Example Patent
- Manufactures and sells products worldwide.
- New products are often within crowded patent fields with many similar designs.
- United States (US) market of primary importance; although, other countries are often as important several years after introduction into the US market.
Challenge
Client required filing and prosecution strategies to maximize the likelihood of successful prosecution of a patent application filed in multiple countries with differing patentability standards with regard to obviousness.
Approach
Client prepared and filed Patent Cooperation Treaty (PCT) application with the United States Patent and Trademark Office (USPTO). Client then elected first examination by a foreign patent office competent in the field of the new invention and likely to apply a standard for obviousness acceptable to at least two countries of interest.
If the foreign patent office concluded that claims were allowable in part or whole, then client filed the PCT application with the USPTO as a US national phase application. Client requested accelerated examination of the US national phase application based on the favorable opinion from the foreign patent office.
If the USPTO concluded that the claims in the US national phase application were allowable in part or whole, then client filed the PCT application with the patent offices in other countries where the new invention was manufactured, sold, or used.
Benefits
While the USPTO was not bound to agree with the first examination opinion issued by the foreign patent office, examination of the US national phase application by the USPTO was less likely to result in rejection of all claims and more likely to resolve allowable claim scope without multiple office actions.
If first examination of the PCT application by the foreign patent office is performed within 12 months of the priority date (earliest filing date), then it is often possible to conclude examination of the US national phase application before the 30-month deadline for foreign filings. Results of the patent examination before the USPTO allow the applicant to make a more informed decision as to whether foreign filings should be made. If examination by the USPTO is favorable, then the claims allowed by the USPTO may persuade other patent offices to also allow the same or similar claim scope.
Filing and prosecution strategies are beneficial to applicants seeking United States and/or foreign patent rights.