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I just wanted to drop you a note to thank you for doing such a wonderful job on the patent application - it looks great and fingers crossed it's plain sailing from here!G Puddepha
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Use our simple European Patent Cost Calculator to obtain a quote and to order your European patent filing.
Did you know...
I have a local or domestic patent application, eg. in the USA or UK. When should I be filing an equivalent European patent application?
File your European patent application at any time within the first 12 months of your first filed patent application, and claim its priority thereby effectively back-dating your European patent application.
Helpful tip
When can I talk about my invention?
The general rule is 'file your patent first, then disclose'. Some countries, eg. USA, do allow disclosure first and then filing within 12 months. But most countries do not, and thus a non-confidential prior disclosure will 'knock out' your patent.
US and other overseas patents
Before filing for a patent in the USA and other overseas jurisdictions outside of Europe, it is usual to file a base patent application here in the UK, or your home country first. This base application serves to establish a priority date for your invention.
It is then possible to defer your overseas patent applications, for example, in the USA, for up to one year from the priority date in countries party to the Paris Convention.
Albright Patents can advise you regarding a foreign filing strategy, whilst taking account of your circumstances. This may be direct filings claiming priority from your domestic patent application, or national stage entry from your international PCT patent application.
We have contacts with associates in nearly all countries around the World, and can provide very competitive filing costs as well as lower on-going prosecution costs to grant.
Please ask us for advice regarding your countries of interest, including the USA. We are happy to provide a general indication of patenting costs on a country-by-country basis, or more accurate costs based on the specifics of your patent application.
Albright Patents endeavours to make the patent filing process as simple and stress-free as possible, whilst obtaining the broadest protection possible for your invention. We can advise you whilst taking account of your circumstances, and will act for you and provide advice for each stage of the procedure as well as outlining likely future costs to allow you to budget effectively.
Once your overseas applications are filed, they will claim the benefit of the priority date. In other words, it would be as if the American or other overseas patent application had been filed on the date of your base application. Effectively, you will obtain retrospective protection allowing costs to be saved or deferred.
Please contact Albright Patents for further information or with any queries.
US Patent Searching
A US patent application is not usually officially searched during the early pending phase. Typically, a US patent application is only searched during examination, and examination these days occurs following publication at around 18 months from the earliest priority date (the filing date of the first or earliest related patent application).
Therefore, if the US patent application is your first patent application, you will typically not receive a worldwide search report until 18 months after filing. The downside with this is that overseas counterparts, such as filing to protect your invention in Europe or the United Kingdom, must be submitted within the first 12 months after submission of your US patent application. As such, if there has been no formal search conducted, you could be filing ‘blind’ without any knowledge of earlier prior patent applications that may impact your novelty and inventiveness.
In light of this, it is preferable to conduct a thorough pre-application search prior to your first filing, assuming you are first filing your patent application in the United States.
Pre-application searches can be conducted on the freely available Espacenet database at : http://worldwide.espacenet.com/advancedSearch?locale=en_EP .
Alternatively, a professional patent search company can be used, and most patent attorneys will be able to provide this service at a reasonable cost.
US-style Claims
When you are ready to file your US patent application, it is beneficial to bear in mind that the official fees will be increased for claims in excess of the first twenty.
Furthermore, if there are more than three independent claims (which are claims having no prior dependency on any earlier claim), then again further official fees will be due.
As such, if the number of claims can be limited to twenty with only three main claims or less, the official fees payable to the United States Patent and Trademark Office ("USPTO") will be minimised.
Additionally, it is also possible to have more than one main apparatus claim in a US patent application, unlike with a European patent or a British patent. Consequently, each main apparatus claim can be directed to a slightly different aspect of the invention. However, bear in mind that if the claim language is too diverse, then the US Examiner may well argue that the patent application relates to different inventions, and may insist that the claims are split out into separate standalone patent applications. This obviously results in an increase in costs, and thus may not be ideal.
Continuing to look at the claims for a US patent application, in Europe and the UK, the later claims in a claim set can depend or relate to one or more preceding claims. One will typically see phrases at the beginning of claims in European patents and British patents along the lines of :
“A widget as claimed in any one of the preceding claims, wherein …” or
“A widget as claimed in any one of claims 1 to 6, wherein …”
These are examples of claims with multiple dependencies, and are perfectly acceptable under European and UK patent law, providing they are worded correctly. However, although these can be used in the US patent system, they do incur larger official fees and thus are not common. Consequently, for a US patent application, the claims will typically be worded to only depend from claim 1, for example:
“A widget as claimed in claim 1, wherein …”
By wording your claims accordingly when filing, this will save time and costs.
US Patent Drawings
The drawings of a US patent application must also show all of the features of the claims. If they do not, then an objection will be raised during examination. The offending claim could potentially be cancelled during examination to overcome this issue, but it is preferable to look at this aspect prior to filing to avoid such a situation arising in the first place.
US Patent Claim Terminology
The actual terminology used in the claims of a US patent application is important, especially compared to European and British patent applications.
Often, phrases involving the term ‘means’ are used in the claims of a US patent application. Whilst ‘means’ language is perfectly acceptable in a European patent and a British patent, and confers a broad meaning, it can be held to be much more limiting in the United States.
Often, a ‘means’ phrase will be held to be limited to exactly what is described in the US patent specification and little or no more. This can be unduly limiting for the inventor, especially when seeking to enforce the patent right or when seeking a licensee or assignee for the patent. In this latter case, unduly limiting terms in the granted patent can result in the potential value of the patent being dramatically decreased.
Consequently, before filing your US patent application, carefully consider the claim language especially if phrases are used which use ‘means’ terms.
US Patent Specification Layout
It is typical to format the specification of a US patent application to include sub-headings, such as ‘Background of the Invention’, ‘Brief Description of the Drawings’, ‘Description of the Preferred Embodiments’, ‘What is claimed is:’, and ‘Abstract of the Disclosure’.
Such sub-headings are not required in a European patent application or a British patent application, and as such can be removed when filing.
US Oath, Declaration, Power & Assignment
When filing a US patent application, a combined Declaration and Oath is usually required, along with a Power of Attorney if a legal representative is being used.
If the patent application is to be assigned to a company, for example, then a formal assignment document will also be required.
By organising these documents in good time so that they can all be filed at the time of making the submission of the US patent application to the USPTO, further late filing fees can be saved.
