a corporate entity on their own. For example, titles such as “Manager of Patents,” suggesting narrowly limited duties, are not acceptable to establish signing authority without more. Moreover, titles such as “administrator” or “general counsel” do not clearly set forth that person as an officer of the corporation and such titles are inadequate to establish authority to sign without more. If these titles apply to the person signing, something more is generally required to establish signing authority.

When the authorized signing person does not have a traditional officer title it is most common to include a separate indication of authority to act on behalf of the corporation in an explicit statement of authority contained in the document being signed. For example, the statement, “The undersigned (whose title is supplied below) is empowered to act on behalf of the applicant” or “The undersigned (whose title is supplied below) is empowered to sign this [document title] on behalf of the applicant” would normally be sufficient to establish signing authority if added to the document somewhere above the signature block. Alternatively, a submission may be signed by a person empowered by an organizational resolution (e.g., corporate resolution, partnership resolution) to sign the submission on behalf of a corporation, if a copy of the resolution is, or was previously, submitted—but this alternative approach is uncommon.

Form of Signature: Acceptability of Electronic/Digital Signatures and Seals

Signatures can usually take any form (such as making a mark like an “X” when the signatory is illiterate) but are customarily the signatory’s name in script when signed by hand as a “handwritten”, “wet”, or “ink” signature on a hard copy. The USPTO accepts certain types of electronic signatures on correspondence documents related to patent prosecution (see below); however, assignment signatures are not governed by USPTO regulations but rather by general contract law and therefore are potentially subject to differing state or foreign laws. Acceptable and unacceptable uses of electronic/digital signatures are taken up below. But note that “wet” or “ink” signatures on a hard copy are always an acceptable form of signature in any context. Moreover, the USPTO accepts electronic scans of signed documents and does not require the original signed hard copy. Though signed originals should be retained by the applicant for safekeeping as evidence of proper execution in the event that questions later arise as to the authenticity of a signature.

The use of seals instead of signatures is not recognized under U.S. law. Generally, a signature is required and a seal or stamp (alone) is not an acceptable substitute for a signature on USPTO documents. While a seal might be acceptable on an assignment signed abroad, if local law permits such use, it is recommended to obtain a signature in addition to or instead of a seal for any assignment of a U.S. patent or patent application to avoid potential disputes over sufficiency and choice of law.

Electronic S-Signatures Acceptable on Inventor Oaths/Declarations and Powers of Attorney

The USPTO permits electronic signatures inserted personally for USPTO correspondence, including inventor declarations/oaths and powers of attorney (POAs). Other application papers typically signed by a USPTO-registered patent attorney or agent can also be signed under USPTO e-signature regulations. When filing a new U.S. patent application, the oath(s)/declaration(s) of inventorship and POA are typically the only inventor- or applicant-signed documents for which USPTO e-signature guidelines will apply. Note here that USPTO e-signature regulations and policies are not controlling for the validity of signatures on assignments.

Acceptable e-signatures under USPTO regulations and guidelines take two forms. The first option, and also the most common, is referred to as a virgule style “s-signature”, which takes the form:   /First Last/. Importantly, the s-signature must be inserted personally by the named signatory (and not by an assistant, agent, or anyone else other than the named signatory), must have both leading and trailing forward slashes as shown in the preceding example, and the signer’s typed name must appear immediately below the s-signature. Having the slashes pre-filled before signing is acceptable. The USPTO rejects improper s-signatures that lack the required leading and trailing slashes or include non-alphanumeric characters like graphical symbols (for example, emoji icons) or question marks. S-signatures can be inserted using a commercial e-signature computer system but must still comply with all requirements including use of leading and trailing slashes. Examples of acceptable and unacceptable USPTO s-signatures are shown here: https://www.uspto.gov/sites/default/files/documents/sigexamples_alt_text.pdf

The second option accepted for electronically signing USPTO correspondence is an inserted graphic representation of a pen-and-ink signature. A legible electronic image of a handwritten signature inserted, or copied and pasted, by the person signing is acceptable as an inserted graphic representation of a pen-and-ink signature. A graphic representation of a handwritten signature may also be created through a computer using a stylus pen and/or touch-pad (but not using a keyboard, for which only the virgule-style s-signature format described above is acceptable).

Special Considerations for Assignment Signatures

As already noted, USPTO e-signature regulations are not controlling for the validity of assignments because such aspects of assignment signatures are treated as a matter of general contract law rather than U.S. federal patent law. Instead, state or foreign law usually governs assignment contracts, which would normally encompass the validity of signatures (or seals) and the like. Moreover, if the jurisdiction where the signatory is located requires both parties to the assignment to sign, it is possible those requirements would apply even to an assignment of U.S. patent rights.

