USA
USPTO Small Entity Status
An individual person, a small business entity or a nonprofit organization may benefit from a 60% “small entity” reduction on most fees charged by USPTO, so long as no rights holder or combination of rights holders is outside these categories:
Person – Any inventor or other individual that owns the patent rights individually or jointly.
Small business entity – All business concerns having any rights to the invention, including concerns controlling or controlled by concerns having any rights to the invention, together employ fewer than 500 persons.
Nonprofit Organization – A university or other institution of higher education located in any country; OR An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 501(c)(3)); OR Any nonprofit scientific or educational organization qualified under a US nonprofit organization or which would qualify as so if located in the US.
Note: Fee reductions apply only if none of the above has assigned, granted, conveyed, or licensed any rights in the invention to an entity not qualifying as a small entity, and none are under obligation under contract or law to do so.
Click HERE for more information.
USPTO Micro Entity Status
Applicants and patent owners can benefit from an 80% reduction on most fees charged by USPTO if they are eligible for micro entity status, e.g. have limited income and have never or have rarely filed a patent application.
Click HERE for more information.
U.S. PROVISIONAL PATENT APPLICATIONS
A “provisional” application is filed in order to obtain an early filing date and to provide additional time in which to further develop an invention. A provisional application is not examined on the merits and will never mature into a patent. A provisional application expires on its one year anniversary. Likewise you have one year in which to convert your provisional application to a utility patent application in the United States and to file corresponding foreign applications based on the priority filing date of the provisional. U.S. Provisional Patent Applications cannot have a pendency greater than one year from the filing date. By the end of the twelve month period, the provisional application must be converted to a complete application or a revised complete application must be filed to retain the original filing date. The complete U.S. application will get the benefit of the filing date of the provisional application only for the subject matter of the provisional application included in the complete application. In other words, any subject matter added to the complete application that was not in the provisional application will not be entitled to the filing date of the provisional application.
Foreign applications including subject matter disclosed in the U.S. Provisional Patent Application, such foreign applications must be filed within one year from the U.S. Provisional Application filing date, with the exception of non-convention countries which must generally be filed prior to any non-confidential disclosure or sale of the invention. U.S. Provisional Patent Applications have the same requirements as complete U.S. Patent Applications with respect to describing the invention to enable one of ordinary skill in the art to make and use the invention. Accordingly, if this provisional patent application has been filed with an abbreviated disclosure, we recommend prompt filling of a complete patent application containing a more complete disclosure as soon as possible.
Information Disclosure Statement (IDS)
There is an ongoing duty to disclose anything material to the patentability of your application during the entire course of the examination. Such a disclosure is done through the filing of an Information Disclosure Statement (IDS) in the U.S. Patent and Trademark Office (USPTO). This duty is incumbent upon everyone who is substantively involved in the invention, specifically including the inventor(s), the owner(s) of the invention and the patent attorney who prepares the application. Therefore whenever the inventor(s), or the owner(s) of the invention, becomes aware of information that may be material to the examination of this application, such information should be immediately provided to us for reporting to the USPTO Examiner. Accordingly, it is our duty, as your representative, to report all that we become aware of that may be considered material to the patentability of your invention. In a recent case, finding a patent to be unenforceable because of fraud, the court held that materiality is not limited to prior art but embraces any information that a reasonable Examiner would be substantially likely to consider important in deciding whether to allow an application to issue as a patent. Consequently, we have expanded our requirement as to the type of art to be included in our Information Disclosure Statements to relevant publications published post priority date even though such art may not be considered as “prior art” since they may be material to the examination of the application. Additionally, the court held that even though an Examiner is aware of material art that, by itself, is not sufficient to establish that such art was considered. What is needed is either an Information Disclosure Statement acknowledged by the Examiner or a Notice of Reference issued by the Examiner in the application under examination. In order to overcome this problem we will also be including in the IDS submission art which has been cited in parent applications. Failure to disclose such relevant material to the Examiner may result in the non-enforceability of a patent. Accordingly, we follow the rules explicitly, so as not to commit a technical breach for which our client may pay an extreme price. It is our policy and practice to err on the side of disclosure. We believe that so great a penalty warrants such an approach. We hope you appreciate this as an exercise of caution, carried out for your protection. IMPORTANT NOTE: We do not assume any liability as a result of not receiving the prior art from you and filing thereof in the USPTO.
Patent Term Extension
Extensions for protection of up to five years may be available in various jurisdictions for patents claiming inventions in certain fields requiring marketing approval and/or subject to regulation, such as but not limited to, medical (e.g., drugs and medical devices), food, feed and agro (e.g., agrochemicals and plants) products that require and/or have received regulatory marketing approval, under certain circumstances.
Extending the duration of a patent requires filing an application to this effect with the patent office in each jurisdiction in which patent term extension is available and desired, within a specified time period from the date of issuance of the marketing approval in that jurisdiction, depending on the jurisdiction, typically within a few weeks. Therefore, please advise us of any developments towards marketing approval of the product subject of the patent(s) to be extended. Should you require additional information regarding this issue, we remain at your disposal.
