Overview of the legal framework

The main intellectual property laws in the United States include:

• Patent Act (Title 35 of the U.S. Code)

• Lanham Act (Title 15 U.S.C. §§1051–1141n)

• Design patent protection (design patents under the Patent Act)

• Copyright Act (Title 17 U.S.C.)

• Defend Trade Secrets Act (2016)

The competent authority is the United States Patent and Trademark Office (USPTO), which forms part of the U.S. Department of Commerce.
The United States is a member of WIPO, the PCT, the Madrid Protocol, the Paris Convention and TRIPS and other multilateral IP systems.

International cooperation and system alignment

• USPTO has PPH fast-track examination arrangements with JPO (Japan Patent Office), EPO (European Patent Office) and a number of other offices;

• The United States is a member of the Madrid Protocol and the Hague Agreement;

• The USPTO contributes data to the WIPO Global Brand Database and PatentScope for global access;

• The U.S. court system has a rich body of case law on IP matters, which serves as an important reference for intellectual property protection worldwide.

Trademark system

Filing routes

• Applications can be filed directly with the USPTO;

• Alternatively, the United States may be designated under the Madrid Protocol.

Classification standard

• Applies the Nice Classification, supplemented by the U.S.-specific Acceptable Identification of Goods and Services Manual (goods and services identification manual).

• Supports both single-class and multi-class applications.

Examination procedure

• Formality examination: about 1–2 months;

• Substantive examination: about 6–9 months;

• Opposition period: 30 days from publication during which an opposition may be filed.

Use and renewal

• Registration term: 10 years;

• Between years 5 and 6, a Section 8 Declaration of Use must be filed;

• Between years 9 and 10, a Section 9 Renewal application must be filed;

• A continuous period of 3 years of non-use may result in cancellation.

Examination features

• Examination focuses on distinctiveness and likelihood of confusion;

• Foreign-language marks must be accompanied by a translation and transliteration;

• The U.S. trademark system is primarily use-based, but filings on an “intent-to-use” basis are also available;

• Official correspondence and examination notices are handled through the Trademark Electronic Application System (TEAS).

Patent system

Types of protection and term

• Utility patents: 20 years from the filing date;

• Design patents: 15 years from the grant date (for applications filed after 2015);

• Plant patents: 20 years from the filing date.

Examination system

• A substantive examination system is applied;

• Average examination period is 18–30 months;

• The examination request and the relevant fees must be filed and paid at the time of filing.

International routes

• The United States is a PCT contracting state, and PCT applications may enter the U.S. national phase;

• The USPTO also participates in Patent Prosecution Highway (PPH) programmes.

System features

• Since the 2013 America Invents Act (AIA), U.S. patent rights have been based on the first-to-file principle;

• Continuation and divisional applications are permitted;

• Patent publication and post-grant challenge mechanisms are well developed;

• Electronic filing is supported via the Patent Center system (formerly EFS-Web).

Design protection

Legal basis

• A specific patent type within the Patent Act system examined by the USPTO.

Scope of protection

• The shape, lines, configuration and ornamental features of industrial products;

• Includes graphical user interfaces (GUIs) and icon designs.

Term of protection

• 15 years from the grant date (for applications filed on or after 13 May 2015);

• Not renewable.

Examination procedure

• Examination period is about 12–18 months;

• Examination language: English;

• A complete set of drawings, including front, side and top views, must be submitted.

System features

• Design patents form part of the patent system rather than a separate design statute;

• No detailed written description is required; consistency of the drawings is the main focus of examination;

• International design protection can be sought via the Hague Agreement.