“Wet” handwritten pen-and-ink signatures are still standard for assignments. But questions frequently arise about when and how electronic signatures might be used for assignments of U.S. patent rights. In brief, electronic signatures may be valid but the requirements for validity vary and these requirements generally require the use of a commercial/proprietary e-signature system that allows all legal requirements to be satisfied. In other words, while electronic signatures are sometimes thought to be more convenient, their use often requires a commercial e-signature platform (that provides suitable record retention) in order to be legally valid. If such a commercial e-signature system is not available, a “wet” handwritten pen-and-ink signature should be used.

For assignments executed in the USA, there are four general requirements under various state and federal electronic/digital signature laws (ESIGN & UETA):

  1. Intent to sign
  2. Consent to do business electronically
  3. Association of the signature with the record: the system used to capture the transaction must keep an associated record reflecting the process by which the signature was created, or generate a textual or graphic statement (added to the signed record) proving it was executed with an electronic signature
  4. Record retention

But the U.S. states of Illinois (5 ILCS 175) and New York (N.Y. State. Tech § 301 et seq.) have not adopted the uniform law (UETA) applicable in other states. States are also able to modify the uniform law, so it is important to verify the law of the particular state in question if there are any questions about e-signature validity on an assignment.

The U.S. federal ESIGN Act is not limited to persons located in USA, though it is limited to transactions in or affecting interstate or foreign commerce (which may or may not be implicated by a patent assignment). Still consider local law regarding electronic signatures for patent assignments for any assignor outside the USA. Choice of law, conflict of law, and/or preemption issues may arise for electronic signatures when there are multiple assignors in multiple states and/or countries. If these concerns are present, it may be possible to include a choice of law term in the assignment itself in order to affirmatively select the e-signature law of a particular jurisdiction. Though not all foreign jurisdictions honor choice of law provisions.

Laws about electronic/digital signatures in other countries vary but there is growing support for use of e-signatures. For instance, in the European Union, eIDAS (electronic IDentification, Authentication and trust Services) regulates electronic signatures that may apply to assignments affecting U.S. patent rights (and the EPO now accepts “qualified electronic signatures” on assignments affecting EP applications too).

Use of a “wet” (handwritten pen-and-ink) signature on later a corrective or confirmatory assignment may cure an insufficiency or defect with an earlier electronic signature. But an electronic signature defect must be cured before starting an enforcement lawsuit to have standing.

Consider e-signature enforceability for the right of priority too, particularly where it is desired for an assignment to implicate patent rights across multiple jurisdictions. The U.S. generally treats the right of priority as present if the named applicant is entitled to file and the objective requirements for a priority claim are met (largely based on timing and the named inventive entities of the respective applications), without requiring a specific assignment of the right of priority. This differs from jurisdictions that require an explicit assignment or transfer of the right of priority.

Duty of Disclosure, Candor, and Good Faith

Under applicable U.S. regulations and procedures, each individual associated with the filing and prosecution of a patent application has an ongoing duty of candor and good faith in dealing with the USPTO, which includes a duty to disclose to the USPTO all information known to that individual to be material to patentability. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the USPTO or was submitted to the USPTO in a prescribed manner (that is, in an Information Disclosure Statement or IDS). However, no patent will be granted on an application in connection with which fraud on the USPTO was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. “Inequitable conduct” during prosecution of a patent application can render a resultant patent unenforceable.

Individuals having a duty of disclosure include (1) each inventor named in the application, (2) each attorney or agent who prepares or prosecutes the application, and (3) every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee, or with anyone to whom there is an obligation to assign the application. The duty extends to persons whose involvement relates to the content of an application or decisions related thereto. But the duty does not extend to personnel who merely assist with an application in an administrative or secretarial manner, such as typists, clerks, and the like. Moreover, the USPTO says that the duty of disclosure applies only to individuals, not to juristic entities as a whole. For instance, the duty of disclosure would not apply to a corporation or institution as such though it would apply to individuals within the corporation or institution who were substantively involved in the preparation or prosecution of an application.

The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claims.

All material prior art known at the time a U.S. application is filed should be submitted to the USPTO on an IDS at the time the application is filed, or within three months after original filing. Prior art can potentially include the inventor’s own prior commercial sales activities and/or public uses, as well as the inventor’s own prior patents, patent applications, and printed publications (such as journal articles, web site posts, and the like). Copies of non-patent literature (with translations if not in the English language) are necessary for proper submission with an IDS. However, copies of published U.S. patent documents are not required and copies of published foreign patent documents can usually be retrieved by U.S. counsel. Machine translations into English are acceptable, but if a manual (human) translation already exists that translation must be provided for submission.

Citation of a reference on an IDS is not taken as an admission that it qualifies as prior art or that it is material to patentability.

If a reference is lengthy but only a portion is relevant, it is possible to cite and submit a copy of only the relevant portion. Partial citation may reduce translation burdens in some situations.

