US Patent Q&A

Can patents cover any type of invention, including software, business methods, and medical procedures?

• The U.S. patent law has broad requirements for subject matter that qualifies for patents. An invention is defined as a method, machine, manufacture, or combination of substances. Natural laws and natural phenomena cannot be patented.
• The U.S. Supreme Court has established a two-step approach to determining whether an invention can be the subject of a patent application.
• Software, business methods, and medical procedures are patentable if they meet Alice rules, so DNA is patentable subject matter. However, isolated genomic DNA (DNA extracted from a portion of an organism's genetic information or chromosomes) is not patentable because it is a product of nature.
• Software or business methods that merely perform mathematical calculations and medical procedures for medical practice are not patentable.

Who owns patents for inventions by company employees, independent contractors, multiple inventors, or joint ventures? How is patent ownership formally recorded and transferred?

• The inventor is the presumptive owner of a patent, but most companies require employees to assign patent ownership to the company as a condition of employment. Even if the employer does not acquire patent ownership, the employer may still have a nonexclusive, nontransferable, royalty-free license to use the invention if the employer's facilities were used to conceive the invention or to reduce it to practice.
• In the absence of any agreement to the contrary, joint owners of a patent may make, use, sell, or import the patented invention into the United States without obtaining the consent of the other owners and without being liable to the other owners.
• A patent owner can transfer his or her patent rights through a written agreement, which must be recorded with the United States Patent and Trademark Office (USPTO).

How long does it typically take to obtain a U.S. patent, and how much does it typically cost?

• As of January 2024, the average grant time for U.S. invention patents is 25 months, which is closely related to the complexity of the patent application and the backlog of the USPTO.
• As of January 2024, the USPTO has a total of 775,905 patent applications that have not yet been examined, and the average time from the submission of a new application to the issuance of the first examination action is 20.2 months.
• The patent application fee in the United States includes application fee and examination fee. The application fee is highly related to the size and type of the patent application, as well as the qualifications of the patent applicant. The regular filing, search and examination fees for non-provisional applications start at US$1,820, which applies to patent applications with a total of no more than 20 claims and no more than 3 exclusive rights. If the patent applicant meets the qualifications of a small entity, that is, a corporate entity with fewer than 500 employees and has not transferred the invention to a large entity, the official fee will be reduced by 50%. For micro entities, that is, individual inventors with a limited number of applications and income below the threshold income, the official fee can be reduced by more than 75%.
• After a U.S. patent application is granted, a licensing fee of $1,200 should be paid, and annual fees of $2,000 for the 3.5th year, $3,760 for the 7.5th year, and $7,700 for the 11.5th year should be paid to maintain the patent right.
• The service fee for a U.S. patent application depends on the complexity of the patent application. For relatively simple inventions, the cost of preparing and filing an application is about $7,500 to $10,000, for more complex inventions, it is $12,000 to $17,000, and for very complex biotechnology or software inventions, it is $25,000 or more. In addition, the drawings of the patent application specification must be produced by professional technical draftsmen, and the drawing fee for each drawing is about $75 to $120.

Is there any expedited process for patent application in the United States?

