Nyman IP guide to Patents
A patent is a type of property right that gives the patent holder the right, for a limited time, to exclude others from making, using, offering to sell, selling, or importing into the United States the subject matter that is within the scope of protection granted by the patent. The U.S. Patent and Trademark Office (USPTO) determines whether a patent should be granted in a particular case. However, it is up to the patent holder to enforce his or her own rights if the USPTO does grant a patent.
There are three types of patents – utility, design, and plant. In addition, there are two types of utility and plant patent applications – provisional and nonprovisional. A provisional application is a quick and inexpensive way for inventors to establish a U.S. filing date for their invention which can be claimed in a later filed nonprovisional application. A provisional application is automatically abandoned twelve months after its filing date and is not examined. An applicant who decides to initially file a provisional application must file a corresponding nonprovisional application during the twelve-month pendency period of the provisional application in order to benefit from the earlier provisional application filing. A nonprovisional application is examined by a patent examiner and may be issued as a patent if all the requirements for patentability are met. Each year the USPTO receives approximately 500,000 patent applications. Most of the applications filed with the USPTO are nonprovisional applications for utility patents.
The links and articles included on this website are provided to assist an inventor with ultimately filing a nonprovisional utility patent application. It specifies the required parts of the utility patent application and identifies some of the forms may be used by an applicant (which are available on the USPTO’s website). This information is generally derived from patent laws and regulations found in Title 35 of the United States Code (U.S.C.) and Title 37 of the Code of Federal Regulations (CFR). These materials, as well as the Manual of Patent Examining Procedure (MPEP), are available at the USPTO’s website, at the Patent and Trademark Resource Centers (PTRCs), and at most law libraries.
United States Patent and Trademark Office, www.uspto.gov
How do I patent my invention?
The patent process is generally divided into a number of smaller processes that create a basic timeline from conception to patent. Not all of the steps in the patent timeline may be required, and an inventor’s timeline may differ depending on his or her specific needs. The process is summarized below, with a more detailed explanation being accessible by clicking on the title of each step in the process.
What is a patentability search?
When speaking with inventors, one of the most frequent questions I receive is, “can this invention be patented?” Of course, the answer is not always straightforward and requires a significant amount of research and analysis. Inventors may perform the search and analysis on their own, using some of the free and publicly available tools on the internet. However, many inventors find it more effective to hire a patent attorney to perform the search and form an opinion regarding the patentability of an invention before proceeding further.
Often, this is where patent attorneys, such as myself, become first involved in the patent application process. Many times, I cannot make an informed opinion on whether an invention would be eligible for patent protection without first seeing what exists in the prior art, or the vast field of knowledge available to the public. Most often, I collect a large number of related patents, patent applications, and non-patent publications to review before forming an opinion. I review these references carefully, comparing the contents of the references to an invention disclosure that I received from the inventor. If I have questions, I will contact the inventor and discuss related prior art to ensure that I clearly understand how the invention may differ before forming my opinion of patentability. Then, after all the information has been considered, I can advise the inventor as to what he or she is likely to expect if he or she applies for a patent before the U.S. Patent and Trademark Office.
Do I need to conduct a patentability search before filing a patent application?
Conducting a patent search and receiving an opinion on patentability is not a required step in the process of filing a U.S. patent application. However, since the cost of a search and opinion is substantially lower than the drafting, filing, and prosecution of a patent application, many inventors find it wise to perform this initial step. Patent prosecution is just a term of art for the negotiation stage with the U.S. Patent Office in an attempt to get a patent application allowed to issue as a valid and enforceable U.S. patent.
I usually advise potential clients to perform an initial search before engaging my services. As a legal advisor, I swore an oath to represent my clients in their best interests, even if that means losing business due to a potential client deciding not to proceed with the application process. When performing an inventor’s initial patent search, it is important for the inventor to try and find his or her invention, and not to create novelty where it does not exist. If the search produces the a clear indication that the invention already exists, the inventor may save a significant amount of money that would otherwise be spent drafting and prosecuting a patent application that would likely result in being finally rejected by the U.S. Patent Office.