Supplemental IDSs can and must be filed later on if new or additional prior art becomes known. In general, this means that foreign counterpart office actions and/or search reports should be reported promptly. There are patent term adjustment consequences to IDS filing delays after thirty (30) days and there may be official fee consequences after three (3) months. Prompt disclosure of any material prior art is therefore important in order to satisfy the ongoing duty of disclosure while also avoiding potential additional fees or losses of patent term adjustment.

Foreign Filing Licenses

A U.S. patent is barred if the invention was “made” in the USA, in whole or part, and then filed abroad without a foreign filing license (35 U.S.C. § 185). Generally, foreign filing license decisions must be made by and through the USPTO. However, if an application is first filed in the USA (including a PCT international application filed with the USPTO as receiving office [RO/US]) the foreign filing license requirement is deemed automatically satisfied by default after six (6) months in the absence of a secrecy order. In other words, once an application is filed with the USPTO, foreign filing is automatically permitted after six (6) months even if there was no affirmative grant of a foreign filing license by the USPTO. It is possible for an applicant to affirmatively request an expedited foreign filing license before filing outside the USA—this takes about three (3) days if requested by fax. Moreover, it is possible petition for a retroactive foreign filing license if sufficient cause is shown for the prior failure to obtain one. In general, if any inventive activity took place in the USA it is important to consider U.S. foreign filing license requirements before filing a patent application in another country.

When a foreign filing license was obtained in a prior application but the new application contains additional or modified disclosure, care must be taken to verify whether a new foreign filing license is required for the additional or modified disclosure. A new foreign filing license is not required if the modifications, amendments, and supplements do not change the general nature of the invention (in a way that may be detrimental to national security secrecy, in the opinion of U.S. government officials). Be aware, however, that so-called “dual use” export controls may mean that things capable of (or intended for) civilian use may still be deemed to implicate U.S. national security interests.

Other countries have various similar foreign filing license or first filing requirements, usually centered around national security requirements. Such other countries’ law typically have no direct effect on patentability in the USA. Though violations of such other countries’ laws may have consequences for the inventor(s) and/or applicant(s). When there are multiple co-inventors in different countries who collaborate to invent something, care should be taken to ascertain if foreign filing license or first-filing laws in multiple countries might apply.

Accelerated, Prioritized, and Expedited Examination

There are two options to speed up examination of a new U.S. utility (or plant) patent application: accelerated examination and prioritized examination. These options are discussed in turn.

Accelerated examination can be achieved filing a petition to make an application “special” that is then granted. “Special” status does not guarantee examination along a particular timeline but it does move a given application up in priority in the examination queue of the assigned examiner (along with certain other types of applications treated as special automatically). The degree of priority given to an application made special may not be definite or precise, but such applications are in fact examined somewhat more quickly.

There are a number of different categories that may qualify a given application for accelerated examination—as well as occasional “pilot” programs for additional categories on limited bases. Established categories carry no official fee while non-enumerated ones of a miscellaneous nature (such as because infringement is occurring) require payment of an official fee.

Enumerated (free) categories for accelerated examination with no official fee:

  • Patent Prosecution Highway (PPH)
  • Age of inventor (at least one inventor is age 65 or older)
  • Health of inventor
  • Environmental quality (the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil)
  • Energy (the discovery or development of energy resources, or the more efficient utilization and conservation of energy resources)
  • Countering terrorism

These enumerated accelerated examination categories will not apply to all applications. Also, some categories are more worthwhile than others in terms of how the USPTO processes them. And special status for accelerated examination can impose limitations on the applicant, such as limits on adding certain new claims during examination.

The PPH program is helpful and it is relatively easy to request participation for qualifying applications, although the program does have some compliance requirements. The basic requirement to qualify for the PPH program is for all of the claims in the application to sufficiently correspond to the patentable/allowable claims in a counterpart application for which the work product (IPRP, WO/ISA, WO/IPEA, EESR, or the like) of a participating office of earlier examination indicating patentability/allowability is provided. Statistically, PPH applications tend to have a somewhat higher overall allowance rate and first action allowance rate than for all U.S. applications collectively. Though it should be emphasized that acceptance in the PPH program does not guarantee allowance. The USPTO makes an independent determination of patentability and is not bound by any prior patentability decision by an office of earlier examination.

“Special” status based on the age or health of an inventor can be worthwhile if applicable. The USPTO processes such requests on an automated basis. This means that when an inventor qualifies, special status is granted to the associated application automatically after a electronic petition (ePetition) is filed. But a request based on the health of the inventor will make associated disclosure of medical information public unless special additional steps are taken.

The other accelerated examination categories for environmental quality, energy, and countering terrorism, however, have traditionally not been worthwhile to pursue. Such requests undergo a substantive review before being granted. And the USPTO has often rejected such requests on unconvincing grounds. Long ago, patent attorneys would even joke that such a request was more likely to slow down examination than to speed it up.