• Track ONE: The goal of the Track ONE program is to provide a final examination opinion within 12 months. The prerequisite is that the patent application must contain no more than 4 independent claims, no more than 30 total claims, and no multiple dependent claims. The fee for requesting accelerated examination is US$4,200.
  • In 2024, under Track One, the average time for the first office opinion to be issued is 1.5 months, and the average time for authorization is 1.6 months after the first office opinion is completed. Currently, the USPTO is limited to 15,000 Track ONE applications per year.
• Special Applications: The USPTO examines patent applications earlier based on special applications filed by the applicant. For example, if the inventor is 65 years old or older or in poor health, or if the invention involves energy, environmental quality, or anti-terrorism, the applicant can file a request for accelerated examination without official fees.
• Ordinary Accelerated Examination: The average processing time for ordinary accelerated examination by the USPTO is 12 months. Applicants only need to pay a nominal fee, but they need to submit cumbersome application requirements, including conducting a search and submitting the search results. The patent application must contain less than three independent claims and the total number of claims shall not exceed 20.
  • The number of applications for ordinary accelerated examination is relatively large and the fees are also relatively high, including service fees for conducting pre-examination searches and preparing supporting documents for accelerated examination.
• Patent Prosecution Highway (PPH): Patent Prosecution Highway (PPH) is a process designed to expedite the examination of corresponding applications filed at participating IP offices around the world.
• Fast-track examination of design patents: In order for a design patent application to qualify for fast-track examination, the applicant must conduct a pre-examination search and submit the results of the pre-examination search to the USPTO and pay the relevant fees.
• Covid-19 Priority Examination Pilot Program: In mid-2020, the USPTO launched the Covid-19 Priority Examination Pilot Program to expedite patent protection for Covid-19-related products. The program allows small and micro entity applicants to receive free expedited examinations to cover Covid-19-related products or processes that are subject to Food and Drug Administration approval for use against Covid-19.
  • The goal of the program is to provide a final examination opinion within 12 months. Requests for COVID-19 priority examination of eligible patent applications are accepted until May 11, 2023, and the previous cap of 500 applications is lifted.

What must be disclosed or described in a U.S. patent application? Are there any specific guidelines to follow or pitfalls to avoid when deciding what to include in an application?

• According to U.S. patent law, a patent specification must include the following disclosures: technical solution; methods and processes for making and using the invention; optimal implementation method, etc. Failure to provide an adequate written description or lack of enabling disclosure will constitute the basis for a determination of invalidity.
• To satisfy the written description requirement, a patent application must describe the technical solution to a “person of ordinary skill in the art” with a level of detail that depends on the nature and scope of the claims and the complexity and predictability of the relevant technology.
• Patent applications must also be "enabled" to ensure that the specification describes the invention in a meaningful way. The standard is whether the disclosure enables a person skilled in the relevant art to make and use the claimed invention without undue experimentation. Detailed procedures for making and using the invention may not be necessary if the description of the invention itself is sufficient to enable a person skilled in the art to make and use the invention.
• The patentee must also disclose the best embodiment contemplated by the inventor. While disclosure of the best embodiment is necessary for patentability, failure to disclose the best embodiment is no longer grounds for any patent claim to be revoked or held invalid or unenforceable.

Can a patent applicant file one or more subsequent applications to pursue additional claims to inventions disclosed in its previously filed applications? If so, what are the applicable requirements or limitations?

• An applicant can file multiple applications based on the invention disclosed in the initial patent specification, including continuation applications, divisional applications, and continuation-in-part applications (CIPs).
• A continuation application has the same specification and priority date as the parent application, but different claims. This type of application is often used when the examiner rejects certain claims of the parent application or when the applicant wishes to claim different embodiments of the invention in multiple patents.
• A divisional application may be filed when the parent application attempts to claim more than one different claim. The divisional application has the same filing date and priority date as the parent application and includes the claims filed with the parent application and is limited by the parent application. Therefore, when the examiner issues a limitation request, such as when the applicant attempts to claim multiple inventions in one patent, it is allowed to divide the multiple inventions into one or more divisional applications, that is, to use a divisional application.
• A CIP application contains additional subject matter not included in the parent application. In this type of application, claims related to subject matter disclosed in the parent application have the same priority date as the parent application, but any claims related to new subject matter will only apply to the filing date of the CIP application. This situation applies to pending patent applications with new claims.
• In all continuation applications, patent owners must be careful to avoid duplication of patents. In the following cases, the examiner may reject the application based on the following reasons:
  • There is at least one joint inventor, patent owner, or joint agreement linking the parent case to the continuation application;
  • the subject matter claimed in the contested application is obvious having regard to the subject matter in the parent case (or vice versa);
  • The absence of a limitation claim results in the disputed subject matter being claimed in a separate patent application;
  • In this case, the patent applicant can overcome it by filing a final disclaimer.

Is it possible to appeal an adverse decision of the Patent Office to the courts?