Can I do the patentability search myself?
As mentioned above, there are many free resources to search the public databases of patent and non-patent publications. If this all seems a bit overwhelming, then it may be a good idea to let an attorney such as myself conduct the search and analyze the results. For inventors that are interested in performing a preliminary search themselves, I have provided some links to some of the resources I use in my practice.
What is a provisional patent application?
Once the search has been completed, if the inventor decided to conduct a patentability search, he or she may choose to draft and file a provisional patent application. This form of patent application will not be examined by the U.S. Patent and Trademark Office (USPTO), but may be filed to include important disclosure information that may later be used to claim priority in a subsequently filed nonprovisional patent application. By filing a provisional patent application, an applicant may break up the patent application process and stretch out the associated fees and costs. Also, an inventor may use the time between filing a provisional patent application and a nonprovisional patent application to determine whether his or her invention is marketable, and whether it would be a good business decision to proceed.
A provisional application is filed in the USPTO under 35 U.S.C. 111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a later filed non-provisional patent application filed under 35 U.S.C. 111(a). The filing of a provisional patent application also allows the term “Patent Pending” to be applied in connection with the description of the invention.
How long does a provisional patent application last?
A provisional application for patent (provisional application) has a pendency lasting twelve months from the date the provisional application is filed. The twelve-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the twelve-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with 35 U.S.C. 119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application.
Once a provisional application is filed, an alternative to filing a corresponding non-provisional application is to convert the provisional application to a non-provisional application by filing a grantable petition under 37 C.F.R. 1.53(c)(3) requesting such a conversion within twelve months of the provisional application filing date. However, converting a provisional application into a non-provisional application (versus filing a nonprovisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a nonprovisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application. By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the twelve-month provisional application pendency period, a patent term endpoint may be extended by as much as twelve months.
What are the filing requirements for a provisional patent application?
Certain filing requirements exist to properly file a provisional patent application with the USPTO. The provisional application must be made in the name(s) of all of the inventor(s). It can be filed up to 12 months following the date of first sale, offer for sale, public use, or publication of the invention, whichever occurs first. (These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)
A filing date will be accorded to a provisional application only when it contains:
a written description of the invention, complying with all requirements of
35 U.S.C. 112 ¶ 1; and
any drawings necessary to understand the invention, complying with
35 U.S.C. 113.
If either of these items are missing or incomplete, no filing date will be accorded to the provisional application. To be complete, a provisional application must also include the filing fee as set forth in 37 CFR 1.16(d) and a cover sheet identifying:
the application as a provisional application for patent;
the name(s) of all inventors;
title of the invention;
name and registration number of attorney or agent and docket number (if applicable);
correspondence address; and
any U.S. Government agency that has a property interest in the application.
What cautions should I be aware of relating to provisional patent applications?
The USPTO provides a number of cautions that a provisional patent applicant should note:
The benefits of the provisional application cannot be claimed if the 12-month deadline for filing a non-provisional application has expired.
A provisional application cannot result in a U.S. patent unless one of the following two events occur within 12 months of the provisional application filing date:
- A corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or
A grantable petition under 37 CFR 1.53(c)(3) to convert the provisional application into a non-provisional application is filed.
Provisional applications for patent may not be filed for design inventions.
Provisional applications are not examined on their merits.
Provisional applications for patent cannot claim the benefit of a previously-filed application, either foreign or domestic.
It is recommended that the disclosure of the invention in the provisional application be as complete as possible.
In order to obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
If there are multiple inventors, each inventor must be named in the application.
All inventor(s) named in the provisional application must have made a contribution, either jointly or individually, to the invention disclosed in the application.
The non-provisional application must have at least one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
No information disclosure statement may be filed in a provisional application.
How do I file a provisional patent application?
