USE CASE · US PATENT LAW
Patent protection in the USA
Anyone wishing to protect an invention in the US or to further develop an existing US patent portfolio must coordinate technical, formal and strategic decisions at an early stage. This applies both to a direct US application and to entering the US national phase of a PCT application.
We assist companies from Germany and the DACH region with US patent applications and proceedings before the United States Patent and Trademark Office (USPTO). Matthias Schuhmacher and Raphael Tautz coordinate the German-language support; Caleb Pollack and Brendan Mee contribute their experience from US patent practice.
The case at a glance
Background
An invention is to be protected in the USA, or an existing portfolio is to be maintained with the USPTO.
Objective
To consolidate the scope of protection, the procedural strategy and the commercial significance of the invention into a robust US patent application.
Support
German-speaking contacts coordinate technical information and US procedural practices with the relevant US team.
Your situation
US patent applications have their own requirements regarding the drafting of claims, the description and the conduct of proceedings. Differences from the European procedure are evident, amongst other things, in relation to patent eligibility under Section 101, novelty and inventive step under Sections 102 and 103, and the requirements under Section 112.
Added to this are decisions regarding continuation and divisional applications, examiner interviews, potential appeals and the coordination of multiple patent families. Without a common strategy, this can lead to unnecessary costs, gaps in the scope of protection or conflicting positions.
Our support
We organise the invention documentation, align the US patent application strategy with the business objectives and provide support throughout the proceedings before the USPTO. We respond to Office Actions in collaboration with the relevant technical staff; Examiner Interviews and other procedural steps are prepared on a case-by-case basis.
For existing portfolios, we consider not only individual applications but also continuation strategies, international coordination, patentability, freedom to operate and due diligence issues. The appropriate examination and procedural approach depend on the technology, market and portfolio.
Discuss US patent strategy
Tell Matthias Schuhmacher and Raphael Tautz about your invention, the ongoing USPTO proceedings or your portfolio objectives. We will clarify what documentation is required and involve the appropriate members of the US team.
Filing US patents and developing portfolios
Our support ranges from the initial application right through to the strategic management of larger portfolios. The specific components required depend on the technology, the stage of development and the commercial objectives.
US patent application and national phase
Align the invention with the US patent application strategy.
When filing a direct US application or entering the US national phase of a PCT application, the technical disclosure, claim structure and time limits must all be consistent. We review existing documents, clarify priorities and coordinate the drafting process with the inventors and the relevant teams.
A US application is not merely a translation of a European application. Consideration should be given at an early stage to its structure, the wording of the claims and any possible subsequent continuation applications. This lays the groundwork for the examination process and the further development of the portfolio.
Office actions and examiner interviews
Address the USPTO’s objections from both a technical and legal perspective.
Office actions may relate, amongst other things, to patent eligibility under Section 101, novelty under Section 102, inventive step under Section 103 or the requirements of Section 112. We categorise the objections and work with the technical experts to develop a consistent response strategy.
An examiner interview can help to discuss technical differences and possible amendments to the claims directly with the examiner. Whether and when such a meeting is advisable is decided on the basis of the file, the objections raised and the intended scope of protection.
PTAB Appeals, Continuations and Divisional Applications
Make strategic use of procedural options before the USPTO and the PTAB.
If it appears that an agreement cannot be reached with the examiner, an appeal to the Patent Trial and Appeal Board may be considered. In addition, continuation or divisional applications may be used to pursue further sets of claims or more narrowly defined inventions.
These options have an impact on costs, duration and the portfolio. We therefore do not consider them in isolation, but in the context of the relevant products, competitors and long-term protection needs.
Portfolio, Patentability and FTO
Combining US and European intellectual property strategies.
International companies require a coordinated strategy for US and European intellectual property rights. We provide support in building and managing portfolios, conducting patentability assessments, and prioritising applications according to their technical and commercial significance.
Freedom-to-operate (FTO) analyses address the question of whether a planned product may infringe third-party rights. Their scope and significance depend on the product, the market and the scope of the search. The results are incorporated into the patent and business strategy.
Your points of contact
Matthias Schuhmacher and Raphael Tautz coordinate German-language support and collaboration with the US patent practice. Caleb Pollack and Brendan Mee oversee patent prosecution, USPTO proceedings and portfolio strategies as part of the US team.
Partner · STEM Practice Group
Your contact in Munich
Partner · STEM Practice Group
Your contact in Munich
Partner · US STEM Practice Group
US team in New York
Partner · US STEM Practice Group
US team in New York
Frequently Asked Questions
When a PCT application enters the US national phase, it is necessary to review time limits, translations, formal requirements and the claims strategy. The appropriate adjustments to be made depend on the international application and the objectives for the US market.
An office action is a notice from the USPTO in which the examiner raises formal or substantive objections to the application. The response must address the points raised in accordance with the relevant guidelines.
It may be worthwhile to have a discussion with the examiner if technical differences, amendments to the claims or the interpretation of an objection can be discussed efficiently. The decision depends on the status of the case.
They make it possible to pursue further or narrowed sets of claims on the basis of an earlier application. Whether this makes strategic sense depends on the disclosure, the portfolio and the stage of the proceedings.
An FTO analysis examines, within a defined scope, whether a product or process could be affected by relevant third-party rights. It does not constitute a general guarantee and must be tailored to the market, the product and the specific issue at hand.
Further information
What is a USPTO Office Action?
What is the PTAB
Patent granting procedures in the USA
Intellectual Property
Advice on patents and other intellectual property rights.
US Business Law
German-language advice on projects in the USA.
USPTO Practice
Pearl Cohen’s international US patent practice.
German 
English (United States) 
English (UK)