• If a patent claim has been rejected twice, or has received a final office action, the applicant can appeal the primary examiner's decision to the Patent Trial and Appeal Board (PTAB). The applicant files a brief, the examiner files a response, and the applicant files a response. The appeal is heard by a panel of three administrative patent judges on the brief and hears oral arguments. If the PTAB raises new grounds for rejection, the applicant can request a rehearing. Once the appeal is complete, the application is returned to the original examiner for further review.
• There are two options for judicial review of an adverse PTAB decision. The applicant may appeal directly to the Federal Circuit, or the applicant may file a civil action against the Director of the USPTO in the United States Court for the Eastern District of Virginia.

Does the Patent Office provide a mechanism for opposing the granting of a patent?

• U.S. patent law allows any member of the public to file an opposition to an unauthorized patent application, but the opposition must be filed before the application is published or the notice of grant is mailed.
• The America Invents Act (AIA) creates two post-patent opposition mechanisms. Inter partes review (IPR) can be used to challenge one or more claims of an issued patent.
• An opposition request can be filed at any time during the patent validity period. If an appeal occurs, the opposition request must be filed within 9 months after the appeal.
• The opposition petition must demonstrate that at least one of the opposed claims is unpatentable.
• Another mechanism by which the Patent Office opposes a granted patent is called a post-grant review (PGR). To be eligible for PGR, the patent must have an effective filing date on or after March 16, 2013, and the opposition petition must be filed within nine months of the patent grant.

Does the USPTO provide any mechanism to resolve priority disputes between different applicants for the same invention? What factors determine who has priority?

• After March 16, 2013, the U.S. patent law changed from a "first to invent" system to a "first to file" system, where the inventor who first files an application will be granted a patent; however, there are exceptions. For example, there is a one-year grace period before a patent application is filed for disclosures by the inventor or malicious disclosures by a third party who obtained the invention from the inventor. Since this grace period does not apply to third parties, there is a risk of waiting to file an application. This allows the "inventor" to obtain a U.S. patent by being the second person to invent but the first to file.
• For patent applications filed before March 16, 2013, the first-to-invent system was used. Under this system, if an applicant can prove that his or her invention date is earlier, he or she can establish priority and obtain a patent.
• To resolve priority disputes, the USPTO conducts intervention proceedings before the PTAB.

Does the U.S. Patent Office have a procedure for amending, reexamining, or revoking a patent ? Can a court amend patent claims during litigation ?

• Patents can be corrected or amended in a variety of ways, including reissue, issuance of a certificate of correction that becomes part of the patent, disclaimer, IPR, PGR , covered business method review, reexamination, and supplemental examination.
• Additional post-grant amendment mechanisms to amend or revoke issued patents.
• A PGR is another mechanism by which the USPTO modifies or revokes an issued patent. To obtain a PGR , the petitioner must demonstrate that at least one claim is unpatentable.
• Ex parte reexamination allows a petitioner to present prior art to the USPTO that raises a “substantial new question of patentability.” Anyone can request a reexamination, and the petitioner can remain anonymous if desired.
• Supplemental examination requests the USPTO to consider, reconsider, or correct information believed to be relevant to an issued patent. This information is not limited to patents and publications under ex parte reexamination. Rather, it can include any information that the patent owner believes to be relevant ( e.g., audio or video, sales receipts, written publications, etc. ) . In addition, the information submitted as part of a request for supplemental examination can relate to any grounds of patentability. If the USPTO determines that a substantial new issue of patentability is demonstrated, then the patent will be subject to reexamination. Since supplemental examination began in 2012 , only about 30 applications have been filed each year.

How is the patent protection period determined?

• For invention patent applications filed on or after June 8, 1995, the patent term expires 20 years from the date of application. For design patent applications filed before May 13, 2015, the protection term is 14 years, and for design patent applications filed after this date, the protection term is 15 years, calculated from the date of patent grant.
• When determining the expiration date of a patent, it is important to review the prosecution history to determine if the patent is subject to a terminal disclaimer or other amendment. In some cases, the patent term may be extended.
• The USPTO provides a "Patent Term Calculator" on its website to help determine the expiration date of a U.S. patent.