The provisional application papers (written description and drawings) filing fee and cover sheet can be filed electronically using EFS-Web or filed by mail. Generally, electronic filing provides the most cost effective and efficient filing of a provisional patent application. EFS-Web allows patent applications, including provisional applications, to be filed securely via the Internet. Applicants prepare documents in Portable Document Format (PDF), attach the documents, validate that the PDF documents will be compatible with USPTO internal automated information systems, submit the documents, and pay fees with real-time payment processing. When fillable EFS-Web forms are used, the data entered into the forms is automatically loaded into USPTO information systems. Further information on EFS-Web is available at:
Additionally, provisional application papers may be filed by traditional mail at:
Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450
What are the features of a filed U.S. provisional patent application?
Provides simplified filing with a lower initial investment with 12 months to assess the invention’s commercial potential before committing to higher cost of filing and prosecuting a non-provisional application for patent.
Establishes official United States patent application filing date for the invention.
Permits authorized use of “Patent Pending” notice for 12 months in connection with the description of the invention.
Begins the Paris Convention priority year.
Enables immediate commercial promotion of invention with greater security against having the invention stolen.
Permits applicant(s) to obtain USPTO certified copies.
Provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).
What warnings relate to provisional patent applications that I should know?
A provisional application automatically becomes abandoned when its pendency period expires 12 months after the provisional application filing date by operation of law. Applicants must file a non-provisional application claiming benefit of the earlier provisional application filing date in the USPTO before the provisional application pendency period expires in order to preserve any benefit from the provisional application filing.
Beware that an applicant whose invention is “in use” or “on sale” (see 35 U.S.C. 102(b)) in the United States during the 12 month provisional application pendency period may lose more than the benefit of the provisional application filing date if the 12 month provisional application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention (see 35 U.S.C. 102(b)).
Effective November 29, 2000, a claim under 35 U.S.C. 119(e) for the benefit of a prior provisional application must be filed during the pendency of the non-provisional application, and within four months of the non-provisional application filing date or within sixteen months of the provisional application filing date (whichever is later). See 37 CFR 1.78 as amended effective November 29, 2000.
Independent inventors should fully understand that a provisional application will not mature into a granted patent without further submissions by the inventor. Some invention promotion firms misuse the provisional application process leaving the inventor with no patent.
What is a nonprovisional utility patent application?
A nonprovisional utility patent application may be filed with the U.S. Patent and Trademark Office (USPTO) to be examined for patentability. If a patent examiner determines that a nonprovisional patent application meets the requirements for patentability, the nonprovisional patent application may be issued into a valid and enforceable U.S. Patent. A nonprovisional patent application requires that an invention be claimed and disclosed sufficiently as required by law.
What are the parts needed to draft a valid nonprovisional patent application?
In most instances, a nonprovisional patent application will be broken into a variety of sections, each of which will collectively comprise the application. These sections will be described in greater detail below.
Claim or Claims
The claim or claims must particularly point out and distinctly claim the subject matter which the inventor or inventors regard as the invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is determined, in large measure, by the scope of the claims.
A nonprovisional application for a utility patent must contain at least one claim. The claim or claims section must begin on a separate physical sheet or electronic page. If there are several claims, they must be numbered consecutively in Arabic numerals.
One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Any dependent claim that refers to more than one other claim (“a multiple dependent claim”) shall refer to such other claims in the alternative only. Each claim should be a single sentence, and where a claim sets forth a number of elements or steps, each element or step of the claim should be separated by a line indentation.
The specification is a written description of the invention and of the manner and process of making and using the invention that concludes with the claims to the invention, which must begin on a new page. The specification must be in clear, full, concise, and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use the same.
For inventions involving computer programming, computer program listings may be submitted as part of the specification as set forth in 37 C.F.R. 1.96(b) and (c). Other than for a reissue application or reexamination proceeding, the pages of the specification (but not the transmittal letter sheets or other forms), including claims and abstract, must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably below, the text. The lines of the specification must be 1.5 or double spaced (lines of text not comprising the specification need not be 1.5 or double spaced). It is desirable to include an indentation at the beginning of each new paragraph, and for paragraphs to be numbered (i.e., , , , etc.).
