1、 Introduction to the US Patent Application Process

（1） How to apply for a patent in the United States?

paris convention

PCT

（2） Two PCT entry methods

1. Entering the US National Phase through Article 371 of the US Patent Act

Accurate translation of PCT international publication text is required, with three versions required for major studies

Usually do not receive restrictive opinion notices

If there is a PCT international search report, it can save some official fees

Cannot mention Track One

2. Entering the United States through Article 111 of the US Patent Act

No need to submit an accurate translation of the original PCT international publication text, only submit the clean version

The original PCT application documents can be modified or new content can be added as a CA or CIP continuation

After submission, it will enter the review process

Quickly receive the acceptance notice

（3） Diversified patent application procedures in the United States

1. Temporary Application Procedure (PPA)

Compared to other countries, it is a relatively unique application mechanism. It is a low-cost application method provided by the United States Patent and Trademark Office for patent inventors in the United States. Therefore, the effectiveness is only temporary. There will be no examination of the application itself, and there is no possibility of obtaining patent protection based on temporary applications in the future. The purpose is to enable the inventor of a patent application to quickly obtain the filing date after making the invention, and based on the filing date, to carry out subsequent formal application conversion or priority application.

Due to the need to meet fast demands, there are very broad requirements for the format and other aspects of the documents. There is no need for formal documents such as claims, oaths, declarations, etc. Just meet the low standards and submit the content that records your innovative plan.

advantage:

① Obtain the application date in advance (without starting the calculation of the 20-year protection period) as the basis for priority under the Paris Convention;

② Can be submitted as soon as possible, without the need to prepare complex documents;

③ Low cost.

limitations:

① Will not review the application itself and cannot obtain the corresponding authorization;

② The technical solution and details may not meet the conditions for formal application, and priority may be affected.

The way to obtain a formal application based on a temporary application:

① Take the temporary application as a priority and submit a formal application to the United States Patent and Trademark Office through priority claims;

Submit applications to other countries based on the Paris Convention; Submit the temporary application as a priority in the PCT application.

The patent protection period starts from the date of application

② Within twelve months from the application date of the temporary application, the temporary application shall be changed to a formal application through a transformative procedure.

The protection period starts from the date of temporary application. Therefore, compared to the priority approach, the protection period will be shortened by nearly one year.

2. Reissue Procedure

It is the process after patent authorization. It is based on the possible defects in the authorized text, which may result in the patent being unable to be implemented in whole or in part, or should be invalidated. In this case, the patent right can be re granted through the program after modification.

Application submitted by the patentee. The time is after the patent authorization date. There are no restrictions on the scope of patent rights, which can be expanded or reduced.

Review criteria:

① Errors in patent certificates due to negligence, accidents, or mistakes

② This error will result in the initial patent being completely or partially invalid and unable to be implemented

③ Errors should not contain the intention of intentional deception

It should be noted that although the reissue procedure can adjust the scope of patent rights to expand or shrink, it must comply with the principle of "no new content can be introduced". As long as the patent is granted and within the validity period of the patent right, it can be proposed to narrow the scope of the rights. The application for expanding the scope of rights shall be filed within two years from the date of the original patent application.

The reissue procedure enables the applicant to modify various errors in the patent without exceeding the scope of the original application after the patent is granted. The revised reissued patent has the same legal effect as the original patent. Once the program is launched, all rights will be reviewed, not limited to the modifications proposed by the applicant.

Therefore, for those who request a reduction in the scope of their rights, the protection period of their rights will not change; But for those who request to expand the scope of their rights, in the process of expanding the request for review, as it is unknown to the public, if someone infringes on the newly added rights, it cannot be determined as an infringement.

2、 Practice of Patent Application Examination in the United States

（1） Common types of review opinions

（2） Common legal provisions

1. U.S.C 101 Protection of Object Suitability

Claim 1

A method for rearranging icons on a graphical user interface (GUI) of a computer system, the method comprising:

Receive user selections through GUI to organize each icon based on specific criteria, where the specific criteria are the usage of each icon:

Determine the usage amount of each icon within a predetermined time period by the processor;

Based on the determined usage, automatically move commonly used icons to positions on the GUI near the start icon of the computer system.

