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"Submit all kinds of application materials and fees strictly on time, and overdue applications will lead to missed applications. ”
来源:IPRdaily中文网(iprdaily.cn)
Author: Zhang Hong
摘要 >>
Chinese enterprises, universities and scientific research institutions can generally file patent applications with the USPTO through the Paris Convention and the PCT international application. From pre-submission preparation to post-submission to authorization, there are multiple procedures such as application and examination, involving multiple deadlines. There are opportunities to remedy missed or overdue deadlines. If the deadline is missed, the patent application may become invalid and end unfortunately. Compared to most countries, U.S. patent law is more lenient with regrets caused by overdue or delayed time limits, and most of them have the opportunity to remedy. For example, if a patent application is filed with the USPTO after 12 months have elapsed from the priority date, there is still a chance that it may be considered. For another example, if the deadline for responding is exceeded during the examination process, a request for an extension may be made at the same time when the reply is submitted after the deadline.
Keywords: U.S. Patent Application Route, Paris Convention, PCT International Application, 12 Months, Late Remedy, Office Action Response, Authorization Registration
1. 12 months before filing with the U.S. Patent Office
China and the United States are both members of the Paris Convention for the Protection of Industrial Property (Paris Convention for the Protection of Industrial Property) and the PCT (Patent Cooperation Treaty). Apply for a U.S. invention patent and enter the U.S.
1) Paris Convention
Based on the principle of national treatment under the Paris Convention, there are two options for entering the United States under the Paris Convention route:
The first is to file a patent directly in the U.S., and the second is to file a patent in China and then file a U.S. application within 12 months from the date of filing in China (or the priority date if there is a priority date) and claim the priority of the Chinese application (and/or its priority application).
2）PCT
There are two ways to enter the U.S. under the PCT route:
Regular Entry: Entry into the U.S. pursuant to 35 U.S.C. § 371 is the usual method, and an application entered into the U.S. national phase by regular entry is legally considered to be the same application as an international application under the PCT (similar to the entry into the Chinese national phase through a PCT international application).
Bypass entry (bypass): Entry into the United States pursuant to 35 U.S.C. §111(a) is the bypass entry method, also known as the bypass entry method, and an application entering the United States by bypass entry essentially abandons the original PCT international application and only enjoys the priority date of the PCT international application as the parent case (similar to a regular U.S. local application).
Q: Through the Paris Convention, can I still have the opportunity to enter the United States after the 12-month priority period?
A: Yes
Priority restoration of entry into the U.S. can be requested within 2 months, grounds for restoration: unintentional.
Q: If the two-month recovery period has passed, is there still a chance to enter the U.S. and apply for the U.S.?
A: Yes
In this case, it is necessary to look at when the earliest date of publication of the case is, and if it has not been more than 12 months since the earliest date of publication, there is still an opportunity to file a U.S. application.
Q: Is there a chance to enter the U.S. national phase and apply for a U.S. patent after the missed 30-month period through the PCT international filing route?
A: Yes
Restoration of entry into the U.S. can be requested within 2 years, grounds for reinstatement: unintentional
Q: If the two-month recovery period has passed, is there still a chance to enter the U.S. and apply for the U.S.?
A: Yes
Q: If an applicant misses the 12-month priority period and requests restoration of priority and files a PCT application within 2 months under the PCT route, can the applicant enter the United States through the PCT route?
A: Yes
2. After filing with the U.S. Patent Office
The documents required to file an application include the application text including the description and claims, the IDS, the signature document including Assignment, DEC, and POA, and the request.
The application fee, search fee, examination fee and application documents must be paid at the same time when filing the application, otherwise a late payment fee will be incurred.
Once the petition is filed, the USPTO will issue an official acknowledgment of receipt and immediately see the main information about the case, such as the petition number. Generally, after about 1-6 months after the formal examination is passed, the USPTO will issue a formal official acceptance notice "filing receipt".
3. Under review [3 months]
A substantive office action is generally issued 12 to 20 months after the filing of the application. Types of office actions include: unitary opinion, non-final office action, and final office action.
The time limit for responding to an office action is generally 3 months from the date of issuance. The single opinion notice may be 2 months or 3 months.
The time limit for responding to the notice of amendment may be 1 month or 2 months from the date of issuance.
4. Authorization
If no reason for refusal is found after examination, a notice of grant shall be issued, and the applicant shall go through the patent registration formalities and pay the registration fee within three months from the date of receipt of the notice.
brief summary
The priority period, the time limit for responding to the office action, and the time limit for authorization are some important time limits in the U.S. patent application and examination, and they are some of the key links that need to be focused on and managed in the process of patent application examination. Submit all kinds of application materials and fees on time, such as priority deadlines, overdue will cause the application to be missed. During the review process, regularly follow up the progress of the review, deal with possible problems in a timely manner, and if it is necessary to provide supplementary materials, modify the specification, etc., the application will be deemed to be abandoned if it is overdue. Respond to office actions and challenges from patent offices in a timely manner, and failure to respond in a timely manner will affect the examination process and results.
(Original title: Time limit for U.S. invention patent application along the way)
来源:IPRdaily中文网(iprdaily.cn)
Author: Zhang Hong
编辑:IPRdaily辛夷 校对:IPRdaily纵横君