Abstract of the Disclosure
The purpose of the abstract is to enable the USPTO and the public to determine quickly the nature of the technical disclosures of your invention. The abstract points out what is new in the art to which your invention pertains. It should be in narrative form and generally limited to a single paragraph, and it must begin on a separate page. An abstract should not be longer than 150 words. See MPEP 608.01(b) for more information.
More specifically, what should be included in the specification?
As discussed above, the specification of a patent application includes a written description disclosing the invention in detail. The specification is typically comprised of multiple parts, each of which will be discussed below.
Title of Invention
The title of the invention (or an introductory portion stating the name, citizenship, residence of each applicant, and the title of the invention) should appear as the heading on the first page of the specification. Although a title may have up to 500 characters, the title must be as short and specific as possible.
Cross-Reference to Related Applications
Any nonprovisional utility patent application claiming the benefit of one or more prior-filed copending nonprovisional applications (or international applications designating the United States of America) under 35 U.S.C. 120, 121 or 365(c), or to a provisional patent application under 35 U.S.C. 119(e) must contain in the first sentence(s) of the specification following the title, a reference to each prior application, identifying it by the application number or international application number and international filing date, and indicating the relationship of the applications, or include the reference to the earlier application in an application data sheet under 37 C.F.R. 1.76. See 37 C.F.R. 1.78. Cross-references to other related patent applications may be made when appropriate.
Statement Regarding Federally Sponsored Research or Development (if applicable)
This section should contain a statement as to rights to inventions made under federally sponsored research and development (if any). See MPEP 310 for more information.
Background of the Invention
This section should include a statement of the field of endeavor to which the invention pertains. This section may also include a paraphrasing of the applicable U.S. patent classification definitions or the subject matter of the claimed invention.
Also, it should contain a description of information known to you, including references to specific documents, which are related to your invention. It should contain, if applicable, references to specific problems involved in the prior art (or state of technology) which your invention is drawn toward. See MPEP 608.01(c) for more information.
Brief Summary of the Invention
This section should present the substance or general idea of the claimed invention in summarized form. The summary can include the advantages of the invention and how it solves previously existing problems. Preferably, problems are identified in the Background of the Invention section. A statement of the object of the invention may also be included. See MPEP 608.01(d) for more information.
Brief Description of the Several Views of the Drawing
Where there are drawings, you must include a listing of all figures by number (e.g., Figure 1A) and with corresponding statements explaining what each figure depicts.
Detailed Description of the Invention
In this section, the invention must be explained along with the process of making and using the invention in full, clear, concise, and exact terms. This section should distinguish the invention from other inventions and from what is old and describe completely the process, machine, manufacture, composition of matter, or improvement invented. In the case of an improvement, the description should be confined to the specific improvement and to the parts that necessarily cooperate with it or which are necessary to completely understand the invention.
It is required that the description be sufficient so that any person of ordinary skill in the pertinent art, science, or area could make and use the invention without extensive experimentation. The best mode contemplated by the inventor of carrying out the invention must be set forth in the description. Each element in the drawings should be mentioned in the description. See MPEP 608.01(g) for more information.
What should I know regarding the filing of a nonprovisional patent application?