2. Section 112 of the U.S. Civil Code

(a) The instruction manual is supported and fully disclosed

(b) Clarity Definition

(c) Form of Claims

(d) Dependent claims

(e) Claims with multiple citations must be selected and not cited excessively

(f) Functional Limitations Means Plus Function

3. U.S.C 102 Novelty

(a) Two types of existing technologies have been defined

Category 1: Disclosures that were previously known to the public -102 (a) 1

Category 2: US patents or patent applications filed earlier or published later -102 (a) (2)

(b) Some exceptions have been specified for existing technology:

Exceptions to the two existing technologies specified in 102 (a)

(c) Further provisions on joint ownership mentioned in 102 (b) (2) (c)

(d) Further regulations on when the existing technology specified in 102 (a) (2) is effective

4. U.S.C 103 Creativity

102 (a) stipulates the prior art, novelty and creativity

3、 US Patent Application Acceleration Measures

1. Accelerated Examination

① Overview

Starting from August 25, 2006, requests for accelerated examination (AE) can be made

Goal: Provide a final decision within 12 months from the application date

② Applicable objects

Applicable to invention patent applications, including CA, CIP, divisional applications, and by pass continuation applications

Not applicable to PCT national phase applications, reissues, reexaminations, or plant patents

③ Start timing

All requests for expedited review (AE) must be submitted at the same time as the application

④ Formal requirements

Submit a request for expedited review

Pay additional expedited review fees (37 CFR 1.17 (h))

Submit application documents in electronic form, etc

The application documents must be complete and comply with the examination conditions and limitations on the claims

(1) Exclusive rights shall not exceed 3 items

(2) The total number of items shall not exceed 20

(3) Cannot contain multiple dependent claims

(4) Meets the requirement of singularity

Agree to meet with the examiner (written statement)

Provide a pre-examination search statement

Provide Accelerated Review Support Document (AESD)

2. Prioritized Examination

① Overview

3-Track project

Starting from September 26, 2011, priority review can be requested, including Track One&PE-RCE

Goal: Provide a final decision within 12 months from the application date

② Applicable objects

Applicable to invention patent applications, including continuation applications, partial continuation applications, divisional applications, and bypass continuation applications

Cases involving patent applications for new plant varieties and requests for further examination (RCE)

Not applicable to PCT national phase applications, reissued patents, reexaminations, provisional applications, or design applications

③ Start timing

Track One: Must be submitted at the same time (or on the same day) as the application submission

PE-RCE: When proposing RCE, or before the first review opinion after issuing RCE

④ Formal requirements:

Submit priority review request

Pay additional expedited review fees (37 CFR 1.17 (c)&1.17 (i))

Submit application documents in electronic form, etc

Limitations on Claims:

(1) Exclusive rights shall not exceed 4 items

(2) The total number of items shall not exceed 30

(3) Cannot contain multiple dependent claims

(4) Meets the requirement of singularity

The number of priority review cases accepted that year was less than 12000

Track One: Provide inventor oath or declaration

PE-RCE: can only be proposed for a single RCE

3. Patent Examination Highway PPH

4. Complete pre meeting with FAIP

① Overview

Implemented since October 2009, it has now become an official project

② Applicable objects

Invention patent applications in all technical fields

③ Start timing

At least one day prior to the appearance of the first examination opinion notification in the Patent Application Information Retrieval System (PAIR)

④ Formal requirements

Submit FAI request

Submit electronically

FAI requests restrictions on the claims:

(1) Exclusive rights shall not exceed 3 items

(2) The total number of items shall not exceed 20

(3) Cannot contain multiple subordinate rights

(4) Meets the requirement of singularity

Agree to meet with the examiner

Agree not to request a refund of search fees, etc. after issuing the "meeting communication" (written statement)

⑤ A complete pre meeting meeting

5. Accelerate contributions to environmental protection/energy based on age, health issues, etc

6. COVID-19 Fast Track C-19 PEPP

① Formal requirements

Submit priority review request

No additional expedited review fees are required (37 CFR 117 (c)&117 (i))

Prove that at least one claim covers products or methods related to COVID-19

Meets other priority review (PE) requirements