Prioritized examination, also called Track One examination, is another avenue to speed up examination that is potentially available for nearly any new application. It does involve satisfying a number of specific requirements, however. First, it carries an expensive official fee. Also, it is necessary to obtain and file all signature papers with the original application filing. There is a yearly limit on the total number of applications accepted into the program by the USPTO (see statistics on recent Track One filings here). Moreover, Track One prioritized examination is not available for PCT national phase entries, though a “bypass” application can be filed instead of a true national phase entry to make Track One prioritized examination available. In general, Track One prioritized examination can greatly speed up the complete examination timeline (to allowance or abandonment) from being a year or more to being a matter of months. Prioritized examination is generally faster than accelerated examination. However, there are substantial costs and burdens associated with the prioritized examination (Track One) program.

For design patent applications, include Hague extensions, there are two options to speed up examination: expedited examination and accelerated examination. Expedited examination is available only for designs, and requires having acceptable design drawings, payment of an official fee, and also that the applicant conduct a pre-examination search. Accelerated examination is the same for design applications as for utility and plant applications, the details of which are described above. Prioritized examination (Track One) is not available for design applications.

Early National Phase Entry

It is possible to make an (early) express request for the PCT national stage to commence in the USA at any time prior to the 30-month deadline. However, the submission of an English translation of the PCT international application and inventor oaths/declarations are required for the U.S. national phase substantive examination to begin early (as well as submission of copies of Article 19 amendments and translations of annexes to the international preliminary examination report, if applicable). (§ 371(f)). If the inventor oaths/declarations are missing, the USPTO will not begin substantive national phase processing early. Also, when filing for early U.S. national phase entry before the PCT international application has been published by the International Bureau, it is further required to submit a copy of the PCT Request (form PCT/RO/101) to the USPTO; and, although not strictly required, it is strongly recommended to further submit a copy of the Notification of the International Application Number and of the International Filing Date under PCT Rule 20.2(c) (form PCT/RO/105)—which serves as an acknowledgement or filing receipt from the receiving office. In that situation, the PCT Request (PCT/RO/101) and filing receipt Notification (PCT/RO/105) should be provided even if not in English.

Deferring or Suspending Examination

Under normal circumstances, filing a complete new application or national phase entry in the U.S. automatically initiates the examination process. In many other countries, by contrast, a separate examination request must be made. Even though applicants cannot control the timing of U.S. examination through examination requests, there are procedures available to either defer examination or suspend examination for limited times. Each of these procedures requires an explicit request or petition and payment of an additional official fee.

A request to defer examination (under 37 C.F.R. § 1.103(d)) can be for up to three (3) years (36 months) from the earliest claimed priority date. This translates into a maximum of six (6) months after the 30-month PCT national phase entry deadline. Deferring examination requires making certain submissions, including submitting a request form and payment of an official processing fee. But it is not required to provide any reason or justification for the requested deferral.

Suspension of examination (under 37 C.F.R. § 1.103(a)) for a maximum of six (6) months is only permitted for “good and sufficient cause” establishing that suspension is necessary. An official petition fee is also required to suspend examination.

Missed Filing Deadlines

The deadlines to file a patent application in the USA with a foreign priority claim are twelve (12) months (for direct applications under the Paris Convention) or thirty (30) months (for PCT international applications) from the earliest priority date. However, for U.S. design patent applications, the priority filing deadline is only six (6) months from the earliest priority date. If a filing deadline falls on a Saturday, Sunday, or U.S. federal holiday (within the District of Columbia), the filing deadline is automatically extended to the next succeeding secular or business day.

If an application filing deadline is missed, late filing in the U.S. based on a priority claim to an earlier PCT, Paris Convention (including designs), or U.S. provisional application may still be permitted if entire delay was unintentional. In all cases, late filing requires submission of a petition and fee. The applicant must be ready to present evidence to substantiate assertion that entire delay was unintentional, and such information must be made available to U.S. counsel in order to substantiate the grounds for the petition. The USPTO may request and require additional evidence before it will permit late filing.

For late Paris Convention or provisional priority filing, the period of unintentional delay is limited to two (2) months; that is, the applicant must file the U.S. application by fourteen (14) months from the earliest priority date for a utility application or eight (8) months from the earliest priority date for a design application. Such late filings involve a petition to restore the right of priority and payment of an official fee.

For late PCT cases (beyond 30 months from the earliest priority date), there is no fixed limit on the length of unintentional delay for revival of international application to permit the filing of a national phase entry or a “bypass” application. However, the USPTO applies more scrutiny with longer delays and it naturally is more difficult to establish unintentional delay over longer periods of delay. Such late filings based on a PCT application involve a petition for revival of an international (PCT) application designating the USA abandoned unintentionally and payment of an official fee.

