FAQOUSAgents

FAQs FOR OUS AGENTS

FREQUENTLY ASKED QUESTIONS (FAQs)

FOR INTELLECTUAL PROPERTY AGENTS AND ATTORNEYS OUTSIDE THE US

What is the deadline for filing a US patent application?
How is priority claimed to a non-US patent application?
What is the definition of prior art in the US?
Can a US patent application be filed in a language other than English?
How are US federal trademark/servicemark rights obtained?
Who is the proper applicant in a US patent application?

1. What is the deadline for filing a US patent application?

The deadline for filing a US patent application is one (1) year after the date of a public use, sale or offer for sale of the invention in the US, or a description of the invention in a written publication (including a patent) anywhere in the world.

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2. How is priority claimed to a non-US patent application?

There are 5 basic requirements.

1. The filing must have been in an eligible WTC or other country.

2. The US application must be filed within 12 months of the first non-US application for the invention.

3. The US application must claim the same invention adequately disclosed in the non-US application.

4. The non-US application must be for a patent.

5. The non-US application must have been filed by the same applicant in the US or by a legal representative or assignee of that applicant.

Note that under the US priority statute (35 USC Section 119) the US application deadlines listed above apply even to US applications claiming priority of non-US applications. It is not clear whether this requirement is consistent with the Paris Convention. However, Section 119 controls.

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3. What is the definition of prior art in the US ?

In general, prior art is: (1) any knowledge or use of the invention in the US, or any patenting or description in a printed publication anywhere in the world by others before the invention by the applicant; (2) any patenting or description in a printed publication anywhere in the world, or any public use or on sale activity in the US, by anyone (including the inventor) more than one year prior to the date of application for patent in the US; and (3) a published US application (or PCT international application published in English), by another, filed in the US before the invention by the applicant, or a patent granted on an application by another filed in the US before the invention by the applicant. Priority of invention is determined taking into consideration conception as well as reasonable diligence in reduction to practice after conception.

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4. Can a US patent application be filed in a language other than English ?

Yes. A translation can be submitted after filing.

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5. How are US federal trademark/servicemark rights obtained ?

In general, US federal trademark rights are obtained by first using a trademark in interstate or international commerce, or first filing an US trademark registration application based on a bona fide intention to use the mark.

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6. Who is a proper applicant in a US patent application?

US law requires that the applicant for a patent be the inventor(s). Consequently, indentity of inventorship between a foreign priority application and the US application is required for a valid US priority claim.

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