United States

 

What to expect when filing a Patent in the United States?

The United States Patent Office (USPTO) is generally regarded as the most important place to file a patent. While China has overtaken the US for the #1 spot regarding the total number of patent applications filed over the past five years, those numbers can’t be trusted. The entrepreneurial spirit in the United States has been a longstanding backbone of the creative juices of the human race. Quality over quantity is paramount in the realm of inventions, and the Steve Jobs, Thomas Edisons, and Nikola Teslas of this world tend to originate from the US and participate in its market. US patents hold significant value for investors and can be expected to be a valuable choice for protecting your IP rights. It's important to note that patent examiners can vary, and some may have a better track record than others in granting applications.


When is the National Phase Deadline for a Patent in the United States?

The national phase deadline in the United States is 30 months from the priority date.


When to file an amendment for a patent in the United States?

In the US there is a claims fee of $50 per claim in excess of 20 and $344 for each multiple dependent claim in excess of 3. While the claims fee is due upon filing, it can be deferred for several months by paying an additional $140 official fee when responding to the notice of missing parts. You can avoid the excess claims fee by filing a preliminary amendment when submitting your non-provisional national phase entry or when filing direct via the Paris Convention. It is also highly advisable to file a preliminary amendment if the application was drafted outside of the US since foreign patent offices and attorneys generally have different criteria. This will ensure that the application complies with US standards and formatting requirements. Additionally, a well-prepared preliminary amendment can make a better first impression on the examiner, which can make a big difference since they are human and subjective like a judge is.


When to file a divisional patent in the United States?

If a divisional application is desired in the United States, then it must be filed before the patent issues.


When to pay grant and maintenance fees for a patent in the United States?

In the United States, the grant fee must be paid within three months of receiving the Notice of Allowance. Once a patent is granted, maintenance or renewal fees become applicable, and they are due at specific intervals, roughly every 4 years, starting at 3.5 years after grant, followed by 7.5 years and 11.5 years. It's crucial to carefully review the Notice of Allowance to ensure that the patent was granted for the correct reasons. This review is your last opportunity to address any misunderstandings the examiner might have had regarding the prior art and its implications. Even after the patent is granted, a competitor may still argue that they are not infringing based on the language used in the Notice of Allowance by the examiner.


Official Filing fees: $664 (USD)

Official Independent claims fee in excess of 3: $192 (USD)

Official claims fee in excess of 20: $40 (USD)

Official multiple dependent claims fee in excess of 3: $344 (USD)

Official Notice of missing parts: $140 (USD)

Official Issue fee: $480 (USD)

Official Maintenance fees 3.5 years: $800 (USD)

Official Maintenance fees 7.5 years: $1,504 (USD)

Official Maintenance fees 11.5 years: $3,080 (USD)