Patent Prosecution In US-EU Legal Regime
Patent prosecution generally consists of number of stages and those are more or less similar in every country. The overall patent prosecution procedure in a single glance can be mentioned below as-
- Filing of the application
- Patent search and non-patent search
- Publication of the application
- Examination on filing/ any formalities examination and grant of patent
- Opposition of the patent
- Appeal against the decision of the patent office
- Grant or Rejection of the Patent
- Patent Prosecution in United States:
There are three types of patents that can be granted in US viz. Utility patent, Design patent and Plant patent. The subject matter of the patent application shall satisfy three criteria i.e. novelty, non-obviousness and industrial applicability.
Utility patent is granted to anyone for any invention or discovery of any new and useful process, machine, composition of matter, article of manufacture, or any new and useful improvement that fulfills the criteria of novelty, non-obviousness and industrial applicability.
Design patent is generally granted to any person who invents any new, original, ornamental design for an article of manufacture where the design is applied to an article having an eye appealing effect in the eyes of the customers.
Plant patent is granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
Patent filing procedure in US consists of a number of steps. To get a patent protection on the above mentioned subject matter the applicant have to file the provisional patent application and within 12 months a non-provisional patent application have to be filed. Provisional application describes the nature of the invention or discovery and it provides a priority date to the applicant. Subsequently, the applicants have to file a non-provisional application that contains a complete specification to describe the nature, use and scope of the invention or discovery.
Utility Patent Filing Procedure:
In US to get a utility patent the subject matter has to satisfy three criteria; there must be an assertion to identify a specific utility, a substantial utility and these specific as well as substantial utility should be able to claim credibility. The Utility patent application prosecution procedure can be discussed by several steps below:
- Whether the idea is publicly disclosed? If it is yes then file provisional application within 1 year.
- Whether PCT has been filed or not? If it is no then file Non-provisional application within 1 year from the date of filing of the provisional application. But if it is yes then file Non-provisional within 30 months from the date of first filing.
- Whether any restriction is required after filing the non-provisional application? If it is yes then make a response and if it is no then wait for the First Office Action which is transmitted by the examiner within 3 months from the date of response.
- Within 6 months from the First Office Action the applicant have to make a response regarding the amendment and/or arguments by an interview with the examiner.
- The examiner shall inform Further Office Action (generally final rejection) within 2 months from the date of first response of the first office action.
- The applicant shall response to the Final Office Action within 6 months from the date of final office action.
- If the response is allowed then the applicant shall have to pay the Issue Fee
- After paying the Issue Fee by the applicant, the USPTO issue the patent on a Tuesday within 3-8 months from the date of payment of issue fee and the term of the patent is granted for a period of 20 years from the filing of priority application.
Design Patent Filing Procedure:
The language of the 35 U.S.C. 171 Patents for designs is “Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefore, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided”.
Again regarding the priority 35 U.S.C. 172 says that “The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six (6) months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs”.
According to 35 U.S.C. 173 the Design Patent is protected for a period of 14 years from the date of grant.
Again under 37 C.F.R 1.153 the design patent application shall contain a single claim. Arrangement of the documents as mentioned in 37 C.F.R 1.154 are Design application form, fee transmittal form, application data sheet, specification, drawings or photographs, executed oath or declaration.
The specification should include-
- Preamble
- Cross reference to related applications (unless included in the application data sheet)
- Statement regarding federally sponsored research or development
- Copyright reservation statement
- Descriptions of the figure or figures of the drawings
- Feature description
- Single claim.
The applicant must conclude a pre-examination search before writing a request for the examination of the design application. The applicant may request that the office shall expedite the examination of design application.
Plant Patent Prosecution:
An application for a plant patent is made for a plant variety having distinct quality and characteristics i.e. a separate identity altogether. 35 USC 161 talks about the plant patent in US.
The language of section-161 is like that “whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefore, subject to the conditions and requirements of this title”.
According to 37 CFR 1.163 (b) the elements of plant patent application are as follows-
- Plant application transmittal form
- Fee transmittal form
- Application data
- Specification
- Drawings (in duplicate)
- Executed oath or declaration
Similarly, the specification shall contains-
- Title of the invention, which may include an introductory portion stating the name, citizenship, and residence of the applicant
- Cross reference to related applications (unless included in the application data sheet)
- Statement regarding federally sponsored research and development
- Latin name of the genus and species of the plant claimed
- Variety denomination
- Background of the invention
- Brief summary of the invention
- Brief description of the drawings
- Detailed botanical description
- A single claim
- Abstract of the disclosure
- Patent Prosecution in European Union:
According to Article-52 of the European Patent Convention (EPC), 1973 any invention shall be “susceptible of industrial application, which are new and which involves an inventive step”.
Article78 of the Convention says that a patent application shall contains-
- A request for the grant of a patent
- A specification containing a description of the invention, a claim or claims, drawings (if any)
- The abstract (not required to provide at the time of filing)
The Patent filing procedure in EU before the European Patent Office (EPO) can be followed as given below-
- File an application (Article-75 of EPC)
- Preliminary Examination process (Article-91of EPC)
- Patent Priority Search (Article-92 of EPC)
- Publication of a European patent application (18 months or earlier. Article-93 EPC)
- Examination of the European Patent application (Article-96 of EPC)
- Grant of the Patent (Article-97 of EPC)
- Publication of the European Patent Application (Article-98 of EPC