If a priority filing deadline is missed, and an applicable late filing period is not available, filing in the U.S. without a priority claim might still be possible in some situations. For instance, the U.S. one-year patent application grace period may exclude as prior art a patent or patent application publication one year or less old by at least some of the same inventor(s) and no one else or, alternatively, that is subject to common ownership or a common obligation to assign, including under a qualifying joint research agreement. This means, as something of a last resort, a U.S. filing up to one (1) year after a prior patent publication by the applicant may still be possible without a priority claim.

Additionally, after a U.S. application has already been filed, a delayed assertion of a claim of priority, a revival after abandonment, or late issue fee payment may also be possible in some circumstances when the entire delay was unintentional. In this context, the USPTO handles petitions to restore the right of priority (where a priority filing deadline in the U.S. is missed, as discussed above) differently than petitions to accept an unintentionally delayed priority claim (where a U.S. application was actually filed by the applicable priority filing deadline but was filed without reference to the priority application and a priority claim is desired to be retroactively added to the already-filed U.S. application).

Guidance About the Format and Substantive Content of a Patent Application Entering the USA

The following are suggestions and recommendations regarding preferred and required format for U.S. patent applications. Many of these notes and comments pertain to the ways that U.S. patent laws and practice differ from those of other countries. These comments are made to alert foreign patent attorneys about areas where modifications and amendments may be necessary or desirable in order to better present a U.S. patent application in order to help simplify examination and help secure desired scope of coverage and enforceability. These are potentially wide-ranging topics and the following selected notes address only some of the most commonly encountered issues.

Some Notes on Patentability and Patent Eligibility

The U.S. has both on-sale and public use bars. That is, pre-filing commercial sales (including commercial offers for sale and leasing) or public use of an invention by an inventor/applicant can qualify as prior art that potentially bars patenting and even secret or confidential commercial sales (and offers for sale) can still be prior art against an application. Such on-sale and public use bars now apply to pre-filing regardless of whether they took place in the USA or in a foreign country. However, there is a one-year grace period (prior to the “effective filing date” of a given claim) for an inventor’s own public disclosures and/or sales. Disclosures or sales within that grace period will not qualify as prior art and will have no adverse effect on patentability.

Laws of nature, natural phenomena, and abstract ideas are not patent eligible in the U.S. (they lack utility). Patent eligibility is an area of U.S. patent law where it can be difficult to know in advance what will or will not be deemed acceptable. Though these questions arise most frequently for software-related inventions (as abstract ideas), methods/processes that rely on generic computerization (as abstract ideas), business methods (as abstract ideas), biotechnology (as natural phenomena), and medical diagnosis or treatment inventions (as laws of nature or natural phenomena). More generally, these issues tend to arise for “preemptive” claims. Those are claims that courts have said lack any inventive concept beyond a mere drafting effort to monopolize an abstract idea, law of nature, or natural phenomenon itself, which inhibit further invention by improperly tying up the future use of these building blocks of human ingenuity. However, the USPTO has avoided direct reference to “preemption”.

The USPTO has provided some guidance that may help understand patent eligibility requirements: see https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility and MPEP 2106 et seq.

It may be beneficial (and possibly necessary) to re-write claims to satisfy U.S. patent eligibility (utility) requirements. For example, for software-related inventions, try “Beauregard” or “CRM” claims: convert a pure software recitation (such as “A program comprising…”) into a recitation of an article of manufacture as a tangible computer-readable medium comprising program instructions for carrying out a method stored on that computer-readable medium or as a computer processor programmed to carry out specific recited steps. For chemical inventions, try reciting markedly different characteristics (MDC) over and above a mere product of nature.

More generally, it is helpful to ensure that an application contains enough substantive disclosure of relevant structures and process steps to support claims reciting a specific (non-generic) means or method that improves the relevant technology, transformations effected on physical matter, or the like. U.S. practice allows fairly liberal claim amendments, including the addition of new or different claims after an application is filed. But any such new or amended claims must have support in the original disclosure (including the figures). So having a robust disclosure helps facilitate later amendments to the claims if patent eligibility issues arise.

Some Notes on Claims

The following are comments about claim format and the words sometimes used in claims. U.S. patent claims must generally follow a “peripheral” claiming regime, which involves “particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” This means each claim must set forth with reasonable certainty and clarity the outermost boundary (periphery) of the patentable invention.

U.S. claims are customarily formatted with hanging indents for each distinct clause, though such formatting is not a mandatory requirement. U.S. claim dependencies are customarily ordered in a depth-first format.

Reference numbers in claims are not required under U.S. practice, though their presence (in parentheses) is permitted. Removal of reference numbers from the claims is generally recommended. If acronyms are used in the claims, they should preferably be introduced first in full form with the acronym in parentheses.

