Filing U.S. Patent Applications
A. Filing Non-provisional Patent Applications
▪ A non-provisional application is a regular patent application, for which we prepare and file with the full specification, drawings, and patent claims in accordance with the U.S. laws and regulations.
☞ To request to file this application, please download Patent Application Information Sheet, fill out the form, and then email or fax it to us.
[Method 1] Filing a U.S. patent application with priority claimed to foreign patent applications under the Paris Convention:
A U.S. application can be filed claiming the priority of one or more Korean patent applications. To have the foreign priority benefit, the U.S. application must be filed within one year of the filing date of the (first) Korean patent application.
[Method 2] Filing a U.S. patent application based on PCT International Applications:
A U.S. national stage entry application can be filed based on a PCT international application. To have the foreign priority benefit, the U.S. national stage application must be filed within 30 months of the filing date of the (first) Korean application. If there is a need for modifications/corrections, a Preliminary Amendment can be submitted without adding new matter.
[Method 3] Filing a U.S. patent application without claiming priority of any foreign patent applications:
When the period (1 year) for claiming the priority of Korean patent application is over, a Non-provisional U.S. application can still be filed before the publication of the Korean patent application.
The U.S. application can also be filed before filing any foreign applications (e.g., Korean application) if the applicant decides to do so for reasons, for example, when obtaining a quality U.S. patent is very important and critical to the applicant. For this process, our licensed and experienced U.S. patent attorneys will prepare and file the application with high-quality English specification and claims to obtain a strong U.S. patent based on U.S. patent laws and practice. Our specialized and experienced U.S. patent attorneys will consult with the inventors to draft a high quality application, or translate or revise the Korean patent specification to prepare a U.S. application with professional standards.
▪ Duration of U.S. Patent Right:
The term of a patent (other than a design patent) begins on the date the patent issues and ends twenty (20) years from the filing date of the U.S. patent application. However, to maintain the U.S. patent right for the full statutory term, there will be three maintenance fees scheduled after paying the patent issue fee. The maintenance fees must be paid by the due date in order to keep the U.S. patent right for the full term. If the payment is not made in time the patent will expire or lapse.
B. Filing Provisional Patent Applications
▪ A U.S. provisional application does not require the same standard in the contents of the specifications and drawings as a regular patent application, namely, the non-provisional application. Provisional applications can be prepared and filed quickly, without including any claims, to take advantage of having an early effective priority date.
▪ A provisional application can be used effectively in cases when it is difficult to predict the potential market or when obtaining the earliest priority date is important. This application can also be used when there is some possibility that the invention would be modified or upgraded in the future. The provisional application will not be examined until a nonprovisional application is filed. The nonprovisional application must be filed within one year of the provisional application to claim priority of its contents. It will be regarded as abandoned if the nonprovisional application is not filed within one year from the filing date of the provisional application. Korean clients have not been favoring this route so far, but we believe it is good to consider this strategy in light of the benefits of obtaining the earliest priority date with relatively low cost.
☞ To request to file this application, please download Patent Application Information Sheet, fill out the form, and then email or fax it to us.
Filing U.S. Design Applications
▪ To claim a foreign priority benefit, a U.S. design application must be filed within six months of the Korean design application date. However, U.S. Design applications cannot be filed by a PCT national phase application based on PCT international applications.
▪ If it has been over 6 months of the filing date of the Korean design application but before the publication of the design application in Korea, a U.S. design application can be filed without claiming the foreign priority.
▪ A U.S. Design application can also be filed before filing the design application in Korea.
▪ In the United States, a design patent is subject to the patent laws and regulations unless specifically stated otherwise in the laws and registrations. As the standards of the drawings in the U.S. Design application are much stricter than in Korea, it is highly recommended that the drawings are reviewed by an expert attorney in our office.
▪ Duration of U.S. Design Right:
The term of a design patent is effective for 14 years from the patent issue date. Once registered, there are no maintenance fees to be paid during the term.
☞ To request to file a design application, please download Design Application Information Sheet, fill out the form, and then email or fax it to us.
Filing U.S. Trademark Applications
▪ U.S. Trademark Application Types:
- A. Foreign Registration (or Application) Basis
(1) A U.S. Trademark Application can be filed based on the registration of the Korean Trademark (or of other countries).
(2) In order to claim the foreign priority benefit, a U.S. Trademark Application should be filed with the priority of the Korean Trademark Application (or of other countries) within six month of the filing date.
- B. Intent-to-use Basis
A U.S. Trademark Application can be filed before the mark is in actual use when the applicant has a good-faith intent to use the mark in the future. Registration will be issued after submitting a Statement of Use (with one or more specimens that proves its use in U.S. commerce).
- C. Use Basis
A U.S. Trademark Application can be filed while the mark is already in use in U.S. commerce. Registration will be issued after submitting the Statement of Use (with one or more specimens that shows its use in commerce).
- D. A U.S. Trademark application can be filed through the Madrid system.
▪ Duration of the U.S. Trademark Rights: The duration of a U.S. Trademark Right will last for 10 years. Subject to the condition that the mark is used in commerce, it can be renewed every 10 years. However, a registered trademark can be canceled if it is not used for a certain period of time.
- Note: In principle, all of the designated goods (or services) specified in the trademark registration should be used in U.S. commerce. Therefore, it is recommended to delete certain designated goods (or services) that are not going to be used in the near future.
☞To request to file a trademark application, please download Trademark Application Information Sheet, fill out the form, and then email or fax it to us.