U.S. intellectual property protection rules

Since 2013, the United States has transitioned from a "first-to-invent" system to a "first inventor to file" system. Unlike the previous "first-to-invent" system, the new system grants priority to the inventor who first files a patent application. This is more consistent with the systems used in many other countries, but the US system still retains some unique features.

Novelty grace period

• A grace period allows inventors to disclose their inventions before filing a patent application without affecting the patentability of the application. In the United States, this grace period is one year from the priority date of a patent application. This provides inventors with a "safety net" against losing patent protection in the United States due to premature disclosure, even though such disclosure may prevent patent protection in many other countries.

Comply with US practice writing requirements

• There are numerous practical rules for drafting US patent applications, including the description, drafting the claims, and argumentation during examination. These rules are primarily derived from case law and USPTO guidelines. Understanding these rules is crucial to avoiding risks, expediting the examination process, and optimizing the protection of your innovations.
• For non-U.S. companies, it is highly recommended to hire counsel familiar with U.S. rules and provide the necessary resources to adapt their application drafting to local practices, such as those concerning claim construction, the scope of patentable subject matter, sufficiency of the description, non-obviousness, and the duty of candor.

Fulfilling a fiduciary duty to the USPTO

• During the U.S. patent examination process, inventors, applicants, and their U.S. or foreign agents are required to perform a duty of good faith to the USPTO. Violation of this duty can result in a patent being declared unenforceable. This severe sanction is often imposed by federal judges in patent litigation. In practice, the duty of good faith requires applicants to provide the examiner with any information material to the patentability of their invention. In particular, applicants and their agents must disclose relevant prior art (IDS) to which they are aware. The duty of good faith also covers other information relevant to patentability, such as misleading descriptions or omissions in the specification and false statements submitted during the examination process.

Patented product logo

• If a patent holder manufactures and sells an invention themselves, or authorizes a licensee to manufacture and sell it, they must notify the alleged infringer of the infringement in order to obtain compensation. There are two ways to do this: mark the product with the patent information or contact the infringer directly. If the patent holder (or its licensee) fails to mark the product with the patent information, damages in an infringement lawsuit can only be calculated from the date of notification of infringement, which significantly reduces the amount of compensation. Marking must include the words "patented" or "pat." and the patent number. Another method is "virtual marking," which involves marking the product with a publicly accessible URL that lists the corresponding product and its associated patent number. However, the "patent pending" marking for patent applications still under review has no legal effect in this context.

Trademark usage requirements

• The USPTO's trademark use requirement is a major obstacle for some non-US applicants in the United States. Applicants can obtain protection in the United States based on a foreign trademark application without submitting proof of use at the time of application. Instead, they must declare a bona fide intention to use the mark in the US market. Trademark owners must submit a declaration of use and proof of use in the fifth or sixth year after the registration takes effect, and again every ten years thereafter. Therefore, the concept of "use" is extremely important in the United States.
• Evidence of Use: Evidence of use must include samples of goods/services in at least one registered class, but the statement must confirm that the mark is in use for all maintained goods/services. In many cases, the USPTO requires more specific identification of goods/services than other countries. Furthermore, only federal trademark registrants are entitled to display the word "registered" or the ® symbol on their goods/services. While not mandatory, its use is encouraged. Its benefit is that it clearly demonstrates the trademark holder's trademark rights to third parties.