Apply for a patent in the United States (USA)

The United States is one of the most important business and marketing areas for Finnish enterprises. An enterprise operating in the USA must be aware of the legislation and legal system in the country. As regards patenting, the legislation and legal practices in the USA differ from the European practices in many respects.

The terminology is different: ‘utility patent’ corresponds to the European patent, and ‘design patent’ is the equivalent to our design right. Do not confuse utility patent with ‘utility model’, which is available for technical inventions in many countries, among them Finland. There is no protection form corresponding to our utility model in the USA.

The patent authority in the USA is the United States Patent and Trademark Office (USPTO), which, along with the Chinese Patent Office and the European Patent Office (EPO), is one of the biggest patent authorities in the world. We recommend that you appoint a patent attorney or agent with extensive knowledge of the legislation and USPTO practices for US applications.

Read more on the USPTO website:

Different routes to patent in the USA

There are at least three different alternatives available for Finnish applicants to apply for a patent in the USA:

Alternative 1: File a national Finnish application, and pursue the process by filing an application with priority claim from the initial national application with the USPTO. The term for filing the US application is within 12 months from the filing date of the national application. Priority means that your application to the USPTO, when assessing novelty and inventive step, is regarded as having been filed at the same time as your initial national application. To reduce translation work, you can prepare your national application in English, and ask us to process it in English. This alternative will give the applicant time to digest the results of the examination of the national application before filing with the USPTO. Read more about priority.

Alternative 2: Start the process by filing an international patent application under the Patent Co-operation Treaty (PCT). The PRH is one of the PCT authorities, so you can file a PCT application with the PRH for search and examination. After a search, the PRH issues its preliminary opinion on the patentability of the invention. The term for proceeding with the application at the USPTO is within 30 months from the priority date of the application. Read more about the international patent application.

Alternative 3: You can also file directly with the USPTO. In this case, the first search and examination results concerning the invention come from the USPTO.

Accelerated examination at the USPTO

The patenting process at the USPTO may take several years. There are at least two possibilities to advance the process:

The PRH and the USPTO have signed a Patent Prosecution Highway Agreement for the purpose of speeding up patent applications. Taking advantage of the agreement, you can request an accelerated examination at the USPTO, if the claims of your application preceding your US application have already been judged to be allowable at the PRH. Read more about the Patent Prosecution Highway (PPH).

The USPTO has also established certain conditions under which an application may be subjected to an accelerated examination. One of the conditions is that the application has been subjected to a pre-examination search conducted in compliance with the USPTO requirements. Read more about the accelerated examination at the USPTO.

Differences in patent legislation and patentability criteria

As stated above, the patent system in the USA differs from the European system in many aspects. Some of the differences:

  • Possibility to file a provisional patent application
  • Possibility to file a patent application after the invention has become publicly available
  • Subject matters excluded from patenting
  • Assessment of inventive step.

The provisional application and the possibility to file a patent application after the invention has become publicly available give the applicant flexibility and extra time for consideration as to the application process. Excluding subject matters from patenting has effect on what types of inventions are patentable in the USA. Differences in assessing the inventive step may, in some cases, result in a different conclusion about an invention’s patentability in the USA than in Europe.

Previously, there were differences between the USA and Europe in determining the part to be entitled to patent protection. According to the US practice, the right belonged to the first inventor (first to invent), whereas in Europe, the right belongs to the first applicant (first to file). The US patent law was amended on 16 March 2013 (Leahy-Smith America Invents Act, AIA). The AIA has made the US practice similar to the European practice, with minor exceptions (first inventor to file). The switch is explained in detail on the USPTO website.

There are two types of US patent applications: provisional and non-provisional. A provisional application gives you a US filing date. It does not result in a patent, but you have to file a corresponding non-provisional application within 12 months. 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 on the filing date as the provisional US application has.

Read more on the USPTO website:

Possibility to file a patent application after the invention has become publicly available (grace period)

In Europe, not even the inventor can publish their invention before filing a patent application, as this disclosure is taken into account when assessing the novelty and inventive step. In such a case, the disclosure of the invention in detail will form an obstacle to the novelty of the claimed subject matter. As an exception to this view, it is possible for US inventors, under certain conditions, to file a patent application within a 12-month grace period from certain kinds of disclosure of the invention. In the USA, the disclose is excluded from the material for assessing novelty and inventive step, if it occurred within a year before the effective filing date of a patent application, and the disclosure was made, or its contents were provided by the inventors.

Read more on the USPTO website:

Subject matters excluded from patenting

In Europe, patentable subject matters relate to technical solutions to technical problems. Non-technical subject matters have been excluded from patenting, and any features relating to them cannot give patent claims an inventive step. Furthermore, medical treatment methods for humans or animals have been excluded from patenting.

The US patent legislation does not include above restrictions as to technology or methods of medical treatment. However, the Supreme Court of the United States prohibits patents on laws of nature, natural phenomena, abstract ideas, as well as products of nature. If it relates to above subject matters, a patent claim must also disclose features that make the subject matter much more restricted than the law of nature, natural phenomenon, or abstract idea itself.

As for business methods, the US practice has long been less strict than the European practice. However, some decisions of the US Supreme Court have lately narrowed this gap. Differences still exist. Commercial features have no effect on the inventive step in European patentability examination. The USPTO has one further evaluation: the subject matter eligibility analysis. In the last few years, the subject matter eligibility criteria have been reviewed by the USPTO in several occasions on the basis of the latest court decisions.

We at the PRH aim at focusing on both the European and 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.

Read more on the USPTO website:

Assessment of inventive step

In Europe, the so-called problem-solution approach is applied to assessing inventive step. An objective technical problem to be solved is formulated on the basis of the difference between the claimed invention and the closest prior art. The problem is used to assess if the claimed solution is obvious to the skilled person in view of prior art.

The USPTO does not apply the problem-solution approach when assessing the inventive step, but the assessment is based on the criteria set out in the KSR International Co. versus Teleflex Inc. decision (KSR Decision) by the US Supreme Court. These criteria indicate under which prerequisites a skilled person may arrive at a claimed invention by combining features from several cited documents. Contrary to the European practice, combining three or more documents is quite common. On the other hand, examiners at the USPTO often use cited documents to support the obviousness of even known features. You can combine documents from the art of the invention and from comparable technical fields. The criterion for being comparable is that the document is of importance for the problem solved by the inventor in the patent application.

Read more on the USPTO website:

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:

Presentation material: Patenting an invention in the USA (pdf, 0.46 Mt)

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Latest update 18.12.2019