Overview of U.S. Patent System
Types of Patents:
There are three types of U.S. patents - Utility Patents, Design Patents, and Plant Patents. Korea's "patents" and "utility models" correspond to U.S. Utility Patents, and while designs are categorized separately from patents in Korea, they are covered under the patent system in the United States. Accordingly, inventions filed as patents, utility models, or designs in Korea may all be filed as patents in the United States. For reference, Plant Patents cover plants that have been developed through asexual reproduction.
In addition to the patent types mentioned above, there are Reissue Patents and Reexamination Patents, which allow correction of defects in or amendment of the claims of an issued patent.
A Reissue Patent is filed when there are defects in the specification or drawings of an issued patent, when the scope of the claims is too narrow or too broad such that the patent — in whole or in part — may be at risk of being invalidated, or when there is a justified reason to amend the claims or specification. Reissue applications are most commonly filed to cure defects in the context of infringement litigation or challenges to patent rights. It is also possible to broaden the scope of the claims within the bounds of the specification through a reissue, provided the application is filed within two years from the date of patent grant.
A Reexamination Patent involves a procedure in which anyone — including the patent owner — may request reexamination during the term of the patent to review its validity. This mechanism is primarily used by opposing parties seeking to invalidate a patent.
Grace Period:
U.S. Patent Law §102(a)(1) provides that, as a general rule, a patent cannot be obtained if the claimed invention was patented, described in a printed publication, in public use, on sale, or otherwise made available to the public before the effective filing date of the claimed invention. However, where such disclosure was made by the inventor or by another who obtained the subject matter directly or indirectly from the inventor, an exception applies: a one-year grace period is granted from the date of public disclosure to the date of patent filing, allowing the inventor to file a patent application within that period. For utility patents, an applicant may first file a provisional patent application to secure an earlier filing date and subsequently obtain a patent through a non-provisional patent application, or alternatively, proceed directly with a non-provisional application.
Patent Term and Maintenance:
The patent term for a Utility Patent is 20 years from the filing date of the patent application, and for a Design Patent, it is 15 years from the date of patent issuance. For applications entering the national phase through the PCT, the patent term is 20 years from the PCT international filing date.
To maintain a Utility Patent, maintenance fees must be paid at 3.5 years, 7.5 years, and 11.5 years after the patent is issued. No maintenance fees are required for Design Patents or Plant Patents.
Duty to Submit an Information Disclosure Statement (IDS):
When filing a U.S. patent application, the applicant has a duty to disclose to the USPTO, through an Information Disclosure Statement (IDS), all prior art references known to the applicant, including the attorney or agent and anyone substantively involved in the application process, that are believed to be material to patentability of the claimed invention.
Accordingly, prior art cited in foreign counterpart applications (including those in Korea) must be submitted through an IDS as information material to patentability. If an applicant fails to submit prior art references known to be material to patentability, the resulting patent, even if granted, may be rendered unenforceable on the grounds of inequitable conduct. For this reason, the IDS submission is a critically important procedure in U.S. patent prosecution that requires careful attention.