Multiple dependent claims are disfavored under U.S. practice. While technically available, there are prohibitive official fees for any multiple dependent claims. Additionally, regulations prohibit a multiple dependent claim from serving as a basis for any other multiple dependent claim. So it is necessary to remove any nested multiple claim dependencies. For all these reasons, it is recommended to remove any and all multiple claim dependencies at the time of U.S. filing. As an alternative, it may be preferable to present additional (new) dependent claims in place of a single multiple dependent claim with comparable overall scope, if so desired—though extra claim fees might apply.

“Characterizing” two-part claim format is permitted in the U.S., where it is referred to as Jepson format. However, such a format is not required and may be less desirable that other claim formats in many circumstances. It is often recommended to omit “characterized in that” or “wherein the improvement comprises” language for U.S. filing.

Peripheral claiming as utilized in the USA differs from “central” claiming that instead refers only to a central inventive concept (with boundaries of protection usually left to be determined in a later enforcement action). In general, peripheral claiming in the USA involves “particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention” so as to “inform those skilled in the art about the scope of the invention with reasonable certainty,” when viewed in light of the specification (detailed description), prosecution history, and the knowledge available to persons of ordinary skill in the art. These standards may not be satisfied if a claim merely points to a central inventive concept. This is especially the case where purely functional claim language recites only a desired result (without being limited to any particular structure). Claims that originated in a country where claims are allowed to have more of a central claim format should be revisited for filing in the U.S., due to the differences in the legal standards applied.

Means-plus-function claim format (“means for…[performing a stated function]”) is a limited type of central claiming that is permitted but given a special (narrow) construction in the U.S. It is referred to as step-plus-function format for method/process claims. In many other countries use of the word “means” is considered broad but the U.S. is different in that respect. So-called single means claims are not permitted; any means-plus-function recitation must appear in combination with at least one other claim limitation. Also, under somewhat controversial recent court rulings that have been implemented by the USPTO, functional claim language might be interpreted as a means-plus-function recitation even without the words “means for” or “step for” appearing in the claim. This issue may merit further attention if a claim limitation is drafted in the same format as a traditional means-plus-function limitation and merely replaces the term “means” with a nonce word like “module”, “mechanism”, “element”, or “device” to connote merely a generic “black box” for performing the recited function(s), without recitation of any further structural limitations. Though it might potentially arise with other functional recitations too, such as where “configured to”, “adapted to”, or “operable to” claim language replaces the words “means for”. If means-plus-function claiming is invoked, the disclosure (including the description/specification and drawings) should be reviewed to ensure that enablement and definiteness is achieved (see discussion of specifications below).

Omnibus claims are not allowed because they do not follow peripheral claiming. That is, U.S. claims cannot recite “A device substantially as shown and described” because the meets-and-bounds of the outer periphery of scope is not made definite by such a claim. But specific references in claims to a table or a chemical formula in the drawings may be permitted in some (exceptional) circumstances.

Conditional method/process recitations (such as steps recited using the word “if…”) may be disregarded during examination. These are also referred to as “contingent limitations” that depend on a “condition precedent”. Contingent/conditional steps should ideally be re-written, moved to a dependent claim, or omitted entirely.

Product-by-process recitations in a product/apparatus claim are disfavored because the purely process-related steps are ignored during examination but are required for infringement. Product-by-process recitations are only given weight for the product structure they imply but are given no patentable weight during examination if they only recite a new way of making a known structure.

Use of alternative recitations and the word “or” (and “and/or”) can be scrutinized, because it may be considered indefinite or unclear in many situations. Under U.S. practice, so-called Markush group format (“selected from the group consisting of…”) is used to recite a closed list of specified alternatives. Along similar lines, use of open-ended or exemplary claim terminology, like “etc.”, “and the like”, “for example”, “preferably”, or “such as”, is not permitted and should be removed at the time of U.S. filing.

Relative terminology, including terms of degree or approximation, like “substantially” or “approximately”, may be permitted. So it is not necessary to automatically remove such terms from the claims when filing in the USA. However, the acceptability of such terms depends on the context in which they are used. Such terms of degree are not permitted if they make the scope of the claim indefinite. Acceptability thus depends on whether one of ordinary skill in the art would understand what is (and is not) claimed in light of the entire specification. In some situations, this means that acceptability may depend on whether the specification (detailed description) provides some standard or guidelines for measuring or assessing a term of degree as claimed.

Support for claims can be provided by the drawings or the original claims alone, in addition to any text of the specification (detailed description). U.S. law is more liberal than some foreign jurisdictions in terms of allowing variations in terminology.

Use of trademarks or trade names to state limitations in claims is not permitted. This is because the composition of a brand-name chemical formula may change over time despite use of the same trademark or trade name to identify it, for instance. References to trademarks or brand-name products should be replaced with generic terms. Discussion of particular brands of the generic product can be included in the detailed description portion of the specification, where such marks should be explicitly identified as trademarks through the use of appropriate symbols (namely, ®, TM, or SM).