A nonprovisional utility patent application can be filed with the USPTO through the Office’s electronic filing system called EFS-Web, delivery by U. S. mail, or hand delivery to the Office in Alexandria, Virginia. By far, most patent applications filed at the USPTO are utility applications. Effective November 15, 2011, any regular nonprovisional utility application filed by mail or hand-delivery will require payment of an additional fee called the “non-electronic filing fee,” which is reduced by 50 percent for applicants that qualify for small entity status under 37 C.F.R. 1.27(a). The only way to avoid paying the additional non-electronic filing fee is by filing the nonprovisional utility application via EFS-Web.(The non-electronic filing fee does not apply to reissue, design, plant, or provisional applications.) EFS-Web is a web-based patent application and document submission system in which anyone with a web-enabled computer can file patent applications without downloading special software or changing document preparation tools and processes. More information is available at:
Full technical support for EFS-Web is available through the Patent Electronic Business Center (EBC) by calling 866-217-9197 from 6 a.m. to 12 midnight Eastern Standard Time (EST), Monday through Friday, except federal holidays.
When filing a nonprovisional utility patent application, it must be submitted in the English language or be accompanied by a translation in the English language, a statement that the translation is accurate and have payment of the fee set forth in 37 C.F.R. 1.17(i). If an applicant files a non-provisional utility application in a language other than English without the translation, statement, or fee, the Applicant will be given a notice and time period to submit the missing item(s).
A nonprovisional utility patent application must include a specification, including a description and a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees. Note that by filing the nonprovisional utility application electronically via EFS-Web, the basic filing fee for an applicant qualifying for small entity status is reduced by 50 percent. For applicants qualifying as micro entities, the basic filing fee may be reduced up to 75 percent.
EFS-Web accepts electronic documents formatted in Portable Document Format (PDF). The specification (description and claims) can be created using a word processing program such as Microsoft® Word or Corel® WordPerfect. The document containing the specification can normally be converted into PDF format by the word processing program that can be included as an attachment when filing the application via EFS-Web. Other application documents, such as drawings and a hand-signed declaration, may have to be scanned as a PDF file for filing via EFS-Web.
Each document can be created in a PDF format for filing via EFS-Web must have a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch) and a bottom margin of at least 2.0 cm (3/4 inch). The application pages must be numbered consecutively (centrally located above or below the text) starting with page one. In addition, the PDF document size should be 8.5 inch by 11 inch (standard size) or 21 centimeter by 29.7 centimeter (DIN size A4). The specification, including the abstract and claims, must have lines that are 1 1/2 or double-spaced in a single column of text. The text must be a nonscript font (e.g., Arial, Times Roman, or Courier), preferably with a font size of 12. Handwritten text scanned into PDF format is not acceptable.
A complete nonprovisional utility patent application should contain the elements listed below, arranged in the order shown. Description of some of these elements is provided below:
Utility Patent Application Transmittal Form or Transmittal Letter,
Application Data Sheet (see 37 C.F.R. 1.76),
Specification (with at least one claim),
Drawings (when necessary),
Executed Oath or Declaration,
Nucleotide and/or Amino Acid Sequence Listing (when necessary), and
Large Tables or Computer Listings (when necessary).
Utility Patent Application Transmittal Form or Transmittal Letter
A Utility Patent Application Transmittal Form or a transmittal letter should be filed with every patent application to identify the items being filed (e.g., specification, claims, drawings, declaration, and information disclosure statement). The form identifies the applicant(s), the type of application, the title of the invention, the contents of the application, and any accompanying enclosures. (Form PTO/SB/21 should be used for all correspondence after initial filing.)
You can electronically submit the required filing, search, and examination fees using a credit card or electronic funds transfer. For example, when filing your patent application on-line via EFS-Web, it is better to pay these fees on-line when filing the application via EFS-Web, rather than later, because any filing, search, or examination fee paid on a date later than the patent application filing date requires a late surcharge. The late surcharge will also be owed if you file the required oath or declaration on a date later than the application filing date, so it’s best to ensure that the required fees and the oath or declaration are included with the specification (including claims) and drawings filed via EFS-Web. You can also file your nonprovisional utility application in paper by mail or by hand-delivery, however, this will cost you an additional non-electronic filing fee on top of the regular filing, search, and examination fees. If you file in paper anyway, the Fee Transmittal Form (Form PTO/SB/17) may be used to calculate the prescribed filing, examination, and search fees, any excess claim fees or application size fee, and indicate the method of payment (by check, money order, deposit account, or credit card).
