Fequently Asked Questions
Patents
What are the basic filing requirements for obtaining a filing date in the United States for either a convention or a non-convention filing?
The basis filing requirements, in order to filing a U.S. patent application, are:
What are the basic filing requirements for obtaining a filing date in the United States for a National Stage completion filing?
The basis filing requirements, in order to filing a U.S. patent application, are:
1) a complete copy of the specification, any necessary drawing(s), and at least one claim of the application as originally filed?please note that the filed documents may be in a foreign language?or a copy of form IB/PCT/308 which confirms that the United States Patent and Trademark Office received a copy of the international application as originally filed from the International Bureau; and
2) the official filing fee.
Although not necessary, it is helpful to have the full legal name(s)and the complete mailing address and residence of each inventor(s) as well as any Assignee(s)?this information is found on the face page of the published PCT application. All of the remaining documents and fees may be filed at a later date.
Is a signed Declaration and Power of Attorney form required at the time of filing?
A: No, it is possible to file a patent application without the Declaration and Power of attorney form. If a signed Declaration and Power of Attorney form does not accompany the filing documents, the United States Patent and Trademark Office will issue a Notice to File Missing Parts which will set a term, e.g., normal 1-2 months, in which to submit the necessary Declaration and Power of Attorney form, along with the associated surcharge for late filing of the same. If necessary, an extension of term can be obtained to facilitate filing the Declaration and Power of Attorney form after the date set in the Notice.
Is an English translation of any foreign language specification required at the time of filing?
A: No, it is possible to file an English translation after the filing of a U.S. application. Typically the English translation is required within a few months after the filing date. The United States Patent and Trademark Office will normally issue a Notice to File Missing Parts which will set a term, i.e., either 1 or 2 months, in which to submit the necessary English translation, along with the associated surcharge for late filing of the same. If necessary, an extension of term of upon to four (4) months can be obtained to facilitate filing the English translation after the date set in the Notice.
Is a certified copy of the priority document required at time of filing?
A: No it is not. If a patent application claims priority to one or more foreign application(s), it is not necessary to filed a certified copy of each priority document at the time of filing. However, please note that the United States Patent and Trademark Office will not issue any Notice requesting submission of any missing priority document(s) and a certified copy of each priority document(s) must be filed prior to issuance of the application as a Patent otherwise the priority claim(s) will be forfeited.
Is there a surcharge for late filing of a certified copy of the priority document?
A: No, there is not any surcharge associated with late filing of a certified copy of each priority document(s) with the United States Patent and Trademark Office. However, if a certified copy of any claimed priority document(s) is not filed prior to the time that the issue fee is paid, then it will be necessary to Petition the United States Patent and Trademark Office for late entry of the same.
Is an Assignment required at time of filing?
A: No, an Assignment is not required at the time of filing. However, if the Assignee?s name is to appear on the published U.S. application, it is generally advisable to file the Assignment, either at the time of filing or within the first few months to ensure that the United States Patent and Trademark Office records accurately reflects the assignee?s ownership of the patent application at the time of publication. Alternatively, this information may be listed on an Application Data Sheet at the time of filing.
Is there a surcharge for late filing of the Assignment?
A: No, there is not any surcharge associated with late filing of the Assignment or any other document to be recorded with the United States Patent and Trademark Office. However, there is an associated recordal fee per document to be recorded with the United States Patent and Trademark Office.
Must any foreign language Assignment be accompanied by an English language translation thereof?
A: Yes, each foreign language patent Assignment, or other document affecting title of the patent and/or patent application, must be accompanied by an English language translation thereof, preferably a Verified English translation thereof. To simplify conveyance of intellectual property, many clients request our office to prepare and forward a suitable Assignment for review and signature by the necessary parties. In order for our office to attend to the same, please provide our office with the complete legal names of the Assignee(s) and each Assignor(s), the complete addresses for all involved parties, the type of entity of each party (e.g., individual, corporation, partnership, joint stock company, etc.), and specifically identify each intellectual property to be assigned. Our office will then prepare and forward a suitable Assignment for review and signature by the necessary parties.
