Patenting ideas in USA
The United States is an economically profitable and strong country. Many people strive there in order to implement intellectual developments or ideas. Patenting ideas in the USA is carried out by the United States Patent and Trademark Office (USPTO). It registers more than 600,000 patent applications annually, although during 2020 it registered only 300,000.
Almost 45% of applicants are not US residents. Developers of software, wireless equipment, video services, data storage and other things want to be patented here in order to enter the market with a huge number of paying buyers. Non-patented innovations in the United States are 10 times cheaper, and they do not want to buy them.
After applying to the US Patent Office, only half of the applicants receive patents, that is, there are a lot of refusals. They are associated with incorrectly completed documents, non-compliance with patentability criteria, late payment of fees.
The SION Patent Law Firm specializes in the registration of industrial property in the United States. We will prepare the documentation to minimize the risk of rejection. We will submit the main or national application, we will interact with the USPTO until we receive the title of protection.
Patenting process in USA
American specialized legislation provides for patents for inventions and plant varieties. And it will not work to patent a utility model. An important feature of the country is that, unlike other jurisdictions, it is possible to patent software, which is what the developers of computer programs are striving for.
You can serve here in three ways:
- For a national application to the USPTO, this requires confirmation of the use of the facility in the United States. The option is more suitable for legal entities with American registration.
- Based on the national Ukrainian application, within 12 months after its submission.
- Under the international PCT system (Patent Cooperation Treaty). Its plus – the applicant gets 30 months to finalize the innovation, to study the market.
According to the country’s patent law, the registration procedure involves the following stages: patent search, writing of application materials, filing of documents, examination (formal, in essence), and the issuance of a patent directly. All steps are mandatory, except for the first: patent research is not required by the responsible authority for registration, but it is highly desirable to avoid problems in the future. At the stage of substantive examination, the official department may have questions. Our specialists will clarify everything and transfer the requested information.
Non-residents in the States will not be able to file a patent without the involvement of patent attorneys. We recommend that you entrust the process to the specialists of our company. They will take into account all the subtleties of preparation, answer inquiries, and follow the deadlines the first time. They will help you to file a declaration on the disclosure of information, without which you can later lose your exclusive rights. Since 2011, our company has perfectly fine-tuned patenting processes in the United States, and has successfully represented the interests of Ukrainians and citizens of other countries many times. We work without intermediaries and translators, clients will not have to overpay.
Provisional US Patent Application
In the States, there are two types of applications: main and preliminary. The second one is very popular, as it gives the applicant additional opportunities. It is used only in relation to inventions. It sets out the essence of the technical solution in a simplified way, after which 12 months are given to submit the main application. Registration will not work without the latter.
That is, the preliminary appeal, as it were, precedes, “reserves” the main one. It is used when the innovation is not completely finalized, the documentation is not ready. But there is already a desire to look for partners, you need to overtake competitors or prove solvency to investors. After it, the priority date of application is set according to the first-to-file principle (whoever first declared the rights, he will receive them). This is important for competitive technology areas.
If more than 600 thousand basic applications are submitted annually, then there are about 170 thousand preliminary applications. Our specialists with an American license will help prepare and submit a preliminary application. And then – to finalize the documentation and follow the basic procedure.
US Patent Search
Before contacting the USPTO, it is important to study the list of registered inventions in the industrial segment. First, to research the patent landscape and analyze the state of the market to which the technology belongs. And also, in order to understand the prospects and highlight the development paths, predict commercial demand, learn about competitors.
Secondly, there is a specialized search for freedom-to-operate. Its task is to determine which rights to patented objects may be violated by the applicant. This is an essential point, because the patent owner has the right to sue a lot of money for infringement. If you find something similar in databases (DB), it can often be bypassed.
Patent research is carried out by our company using the following USPTO databases:
- full-text on issued patents since 1790;
- the same since 03/15/2001;
- DB of the national classification system;
- world patent bases.
The SION’s attorneys will carry out a professional preliminary research on the areas of interest to the database. They are fluent in search capabilities, searching for the desired parameters (date, name of the inventor or applicant, subject and area of patenting, etc.). The information received will help to determine the prospects for registration, to avoid difficulties and lawsuits later. We recommend ordering such a search from us or from an official department.
US Patent Period
A document confirming the protection of industrial property rights is issued in the country for the following period:
- 20 years – for inventions and plant varieties;
- 15 years – for industrial designs.
Sometimes the deadlines are allowed to be extended – for example, if the appeal was considered for a long time, the business did not receive profit because of this. Also, the validity of the patent must be extended by the timely payment of periodic fees, otherwise the exclusive rights to the innovation can be lost.
State duties are paid on time:
- 3-3.5 years;
- 7-7.5 years old;
- 11-11.5 years old.
If there are grounds, our attorneys will apply for an extension of the document. And they will take upon themselves the payment of fees for renewing the patent in force. If a company has many inventions in its assets and all of them need to be supported, it is very easy to make a mistake and miss the deadline. Our experts will not be mistaken and will not miss.
Cost of patenting an invention in the USA
The cost of the procedure consists of government fees and honorariums for the work of SION attorneys. The first part essentially depends on the status of the applicant: he is a private person, an ordinary enterprise, small or even micro. Small – an organization with up to 500 employees or not. Micro – annual income for the past year is below 3 average family income (about 200 thousand USD) and the applicant has filed no more than 4 patent applications.
- Application submission – 300 USD, 150 USD, 75 USD for regular business, mini and micro.
- Patent search – respectively 700 USD, 350 USD, 175 USD.
- Expedited Processing (if applicable) – 4200 USD, 2100 USD, 1050 USD for regular, mini and micro businesses.
- Examination on the merits – 200-800 USD.
- Registration, publication, issuance of a title of protection – 300-1200 USD.
There are additional fees for each claim over 3, increased number of pages in the application, renewal of the patent. Before starting cooperation, we will make a calculation of costs. In it we will write down the amount of state fees for a particular case and the cost of our services. We start work if the client is satisfied with the cost.
Patenting inventions in the USA
If you decide to patent a new camera, engine, or data processing technology, then it is necessary that they meet the criteria of patentability for inventions. There are three such criteria:
- Novelty. Information about the innovation was not published openly, and was not presented at exhibitions. Publication from the author is allowed no earlier than one year before contacting the patent office.
- Inventive level. The decision should not be obvious to experts in the relevant field.
- Practical application and usefulness. That is, the opportunity to establish production, to use the innovation in practice. The novelty should be useful to society.
In addition, it is important to prove that at the time of filing the main application, the invention had already been used in the United States (mandatory for residents). Often a preliminary application is submitted in order to have time to introduce an innovation.
The date of publication of the application on the USPTO portal is important. It sets the priority for the applicant, protection of interests begins with it. If someone borrows an innovation after this date, then after obtaining a patent, it will be possible to complain to the court and demand compensation for violation of rights.
In terms of registration terms, we usually keep within 3 years. You can apply for an expedited review and pay a special government fee. Innovations useful in the fight against Covid-19 can qualify for an automatically accelerated examination.
A patented object can be used, the rights to it can be sold, and it can be licensed to manufacture – for example, to enterprises that have production facilities. That is, to benefit from commercial use. We can help you patent with the USPTO and avoid rejection.
To calculate the cost of patent registration, please fill out the feedback form and we will contact you or write to us by mail: email@example.com.
Write to us by mail, we will help. We have been successfully cooperating with the American Patent Office for 10 years, we have patented several hundred technical innovations, including software.