Although it is recommended to pay the filing, search, and examination fees on-line at the time of filing your application via EFS-Web in order to avoid the late surcharge, if you pay the fees later by check or money order, the check or money order must be made payable to the “Director of the United States Patent and Trademark Office.” If an application is filed without the fees, the applicant will be notified and required to submit the fees plus the late surcharge within the time period set in the notice.
If your nonprovisional utility application filed via EFS-Web includes a total number of specification and drawing pages that exceeds 133, an application size fee will be due. (For applications filed in paper, an application size fee is due if the total number of pages exceeds 100 pages.) Further, if the application has more than three independent claims or more than 20 total claims, excess claims fees will be due. Fees are subject to change and the applicant should consult the current Fee Schedule before filing the application.
Please note that two sets of fees exist, one for small entities and one for large entities. If you qualify as a small entity for patent fee purposes, no special form is required to claim your entitlement to reduced fees (you may check a special box on the transmittal form), but you should only pay small entity rates after ensuring that you qualify for the small entity status. For example, small entity status may be appropriate if the inventors have not assigned any rights in the invention set forth in the application and are not under any obligation to do so (as may be required in an employment contract). See 37 C.F.R. 1.27 and MPEP 509.02 for more information.
Application Data Sheet
The application data sheet or sheets are voluntarily submitted in either provisional or nonprovisional applications with bibliographic data arranged in a format specified by the USPTO. Specific bibliographic data includes applicant information, correspondence information, application information, representative information, domestic priority information, foreign priority information and assignment information. See 37 C.F.R. 1.76 and MPEP 601.05 for more information.
Supplemental application data sheets may be subsequently provided prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under 37 C.F.R. 1.63 or 1.67. However, certain information cannot be changed by simply filing a supplemental application data sheet. For example, changes to the named inventors must comply with the requirements of 37 C.F.R. 1.48, correspondence address changes must comply with the requirements of 37 C.F.R. 1.33(a), and changes to an inventor’s citizenship must comply with the requirements of 37 C.F.R. 1.63 or 1.67. Supplemental application data sheets must be titled “Supplemental Application Data Sheet,” include all of the section headings listed in 37 C.F.R. 1.76(b) and all appropriate data for each section heading, and must identify the information that is being changed, preferably with underlining for insertions, and strike-through or brackets for text removed.
Oath or Declaration
An oath or declaration is required for applications involving designs, plants, and utility inventions and for reissue applications. Each inventor must make an oath or declaration that he/she believes himself/herself to be the original and first inventor of the subject matter of the application, and he/she must make various other statements required by law and various statements required by the USPTO rules. If an application data sheet is filed, the USPTO rules require fewer statements in the oath or declaration. See Title 37, Code of Federal Regulations, Sections 1.63 and 1.76. The oath must be sworn to by the inventor before a notary public or other officer authorized to administer oaths. A declaration may be used in lieu of an oath. A declaration does not require any witness or person to administer or verify its signing. Thus, use of a declaration is preferable. When filing a continuation or divisional application, a copy of an earlier-filed oath or declaration from the parent application may be acceptable. The oath or declaration must be signed by the inventor in person, or by the person entitled by law to make application on the inventor’s behalf. A full first and last name with middle initial or name, if any, and the citizenship of each inventor are required. The mailing address of each inventor and foreign priority information (if any) is also required if an application data sheet is not used.
Any oath or declaration must be in a language the inventor understands. If the oath or declaration used is in a language other than English, and is not in a form provided by the United States Patent and Trademark Office or provided in accordance with Patent Cooperation Treaty (PCT) Rule 4.17(iv), an English translation together with a statement that the translation is accurate is required. The USPTO provides forms PTO/SB/101-110, which are declaration forms in certain foreign languages with an English translation, for an applicant’s use.