A “broadest reasonable interpretation” standard is used by examiners at the USPTO when examining claims of a pending application. However, a different interpretive standard is applied to a granted patent, such as when enforced in court. The reason for that difference is that an applicant can amend claims during prosecution and so has opportunities to clarify the claim scope that are not readily available after a patent is granted.

Some Notes on Specifications (Detailed Descriptions of Inventions)

If any claims use the word “means”, or recite a limitation in purely functional terms that might be construed as a means-plus-function recitation (see above), then the applicant is subject to certain obligations to disclose “corresponding structure” (discussed further below) to achieve the claimed function elsewhere in the specification and/or drawings. Use of means-plus-function claiming does not allow an applicant to avoid disclosing and limiting the means-plus-function recitation to particular structures (and their known equivalents)—a reason it is often considered a narrow claim format in the U.S. unlike in many other countries. If an application fails to disclose adequate corresponding structure, the claim invoking means-plus-function claim format is considered indefinite. Thus, the acceptability of means-plus-function claims depends on the adequacy of the disclosure in the specification (that is, the description and drawings), which is somewhat context-specific. Merely generic restatements of function may not be sufficient. Instead, the portion of the specification describing the invention in detail (detailed description) should use structural terms beyond the word “means” sufficient and adequate to allow a person of ordinary skill in the art to implement the functional claim language as an integral whole based on specific teachings.

Interpretation of means-plus-function claim language requires determining what structure, if any, disclosed in the specification (including both the detailed description and drawings) corresponds to the claimed function. Disclosed structure is deemed “corresponding structure” only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. If the claimed function is performed by a general-purpose computer or microprocessor, for instance, then establishing corresponding structure further requires disclosure of the algorithm that the computer performs to accomplish that function. The corresponding structure in such situations is not the general purpose computer alone but rather the special-purpose computer programmed to perform the disclosed algorithm. Though, on the other hand, disclosure of a specific algorithm may not be required when the identified structure is not a general-purpose computer or processor.

Also use care when characterizing “the invention”. Wording in an application that identifies “the invention” as one specific thing (only) may limit claim scope and preclude claiming alternatives. That is, a broad claim is not supported when the entirety of the specification clearly indicates that the invention is of a much narrower scope. It is preferable to disclose possible embodiments as mere examples. Additionally, if it might be desirable to later exclude something from the claims, such as through a negative limitation, then the disclosure should make clear that some or all alternatives can be omitted.

Use of “object” statements is discouraged. These are not required under U.S. practice. Ideally, such statements should be removed or re-worded for U.S. filing.

If “examples” are included in the disclosure, working examples should use the past tense while prophetic (or “paper”) examples should use there future or present tense to make clear their merely prophetic nature.

Incorporations by reference are permitted. However, the timing of such an incorporation by reference determines whether it constitutes an impermissible addition of new matter. Moreover, care should be used when incorporating materials by reference so that unintended disclosures or confusion is not produced, such as when a series or chain of incorporations by reference to multiple documents is created.

Page numbers are required, which should appear in a footer. Paragraph numbering is preferred and, indeed, required for submissions in DOCX format.

Lastly, the abstract has a limit of 150 words, and it should not use claim-like terms (“wherein”, etc.). Also, it is not necessary to include reference numbers in the abstract and it is generally recommended to remove the reference numbers from the abstract for U.S. filing.

Some Notes on Drawings

In U.S. utility patent applications, a drawing must be provided “where necessary for the understanding of the subject matter sought to be patented.” USPTO regulations further state that the drawing(s) “must show every feature of the invention specified in the claims.” These drawing requirements must further be assessed in terms of whether the claimed subject matter lends itself to illustration. Determinations about the necessity of drawings is highly dependent on the nature of the claimed invention. As one example, an application that is directed to a chemical/biological composition may not require a drawing—particularly where important chemical formulas or tables of data are already present in the specification (description). However, design applications always require at least one drawing, because the drawing(s) define the claimed subject matter.

Figures for U.S. patent applications should be black-and-white line drawings with clean lines and clear, non-blurry text (and all such text must be oriented in the same direction on a given sheet). Use of grayscale shading or fill is usually objected to during examination—use stippling, cross-hatching, or the like instead (see suggested formats below). Photomicrographs or the like can be acceptable, though photographs are not ordinarily permitted. Color drawings require a petition and official fee and therefore are disfavored and to be avoided (except for plant patents, where they may be needed if color is a distinguishing characteristic). PCT Rule 11.13(a) prohibits coloring in international application drawings, so any coloring that does exist at U.S. national phase entry must ordinarily be removed.

Depictions of only prior art must be labeled “(PRIOR ART)” or carry a similar indication.

