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Justus Kreuels - 18. November 2021

Protectable Inventions in the United States

In the USA, patents for technical innovations are called utility patents. Design patents are the counterpart to the German or European design. Both are regulated by the same law - Title 35 of the United States Code (U.S.C.).

US Patent Law vs. German/European Patent Law

The patent law system in the USA differs in part fundamentally from German or European patent law, particularly with regard to the fact that it relies to a large extent on cases decided in the past (case law).

Other important differences between the patent granting procedures in the USA and in Europe exist with regard to the protection possibilities for software inventions and business method patents. It cannot be said across the board that everything can be patented in this respect in the USA, whereas the standards in Europe are stricter. Rather, there are simply differences that must be examined and decided on a case-by-case basis. The question for which inventions and under which conditions patent protection should generally be made possible is subject of lively discussion in the USA. The case law on this is changing.

In principle, patent protection is granted in the USA, as in Europe, if the requirements of novelty, inventive step and industrial applicability are met. The term of a US patent is 20 years and begins with the filing date.

However, experience in US grant proceedings has shown in particular that detailed applications describing the invention by means of figures, possibly program code excerpts, diagrams and statistics demonstrating operability, etc., have a much better chance of being granted in the USA than concise applications which only outline the basic idea of the invention. Therefore, if a patent is sought in the U.S., it is always a good idea to take this into consideration at the time of the initial application.

"First inventor to file"

For a long time, US patent law held that a US patent was vested in the first true inventor (or his successor in title) ("first to invent"). In Germany and Europe, on the other hand, the "first to file" principle has always been applied. In practice, this meant that a later-filed patent application in the US could possibly claim an earlier priority right than an earlier application if it could be proved that the invention actually existed before the filing date of the later-filed application.

The "first to invent" principle followed the idea that indeed the first inventor should get the right to the patent, whereas the "first to file" principle is more driven by the idea that the inventor should get the patent as a reward for filing and later publishing the invention.

There are pros and cons for both approaches. However, it is clear that the first-to-file principle is considerably simpler and more legally secure in practical handling, which is probably why it has also become established internationally.

In a revision of the US patent law about 10 years ago, the principle "first to invent" was modified and brought closer to the European approach "first to file".

The approach now practiced in the USA is referred to as "first inventor to file". The applicant can now also be sure that it is his invention after the expiry of a time limit, provided that he has made the invention himself, regardless of whether someone else has also previously had the same idea in secret.

The basic idea behind "first to invent" of the importance of the first inventor can still be seen today in many peculiarities of US patent law compared to German and European patent law. For example, the high importance of so-called "declarations", by which the transfer of rights from inventors (often employees) to the applicant (often the employer) is meant in US patents, is one of the peculiarities of US patent law.

12-month grace period in patent

In the context of the high position of the inventor compared to the applicant in US patent law, it can also be seen that US patent law in principle grants a grace period, which in Europe is only applied to patents under very special circumstances.

The novelty grace period privileges the applicant in that his own prior publications of the invention, which go back to him, are not taken into account in the examination of novelty.

Thus, if the inventor has presented his invention to the public, he may still subsequently apply for a U.S. patent. The disclosure in the presentation is then not considered prior art for the patent application if the applicant files the invention within 12 months of publication. If, for example, an invention has only been applied for as a utility model in Germany because a patent application was no longer possible due to a prior publication, there may still be the possibility of a US patent.

This is different from Germany and Europe, where the rule is that a patent application must be filed with the Patent Office before the invention is disclosed to the public. Otherwise, the disclosure of the invention is considered "prior art" to the patent application, which is taken into account when considering whether the invention meets the above requirements.

Duty of disclosure in the granting procedure ("duty of disclosure" or IDS "information disclosure statement")

Under U.S. law, inventors are required to disclose to the USPTO all information relevant to assessing the patentability of the invention that is the subject of the patent application. This also applies to all other persons involved in the filing of a patent application.

This conscientious fulfillment of this obligation is extremely important because U.S. patents are virtually unenforceable if this obligation has not been met.

The obligation to disclose relevant, currently known information exists for the entire duration of a US patent application and possibly beyond. Thus, if relevant information concerning the patent application becomes known at a later date, it must also be submitted to the USPTO.

Particularly in international patent prosecution proceedings with related patent applications in several states, the "duty of disclosure" often poses a considerable challenge. Information concerning prior art must be collected and transmitted to the US Patent Office by US colleagues within certain deadlines. A significant organizational effort is required to ensure that this happens in a timely manner while proceeding efficiently.

General Notice

We would like to point out that these explanations of the particularities of US patent law are for guidance purposes only and do not constitute a definitive presentation of the legal situation or legal advice. With this insight, only some particularities of US patent law in comparison to German or European patent law have been picked out, which regularly raise questions in the cooperation of us with our clients.

Possible revisions to US patent law are, of course, not detailed in this blog article (as of 11/2021). Please feel free to contact us if you would like information on the current regulations.

Our patent attorneys have many years of experience in the field of US patent protection as well as design and trademark protection - in each case in close cooperation with US patent attorney colleagues whom we have known for many years. We would also be happy to put you in direct contact with a suitable partner in the USA for your specific problem.

Regarding Justus Kreuels:



Justus Kreuels, German and European Patent Attorney since 2011/2012, studied mechanical engineering at the TU Munich and the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the enforcement of intellectual property rights in the field of mobile communication, Internet of Things (IoT), robotics, etc. in Germany.

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