Patent Term Analysis
Under applicable USPTO regulations, an extension of the term of the patent is applicable if there was a delay in the examination of the patent application during the pendency of the application. The rules in determining the extension periods are complex. Previous studies of the USPTO’s patent term calculations have shown to contain errors, sometimes to the benefit of the patentee, sometimes to the detriment of the patentee. Should you wish to discuss a possible independent calculation conducted by our office, please send us an email to patents@ipatent.co.il. Any request to adjust the calculated period must be filed no later than two months from the date the patent issues. Unfortunately, there is no guarantee that our independent calculation will result in a different, or a beneficial, result to you. Should we not hear from you no later than one month from the date the patent issues, we shall not undertake any independent calculation, and no reminders regarding this matter will be sent.
Patent Marking
If the patented article (e.g., product, process or service) is manufactured, it is strongly recommended that the article be marked with the patent number. Not marking the article may affect your rights in the event of an infringement of your patent. The mark must be legible and unconcealed. Traditional marking requires patent numbers to be labeled on a physical article. However, virtual marking allows a company to update its patent details on articles without having to re-label or re-produce a line of articles each time a related patent issues or expires.
Virtual marking is accomplished by marking the article or packaging/brochure/website with a URL, or web address.
USA
The requirement according to USPTO is by fixing on the article or package a label containing a the word “Patent” or the abbreviation “Pat.”, together with either the number of the patent, or an Internet address associating the patented article(s) with the number of the patent(s).
For example: Patent: https://companyname/patentsandapplications
On the webpage, you are required to associate the patented article with the patent number, to the point that the viewer is able to make the association between the product and the patent number(s) easily. One should verify that a product is marked with at least one claim in a patent that covers the product. A website that simply lists a firm’s patents without mention of the products each one covers may not constitute ‘association’ between product and patent. In order to correctly associate patents with products, it is recommended to include on the webpage both the product name and the associated patent numbers in a format that makes clear the connection between these two sets of identifiers.
You may use the following format for your virtual patent notice:
Virtual Patent Marking Notice by [COMPANY LEGAL NAME]
The following products are protected by patents in the U.S. and elsewhere for [COMPANY LEGAL NAME]. This website is provided to satisfy the virtual patent marking provisions of various jurisdictions including the virtual patent marking provisions of the America Invents Act and provide notice under 35 U.S.C. §287(a). The following list of products and patents may not be all inclusive. For example, some products listed here may be covered by patents in the United States and elsewhere that are not listed, and other products not listed here may be protected by one or more patents in the United States and elsewhere. The following list of products may be covered by one or more of the following US Patents (you can include “Patent Pending” if you also have a patent application pending):
Product Name Patent Number(s)
[PRODUCT #1 NAME] [PATENT NUMBER 1]; [PATENT NUMBER 2]; [PATENT NUMBER 3]
[PRODUCT #2 NAME] [PATENT NUMBER 4]; [PATENT NUMBER 5]; [PATENT NUMBER 6]; [PATENT NUMBER 7]; Patent Pending
Note:
The marking must be substantial and continuous – all (not just some) of the products manufactured should be substantially marked, and the marking should be continuous over the life of the product or the patent (whichever is shorter). One should maintain records of the web page, including records showing that the web page was consistently operational. A product may only be marked with patents that cover the product. Periodically review your product and active patent portfolio to make sure the marked product is actually covered by the specific language of your active patent claims and to remove patents that no longer cover the product.
Other examples:
www.nike.com/patentsvirtualmarking
tivo.pactsafe.io/legal.html#patents
www.totani.co.jp/en/patent.html
www.actifio.com/patents
www.bunn.com/patents
www.owenscorning.com/en-us/patents
Other Countries: In other countries, the rules may vary.
EUROPE:
In Europe, marking a product with inapplicable patents (incorrect patent numbers or with patent numbers which are no longer in force in particular jurisdictions) can create liability for false marking. For example in Germany, you can NOT mark a product with a patent if it is not registered and valid in Germany (you cannot even write “patent pending”), so it should be very clear from the marking if the Patent is registered in Germany or not. For this reason Virtual marking is most beneficial in Europe since maintaining and updating a webpage which displays a listing of the patent(s), validated in certain countries only, for each product is easier than changing the physical labeling of a product or its packaging.
ISRAEL
There are no marking requirements for IP rights in Israel. It is, however, a criminal offence to make false representations as to the existence of an IP right. Section 183(c) of the Israel Patent Law read as follows: “If an infringement was committed after the patent holder or exclusive licensee warned the infringer, then the Court may order the infringer to pay punitive compensation, in addition to the compensation which it adjudged under subsection (b), in an amount that does not exceed that compensation”. Based on Section 183(c) above, if the patented article is manufactured, it is recommended that the product be marked with the patent number, or by way of virtual marking. Not marking the product may affect your rights in the event of an infringement of the patent. It is to be noted that case law deals with what means of warning is required, however patent marking is not mentioned. In addition, punitive compensation will be awarded by the courts only seldom and under exceptional circumstances.
CHINA:
When marking patent marks, the following information shall be indicated:
1) The type of patent in Chinese – PRC Patent is “中国发明专利“. (PRC utility model is “中国实用新型专利“, PRC Design is “中国外观设计专利“).
2) The Patent number.
If marking is done before granting of a patent, it should include the PRC application type (again, Patent is “中国发明专利“) and the Application number, as well as the words “patent pending”(which is “专利申请，尚未授权”).
Disclaimer: The information provided on this webpage does not constitute legal advice and is intended for general informational purposes only. Information on this webpage may not reflect the most up-to-date legal developments or other information. The webpage contains links to other third-party websites for convenience purposes only. Ehrlich Group assumes no responsibility or liability for any errors or omissions in the content of this page.