Drawings for U.S. applications must also comply with page margin requirements (37 C.F.R. § 1.84(g)). Each drawing sheet must include a top margin of at least 2.5 cm (1 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 1.5 cm (5/8 inch), and a bottom margin of at least 1.0 cm (3/8 inch), thereby leaving a sight no greater than 17.0 cm by 26.2 cm on 21.0 cm by 29.7 cm (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm by 24.4 cm (6 15/16 by 9 5/8 inches) on 21.6 cm by 27.9 cm (8 1/2 by 11 inch) drawing sheets. Sheet numbering (preferably in the format of [page number]/[total pages], e.g., “1/3”) and any optional title or similar identifications should be placed in the margins (customarily the top margin). It is important that page numbering and the like be clearly separated from the substantive drawings without overlap so that the USPTO can crop the figures to omit margin material for publication.

Also, numbers, letters, and reference characters in drawings must measure at least 0.32 cm (1/8 inch) in height (37 C.F.R. § 1.84(p)). This size requirement is partly because drawings are reduced in size for publication, and text that is too small might become illegible. Character/text size requirements for drawings are usually satisfied by 12 point font in all capital letters.

One other confusing aspect of U.S. practice is that if there is only one figure, it is necessary to omit a “FIG. 1” label (37 C.F.R. § 1.84(u)(1)). That drawing can be referred to as the “sole figure” in the text (specification/description).

Drawing informalities can often be fixed after initial filing. Though “new matter” cannot be added in new or amended drawings after an application is filed. In situations where a drawing is not necessary for the understanding of the invention but the claimed subject matter still admits of illustration by a drawing that the applicant has not furnished, the USPTO may later require submission of suitable drawing(s)—such an omission is treated as an informality.

Special Considerations for Design Patent Applications

The USA treats designs under its patent laws, whereas many other countries treat “industrial designs” as a separate type of IP or one more closely associated with trademark (or trade dress) law. As a result, foreign priority design registrations are usually not in a format directly usable as a U.S. design application—this is one reason Hague international design applications designating the USA may not be ideal. U.S. design patent applications require a text specification plus at least one drawing. It may be necessary to prepare a new specification for filing in the USA when a foreign priority design registration consists primarily of images or drawings alone.

U.S. design patent application drawing requirements are substantially different from other countries. The basic U.S. design drawing requirements are similar to those of utility patent applications (see above), but with some exceptions explained below. Photographs are not ordinarily accepted, and can never be intermixed with line drawings. Also, it may be necessary to include additional views (or a textual explanation that the side(s) of the article not illustrated are unornamented)—though single-view design applications may be permissible in some situations particularly where additional views would merely be duplicative. But the most important aspects of U.S. design practice have to do with the use of shading and broken lines in drawings.

Shading lines are used to show curves and flat surfaces in depicted articles (see example 1 and example 2). Stippling can also be used (see example). While surface shading is not required, it may be necessary in particular cases to show clearly the character and contour of all surfaces of any three-dimensional (3D) aspects of the design. Surface shading may also be necessary to distinguish between any open and solid areas of the depicted article.

Broken (dashed) lines are used to indicate unclaimed matter in design applications (see example 1, example 2, and example 3), including to define the scope of the claim and to show unclaimed but associated environment. This is a major difference from design practice in many other countries where broken lines or unclaimed matter are sometimes not permitted—it also is different from drawing standards for U.S. utility applications. In this respect, U.S. practice allows for partial design claims. This makes the selection and use of dashed lines an important consideration affecting the scope of the claimed subject matter. For instance, broken lines can be used to indicate that a boundary exists but is unclaimed, which might be used to claim a design without limiting the claim based on the illustration of particular overall dimensions.

While the scope of the claim in a design application is focused on what is illustrated in the drawing(s), the text of a design application can also limit the claim. For instance, the title can limit the scope of the claim, such as limiting the claimed design to a particular useful article even if that particular article is not illustrated in the drawings.

The USPTO provides a design application guide that further describes basic requirements.

Prosecution history estoppel may attach and limit the scope of a design patent claim if one or more alternative embodiments shown in the originally-filed drawings are later deleted for a reason related to patentability, such as following a restriction requirement (which is somewhat like a lack of unity rejection). The applicant can often file a divisional application to protect a deleted embodiment in that situation. However, the treatment of alternative embodiments and estoppel in design application places some importance on whether or not alternative designs should be included in the same application or not and whether a partial design claim using broken lines is preferable instead—something that will depend on context-specific, case-by-case factual and strategic considerations. If multiple embodiments are included, the applicant should be ready to file divisional applications to pursue additional inventions if a restriction requirement is issued.

Moreover, the USPTO and its reviewing appeals court have limited changing solid lines to broken after filing to later introduce a broader partial claim. In other words, the USPTO generally does not allow the scope of the claimed design to be significantly broadened by changing an existing solid line to a broken line after filing—including in a continuation application. This is a controversial position based on a U.S. appeals court reading a so-called “written description” possession requirement into the U.S. patent statutes (relating to enablement) against their plain language and grammar.

Presentation slides with information from this U.S. patent filing guide can be downloaded here.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.