Key Takeaways

  • U.S. patent rules are governed by the Patent Act (35 U.S.C.) and enforced by the USPTO.
  • The filing process involves strict compliance with rules on disclosure, claims, and timing.
  • Preissuance submissions let third parties provide prior art, but they must meet strict timing and format requirements.
  • Fee structures exist for filings, maintenance, and submissions, with some fee waivers for small or micro entities.
  • Recent rule changes limit claim numbers and continuations, adding complexity and cost to the process.
  • Patent rules cover not only utility, design, and plant patents but also specialized issues such as standard-essential patents and post-grant proceedings.
  • Applicants must understand how recent reforms and case law affect patent scope, enforcement, and validity.

US patent rules are contained in the Patent Act of 35 U.S. Code, which established the USPTO (the United States Patent and Trademark Office).

Utility patents are the most common type of patents. Although they have a duration of 20 years from the filing date, they aren't enforceable until they are issued. A plant patent is created to protect newly created varieties of asexually reproducing plants while a design patent protects ornamental designs.

Filing a Patent Application with the USPTO

Before an invention/innovation can be protected under U.S. law, individuals must first file a patent application with the USPTO, where an examiner reviews the application to determine if the indicated invention is patentable. Once it is approved, the U.S. grants the patentees the exclusive right of use to the invention and excludes others from using, making or selling the invention.

Types of Patent Protection

Patent rules provide three main types of protection:

  • Utility patents – Cover new and useful processes, machines, articles of manufacture, or compositions of matter.
  • Design patents – Protect the ornamental design of a functional item.
  • Plant patents – Apply to asexually reproduced plant varieties.

Each patent type follows distinct requirements for subject matter and duration. For instance, utility and plant patents generally last 20 years from the filing date, while design patents typically last 15 years from issuance.

Preissuance Submission Rule

There is a preissuance submission rule which allows individuals to submit multiple references that are potentially relevant to a third-party patent application review, as well as descriptions of asserted relevance of said references.

In the past, there was no effective means of submitting relevant prior references for consideration during the initial examination of third-party patent applications.

Standard-Essential Patents and FRAND Obligations

Patent rules also intersect with industry standards. Standard-essential patents (SEPs) are patents that must be used to comply with a technical standard, such as those in telecommunications. Owners of SEPs are often required to license them on FRAND terms—fair, reasonable, and non-discriminatory.

Disputes frequently arise over whether licensing practices meet FRAND obligations. Courts and agencies evaluate royalty rates, competitive impact, and whether injunctions are appropriate remedies.

Fees for Submitting Prior References

To encourage the use of these rules, provisions stipulate that there are no fees for submitting prior references. Preissuance submissions of any relevant published patent application, patents, and other printed publications can be made on any plant, design, or utility patent application with the new rules providing for submission.

This means that submissions aren't limited to relevance regarding non-obviousness or novelty, but also addresses other issues relevant to the application's examination including prior sale or use, patentable subject matter, etc.

Post-Grant Proceedings Under Patent Rules

The America Invents Act introduced several post-grant proceedings that are now integral to U.S. patent rules:

  • Inter Partes Review (IPR): Challenges patent validity based on prior art (patents or printed publications).
  • Post-Grant Review (PGR): Allows broader challenges within nine months of issuance, including subject matter eligibility and written description issues.
  • Covered Business Method (CBM) Review: Limited to financial-related patents (now phased out).

These proceedings give competitors and third parties a structured way to challenge patents outside litigation, making them a crucial strategic consideration.

Preissuance Submission Guidelines

Although a pre-issuance submission does not have to identify the real parties-in-interest, it must be signed by the parties that make the statements outlined below

A preissuance submission should include the following:

  • A list that identifies all the submitted documents.
  • A description of each document's asserted relevance.
  • Legible copies of all the documents (other than published patent applications and issued U.S. patents).
  • For non-English documents, an attached English translation.

Also, submissions must include statements by the submitting party that the preissuance submission complies with every requirement of 37 C.F.R. § 1.290 and 35 U.S.C. § 122(e).

After the submission has been made, submitting parties are unable to add additional arguments to the record. Preissuance submissions must be filed before:

  • The patent application receives the notice of allowance.
  • The examiner issues a rejection of claims in the patent application.
  • Six months from the time the application was first published.

Fees for Preissuance Submissions

Currently, the fee for preissuance submissions is $180 for every ten items in the document list or its fraction thereof. This fee can be waived if the submission contains three or fewer documents.

Changes in Patent Application Rules

The submitting party must include a statement that, after reasonable inquiry and to the best of their knowledge, the submission is the first and only one filed by the party or another party that it is privy to.

These rules have drastically changed the patents application process. Generally, these rules will make the acquisition of patents more challenging because applicants are limited in the number of claims they can pursue and the number of continuations they may employ.

The rules also place additional restrictions on the submission process of patent applications as well as in the manner they may be pursued.

As such, the patent application process has become more costly and complex for applicants. It also places arbitrary limits on the kinds of patent an applicant can obtain.

The major areas where the USPTO changed its rules are as follows:

  • The Lasso rule (multi-application claim recombination).
  • a "2+1" continuation limitation rule.
  • a "5/25" claim limitation rule.

Possible Ramifications of the Changes

The fundamental changes to the patent procurement/application rules may:

  • Cause future applicants to alter their budget for patent procurement.
  • Encourage individuals to conduct IP audits in the near future.
  • Obtaining patent grants may require a greater number of appeals.
  • Increase the complexity of obtaining a patent.
  • Cause prospective applicants to consider preemptive continuation strategies.
  • Change patent procurement and filing strategies.

Evolving Case Law and USPTO Guidance

Beyond statutory rules, U.S. patent law evolves through court rulings and USPTO guidance. Recent developments include:

  • Stricter standards for patent eligibility under 35 U.S.C. § 101, especially for software and biotech inventions.
  • Increased emphasis on written description and enablement under § 112.
  • Greater scrutiny on obviousness combinations under § 103, reflecting Supreme Court precedent in KSR v. Teleflex.

These shifts highlight the importance of staying current with both USPTO rulemaking and judicial interpretation.

Frequently Asked Questions

  1. What are the main types of patents under U.S. patent rules?
    Utility, design, and plant patents, each with unique requirements and durations.
  2. What is a preissuance submission?
    It allows third parties to submit prior art against a pending patent application before issuance.
  3. How do post-grant proceedings affect patents?
    They provide a way to challenge validity through IPRs or PGRs at the USPTO instead of full litigation.
  4. What are FRAND obligations in patent law?
    They require owners of standard-essential patents to license on fair, reasonable, and non-discriminatory terms.
  5. How often do U.S. patent rules change?
    Rules evolve through USPTO updates, legislation like the America Invents Act, and significant court decisions.

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