Apply for a patent in the United States (USA)

The patent authority in the USA is the United States Patent and Trademark Office (USPTO).

The patent terminology is different from ours: ‘utility patent’ corresponds to the European patent, and ‘design patent’ is the equivalent to our design right. You should not mix the utility patent with ‘utility model’, which is available in many countries, among them Finland. There is no protection form corresponding to our utility model in the USA.

The US patent law was amended on 16 March 2013 (Leahy-Smith America Invents Act, AIA). The new act changes the US patent system from a ‘first to invent’ to a ‘first inventor to file’ system. In Europe, the right to a patent goes to the first filer (‘first to file’). The AIA has made the US practice similar to the European practice, with minor exceptions (such as the ‘first inventor to file’). The change is explained in detail on the USPTO website.

We recommend that you appoint a patent attorney or agent for US applications.

We also recommend that you take advantage of our PPH agreements and request a fast-track examination at the USPTO, if the claims of your first application preceding your application to the USPTO have already been judged to be allowable at the PRH. The procedure can also be expedited on certain specific grounds that include, for example, a preliminary search carried out to a sufficient extent.

Read more about the Patent Prosecution Highway (PPH) and accelerated examination at the USPTO.

Provisional and nonprovisional applications

There are two types of US patent applications: provisional and nonprovisional. A provisional application gives you a US filing date. It does not result in a patent, but you have to file a corresponding nonprovisional application during a 12-month pendency period. However, after the AIA entered into force (on 16 March 2013), the provisional application has lost some of its importance. Today, claiming priority from a Finnish application has the same effect as to the filing date as the provisional US application.

Patentability criteria differences

There are differences between the patent laws in the USA and in European countries. As with business methods, the US practice has long been more flexible than the European practice. However, some decisions of the US Supreme Court have lately narrowed this gap. Differences still exist. In Europe, contrary to the USA, commercial features are not usually examined when assessing the novelty and inventive step. As the last decision of the US Supreme Court is rather fresh (CLS Bank vs. Alice, June 2014), not all of its consequences have yet been recorded in the USPTO guidelines.

We at the PRH aim at focusing on both the European and the US practices, and examine all features of an invention – whether they are technical or commercial. We do not sort out the technical and non-technical features until our final assessment.

Appeals

You can appeal against an unfavourable decision to the USPTO’s internal board Patent Trial and Appeal Board (PTAB). The route is as follows:

1. Patent Trial and Appeal Board (PTAB)

2. District Court, where you can have witnesses

3. United States Court of Appeals for the Federal Circuit (CAFC)

4. United States Supreme Court, which you can only appeal to by leave to appeal

Further information:

Go to the USPTO website for the following information:

Precedents:

CLS Bank vs. Alice, June 2014


Printable version
Latest update 16.06.2015