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Albright IP Limited
4.9
Based on 85 reviews
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JDG TimeSave Tools
17:53 08 Mar 22
Absolutely excellent... Clear, detailed and prompt responses with no sales... pressure at all.No upselling for their fee either, just a fair, professional appraisal...Thanks to Allbright, I am not spending thousands on a low hope project (when I so easily could have been).read more
James
James
19:06 07 Mar 22
Thank you to the team, very professional, very helpful I would fully... recommend them to take care if your business. Thanks for a great service 👍read more
21 kevill
21 kevill
17:26 26 Nov 21
Albright IP have been very good to me. Their ability to explain complex... topics in an easy to digest manner and carrying out the work in a good time scale was great. while also keeping me up to date with the application .Then end result being that we accomplished everything I wanted to in time and budget.Highly recommend.read more
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US PATENTS

A US patent will give you patent protection which covers a major part of North America, and in most cases your biggest potential market. Albright IP have excellent US associates providing very competitive costs for filing and prosecuting US patents.

US PATENTS OVERVIEW

Before filing for a patent in the USA, it is usual to file a base patent application here in the UK, or your home country first. This base application serves to establish a priority date for your invention.

It is then possible to defer filing your a US patent applications for up to one year from the priority date.

Albright IP can advise you regarding a foreign filing strategy, whilst taking account of your circumstances. This may be direct filings claiming priority from your domestic patent application, or national stage entry from your international PCT patent application.

Are US patent applications similar to UK and European patent applications?

The US patent system has a number of differences to those of the UK and Europe. For example, the way in which inventive step is examined differs considerably, and the claims must be presented in a different manner to avoid incurring claims fees or receiving clarity objections. The US patent system allows provisional and non-provisional patent applications, as well as continuation and continuation-in-part applications.

Please explore the following sections for information and suggestions concerning US patent applications.

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US Patent Search

A US patent application is not usually officially searched during the early pending phase. Typically, a US patent application is only searched during examination. Currently, examination usually occurs following publication at around 18 months from the earliest priority date (the filing date of the first or earliest related patent application).

Therefore, if the US patent application is your first patent application, you will typically not receive a worldwide search report until 18 months after filing. The downside to this is that any corresponding applications outside the US, such as applications in Europe or the United Kingdom, must be submitted within the first 12 months following submission of your US patent application. As such, if there has been no formal search conducted, you could be filing ‘blind’ without any knowledge of earlier prior patent applications that may impact your novelty and inventiveness.

In light of this, it is preferable to conduct a thorough pre-application search prior to your first filing, assuming you are first filing your patent application in the United States.

Pre-application searches can be conducted on the freely available Espacenet database at: https://worldwide.espacenet.com/advancedSearch?locale=en_EP .

Alternatively, a professional patent search company can be used, and most patent attorneys will be able to provide this service at a reasonable cost.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified attorneys.

US Patent Examination

The USPTO examines patent applications differently to the UK IPO and the EPO.

The USPTO will issue a first Office Action setting out any rejections, and giving a three month period in which to respond to the rejections with argument and/or amendment. It is normally possible to respond up to 3 months after the deadline, but incremental late fees must also be paid.

If the rejections are maintained, or new rejections presented, the USPTO then normally issues a second Final Office Action. By ‘Final’, failing to overcome the rejections will lead to the application being refused.

It is possible to file a Request for Continued Examination (RCE) at additional cost when responding to a Final Office Action, which means that the USPTO must re-examine your application and consider further arguments and/or amendments you submit.

Due to the way in which the USPTO examines inventive step (or obviousness), it is possible for US Examiners to present new combinations of prior art to support new rejections. Therefore, we recommend seeking professional advice if you are interested in obtaining a US patent.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified attorneys.

US Claims

Claims fees

When you are ready to file your US patent application, it is beneficial to bear in mind that extra official fees are incurred for claims in excess of the first twenty.

Furthermore, if there are more than three independent claims (which are claims having no prior dependency on any earlier claim), then again further official fees will be due.

As such, if the number of claims can be limited to twenty with only three main claims or less, the official fees payable to the United States Patent and Trademark Office (USPTO) will be minimised.

Claim wording

The actual terminology used in the claims of a US patent application is also important, especially compared to European and British patent applications.

Often, phrases involving the term ‘means’ are used in the claims of a US patent application. Whilst ‘means’ language is perfectly acceptable in a European patent and a British patent, and confers a broad meaning, it can be held to be much more limiting in the United States.

Often, a ‘means’ phrase will be held to be limited to exactly what is described in the US patent specification and little or no more. This can be unduly limiting for the inventor, especially when seeking to enforce the patent right or when seeking a licensee or assignee for the patent. In this latter case, unduly limiting terms in the granted patent can result in the potential value of the patent being dramatically decreased.

Consequently, before filing your US patent application, carefully consider the claim language especially if phrases including ‘means’ are used.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified attorneys.

US Patent Drawings

The drawings of a US patent application must also show all of the features of the claims. If they do not, then an objection will be raised during examination. The offending claim could potentially be cancelled during examination to overcome this issue, but it is preferable to look at this aspect prior to filing to avoid such a situation arising in the first place.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified attorneys.

US Patent Specification layout

It is typical to format the specification of a US patent application to include sub-headings, such as ‘Background of the Invention’, ‘Brief Description of the Drawings’, ‘Description of the Preferred Embodiments’, ‘What is claimed is:’, and ‘Abstract of the Disclosure’.

Such sub-headings are not required in a European patent application or a British patent application, and as such can be removed when filing.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified attorneys.

US Formal Documents

When filing a US patent application, a combined Declaration and Oath is usually required, along with a Power of Attorney (POA) if a legal representative is being used.

If the patent application is to be assigned to a company, for example, then a formal assignment document will also be required.

By organising these documents in good time so that they can all be filed at the time of making the submission of the US patent application to the USPTO, further late filing fees can be saved.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified attorneys.

US Provisional and Non-Provisional applications

A provisional patent application can be filed at low cost as a precursor to filing a non-provisional application. A provisional application does not grant, but provides a 12 month window in which to file a non-provisional application which claims priority to the earlier provisional application.

We would always recommend filing a non-provisional patent application instead of a provisional application. Please click here to see our video discussing provisional and non-provisional applications.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified attorneys.

US Continuation and Continuation-in-Part applications

A continuation application is effectively a re-filing of your original application, and gives you another opportunity to go through the examination process.

A continuation-in-part application is similar to a continuation application, but allows you to add new material when re-filing, relating to any improvements you may have made since filing your original application.

Correspondence relating to the previous application will remain on file due to file wrapper estoppel in the US.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified attorneys.

Through our qualified and experienced British and European patent attorneys, and our highly capable network of US attorneys, Albright IP can fully and proactively protect your invention, giving you the patent rights to then secure your market or to obtain lucrative licence and assignment deals.

How do I know whether someone has already made my invention?

Prior to filing a new patent application, Albright IP recommends that you make prior art searches to ascertain as far as you can the state of the art. This will help us to target the novel and inventive features of your invention. The European Patent Office operates a basic free searchable patents database, called Espacenet. If desired, we are also able to obtain or make pre-application searches for you.

If you would like further information, please contact us using the enquiry form to the left for further no-obligation free advice. Alternatively, call us on +44 (0)1242 691 801 to speak to a qualified British and European patent attorney.