IEEE Power Electronics Magazine - June 2015 - 9

Patent Reviews

by Art MacCord

Options for Patent
Applications

here are several different types
of utility patent applications,
and this month we will talk
about some of the options available to
a patent applicant, particularly patent
applicants who invent or have their
business in the United States. In general, there are two choices for an initial application-provisional and
nonprovisional. After the initial application, subsequent options include
nonprovisional, Patent Cooperation
Treaty (PCT), divisional, and continuation applications.
Since it is important to get an early
filing date, provisional applications are
attractive for first filings because they
are less complicated and have reduced
filing fees. In addition, if ongoing work
on the invention generates additional
useful information, subsequent provisional applications can be filed as
refinements take place. A traditional
nonprovisional application can also be
filed as the initial application.
At the first anniversary of the filing of the first application, the patent
applicant has several choices. International treaties stipulate that countries
will consider an application filed in
their country before that anniversary
as if it was filed on the same date as the
first application. This early date can be
vital to ensuring that the invention to
be patented is still considered to be
"new." If the first application was a proDigital Object Identifier 10.1109/MPEL.2015.2420855
Date of publication: 24 June 2015

visional, one option is to file a regular
nonprovisional application, which differs from a provisional application primarily because it must have the claims
that define the new subject matter to
be protected.
At that first anniversary date, an
applicant may also file a PCT application, also known as an international
application. This can be filed with
the U.S. Patent and Trademark Office
(USPTO) or in certain other countries.
The international application will be
given a preliminary search and examination to show the likelihood of success of the patent application. At the
end of 30 months from the earliest filing date, the international application
moves to the national stage, in which
the applicant files papers and fees in
the countries where patents are sought
to be obtained, including the USPTO, if
the United States is chosen.
Once a U.S. nonprovisional application has been filed-whether as the
initial filing, a follow-on after the provisional, or a national stage filing from
an international application-it is subject to similar procedures. If the examiner finds that the application claims
more than one invention, a restriction
requirement can be imposed, forcing
the applicant to select one of the inventions identified by the examiner for actual examination. Efforts to patent the
other invention can continue by filing a
"divisional" application. The divisional
application will be given the benefit of
the earliest effective filing date of the

June 2015

application from which it is divided,
provided that it is filed before the end
of proceedings on its parent application. Again, this benefit can be vital to
ensure that the newness test is satisfied. In other respects, it is treated as a
regular national nonprovisional filing.
Yet another form of U.S. application is called a continuation. In some
circumstances, the give and take between the applicant and the examiner
goes on for so long that the examiner
will no longer examine the application
based upon the original filing. A continuation application can be filed to
continue prosecution and will benefit
from the original filing date, as long as
it is filed before the end of proceedings
in its parent application.
If the European market is significant
to the applicant, the European Patent
Office (EPO) can be selected, either at
the end of the first anniversary of the
first filing or as a national stage of the
international application. The EPO conducts a single examination for all of its
member countries, which can be in English. If the European application is approved by the EPO, the applicant selects
EPO member countries where the European patent is to be effective. Annual
fees are due to those selected member
countries to keep the patents in force,
but no further examination takes place.
Inventors in foreign countries can
file in their home countries, initially,
in an application comparable to a U.S.
(continued on p. 61)
 IEEE POWER ELECTRONICS MAGAZINE

Table of Contents for the Digital Edition of IEEE Power Electronics Magazine - June 2015