filing in the united states

Building a stronger
US patent portfolio

Author: Catherine A. Shultz

In 2016, Dutch companies and residents filed more than 5000 patent applications in the United States. According to the USPTO 2016 Annual Report, the number of applications has steadily increased over the past five years, with more than 2900 US patents being issued to residents of the Netherlands in 2016. These trends make clear that the United States is an important market for Dutch businesses. While it is nice to observe this annual increase in the numbers of US patents being granted to Dutch businesses, it seems that the time is right to look at ways of not just increasing your patent portfolio in terms of quantity, but also in terms of quality.

One major difference between the EP and US systems is the flexibility of the US system when it comes to changing your claim scope. This may be done through claims amendments, adding new claims or even filing new divisional applications. In the US, you are allowed 3 independent claims and 20 total claims without having to pay extra fees. There are no restric-tions on how many of your independent claims can be device claims or method claims. This creates potential for claiming additional subject matter contained in your application by adding new independent claims to the US application. For example, you could choose to have one set of claims that followed the device claim from your original application and then add a second set of device claims that omitted one or more non-essential features that you believe a competitor may eliminate when trying to manoeuvre around your patent protection, or a second set that is directed closer to a differ-ent embodiment or version of your product.

Further filing applications

This flexibility can also be useful through the filing of con-tinuation, continuation-in-part and divisional applications which can allow you to change patent claims to adapt to changing technology and markets. As long as you have a US application pending, you may file one or more of these further applications, claiming the same priority date of the earlier application. The continuation-in-part application can be useful when you make advances on the invention or technology for which you also wish to obtain coverage. These further filing applications can also be useful as an offensive strategy to further claim market space for your company as the market or technology changes. If you have sufficient disclosure in an application that is still pending, it is possible to file new divisional applications with claims written to align with the new market and technology.

Know your prior art

Another step to building strong and enforceable individual US patents is to know your prior art and ensure that you are meeting your US disclosure requirements. By knowing your prior art, you can ensure that you understand the field and the level of one of ordinary skill in the art. This can be incor-porated into the patent application, demonstrating the state of the art, and preventing improper hindsight combinations in rejections during prosecution or during future invalidity proceedings. While a prior art search is not necessary or practical for every application, an easy step to take is to ask engineers, scientists and inventors in the field of technology to explain the state of the art and any similar technologies or products of which they are aware. This can be used to draft the strongest patent application possible while ensuring that US disclosure requirements are met. The disclosure requirements in the US require anyone associated with the patent application – including inventors, in-house patent attorneys, and other individuals substantively involved in the preparation or prosecution of the application – to disclose any material prior art of which they are aware. The penalties for non-disclosure can be severe, including an unenforceable patent. It is thus essential that this duty is communicated to all those involved and complied with to ensure that each issued patent is enforceable.

Manage your formalities

And finally, make sure to complete any administrative tasks that could be important when looking at enforcement of your patents. These include ensuring that proper inventor-ship is listed, that declarations are signed by all inventors, that assignments are in place and recorded and that patent-ed items are marked with their patent number or with a vir-tual marking system. Managing these formalities at the front end well can have a great impact on the ease of prosecution, validity of the patent and possibility to claim damages from infringers at the back end.

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