Is it possible to correct the inventorship of a patent application?
A: Yes, it is possible to correct the inventorship, by either adding or cancelling one or more inventor(s). Generally, a Petition to the United States Patent and Trademark Office is required along with a new Declaration and Power of Attorney form and a statement for the inventor(s) to be added/deleted indicating that the error in naming or failing to name such individual(s) as inventor occurred without any deceptive intent on his/her/their part. A new Declaration and Power of Attorney form, signed by all remaining inventors, should also accompany the Petition.
Is it possible to file a patent application when at least one Inventor can not be found after reasonable effort?
A: Yes, it is possible to file a patent application when an inventor(s) can not be found after diligent effort to reach such inventor(s). Generally the person most knowledgeable about the facts and circumstances about the non-signing inventor(s) should mail, via certified mail return receipt requested, a copy of the patent application?including the specification, clams, abstract, drawings and Declaration and Power of Attorney form?to each such inventor(s) at such inventor(s) last known address. The Declaration and Power of Attorney form must be signed by any remaining inventor(s), both on behalf of himself/herself/themselves as well as on behalf of each non-signing inventor(s). The person most knowledgeable about the facts and circumstances about the non-signing inventor(s) must also submit a Statement setting forth the attempt(s) to reach the non-singing inventor(s) and attach to such Statement evidence substantiating the effort to reach the non-signing inventor(s). If no signing inventor is available, then any Assignee may sign the Declaration and Power of Attorney form on behalf of the non-signing inventor(s).
Is it possible to file a patent application when at least one Inventor refuses to sign the Declaration and Power of Attorney form?
A: Yes, it is possible to file a patent application when an inventor(s) refuses to sign Declaration and Power of Attorney form. Generally the person most knowledgeable about the facts and circumstances about the refusal of the non-signing inventor(s) should mail, via certified mail return receipt requested, a copy of the patent application?including the specification, clams, abstract, drawings and Declaration and Power of Attorney form?to each such inventor(s) at such inventor(s) last known address. The Declaration and Power of Attorney form must be signed by any remaining inventor(s), both on behalf of himself/herself/themselves as well as on behalf of each non-signing inventor(s). The person most knowledgeable about the facts and circumstances about the non-signing inventor(s) must also submit a Statement setting forth the attempt(s) to reach the non-singing inventor(s) and attach to such Statement evidence substantiating the refusal of the non-signing inventor(s) to sign the application papers, e.g., a letter back for the inventor(s) indicating such refusal. If no signing inventor is available, then any Assignee may sign the Declaration and Power of Attorney form on behalf of the non-signing inventor(s).
Is a U.S. application published?
A: Yes, commencing in 2000, all U.S. application are now published generally shortly following eighteen months from the earliest claimed priority date.
Is it possible to request early publication of a U.S. application?
A: Yes, it is possible to request the United States Patent and Trademark Office to publish an application earlier than eighteen months from the earliest claimed priority date. This is done by file a Request for early publication with the United States Patent and Trademark Office along with the associated official fee.
Does the Inventor have a Duty of Candor to the United States Patent and Trademark Office?
A: Yes, each inventor, each attorney and all individuals involved with prosecution with a patent application have a duty of candor to the United States Patent and Trademark Office. This duty requires each such individuals to inform the United States Patent and Trademark Office of all prior art references and activities which are material to the prosecution of the patent application. Such information is generally filed by way of an Information Disclosure Statement, typically within three months of filing. Please note that an information filed with the United States Patent and Trademark Office after a first official action on the merits will require an official fee for late submission of the same unless the Applicant can certify to the United States Patent and Trademark Office that the Applicant has only known about this newly cited art for less than three months. Any information filed with the United States Patent and Trademark Office after a final action or a Notice of Allowance, but before payment of the issue fee, must also include both a certification that the Applicant has known about this art for less than three months and an official fee otherwise this information will not be substantively considered and may only be considered in a Requested for Continued Examination (RCE) Application.