If the person making the oath or declaration is not the inventor, the oath or declaration shall state the relationship of that person to the inventor, upon information and belief, the facts which the inventor would have been required to state, and the circumstances which render the inventor unable to sign, namely death, insanity or legal incapacity or unavailability/refusal to sign. (See 37 C.F.R. 1.42, 1.43, and 1.47.) If the inventor has refused or cannot be reached to sign the declaration, then a petition under 37 C.F.R. 1.47 is required, and if there are inventors who have signed the oath or declaration, then the remaining inventors must sign the oath or declaration on behalf of the non-signing inventor. If none of the inventors will sign the oath or declaration because they refuse to do so or cannot be found or reached after diligent effort, then the oath or declaration must be signed by the party showing proprietary interest in the application, as shown in the petition under 37 C.F.R. 1.47(b). If the inventor has died or is legally incapacitated, then the legal representative of the deceased or incapacitated inventor must sign the oath or declaration on behalf of the inventor.
A patent application is required to contain drawings, if drawings are necessary to understand the subject matter to be patented. Most patent applications contain drawings. The drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete and no application filing date will be granted by the USPTO. Please see the detailed Drawing Requirements section.
What is patent prosecution?
Patent prosecution is the stage between the filing of a patent application and its final disposition. At the conclusion of patent prosecution, a patent application may be allowed to issue as a valid U.S. patent, receive a final rejection, or be abandoned. During prosecution, a patent examiner may compare the patent application with references included in the prior art to determine whether the subject matter of the application is patentable. Typically, the patent examiner will reject at least part of the patent application as lacking novelty or being obvious in light of existing prior art. These concepts will be discussed in greater detail below.
What happens at the start of patent prosecution?
Prior to focusing on specific statutory requirements, USPTO personnel must begin examination by determining what, precisely, the applicant has invented and is seeking to patent, and how the claims relate to and define that invention. As the courts have repeatedly reminded the USPTO: “The goal is to answer the question ‘What did applicants invent?'” USPTO personnel will review the complete specification, including the detailed description of the invention, any specific embodiments that have been disclosed, the claims and any specific, substantial, and credible utilities that have been asserted for the invention. After obtaining an understanding of what applicant invented, the examiner will conduct a search of the prior art and determine whether the invention as claimed complies with all statutory requirements.
How does the examiner initially examine the claims?
The claims define the property rights provided by a patent, and thus require careful scrutiny. The goal of claim analysis for an examiner is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention. USPTO personnel must first determine the scope of a claim by thoroughly analyzing the language of the claim before determining if the claim complies with each statutory requirement for patentability.
USPTO personnel should begin claim analysis by identifying and evaluating each claim limitation. For processes, the claim limitations will define steps or acts to be performed. For products, the claim limitations will define discrete physical structures or materials. Product claims are claims that are directed to either machines, manufactures or compositions of matter.
Prior to evaluating the claimed invention for compliance with the statutory requirements, an examiner will conduct a thorough search of the prior art. Generally, a thorough search involves reviewing both U.S. and foreign patents and nonpatent literature. In many cases, the result of such a search will contribute to USPTO personnel’s understanding of the invention. Both claimed and unclaimed aspects of the invention described in the specification should be searched if there is a reasonable expectation that the unclaimed aspects may be later claimed.
In determining patentability, what criteria do the examiners consider?
Once a patent examiner has determined what has been invented, and after the prior art search has been conducted, the examiner will determine whether the invention complies with the statutory requirements. To satisfy these requirements, an invention must be useful, novel, nonobvious, and disclosed such to enable a person of skill in the art to make or practice the invention. An examiner will pay close attention to claims of the patent to determine what protections the application is requesting. The examiner will also consider the written description for the clearest explanation of the applicant’s invention. The written description should exemplify the invention, explaining how it relates to the prior art and explaining the relative significance of various features of the invention.
The burden is on the USPTO to set forth a prima facie case of unpatentability. Therefore if USPTO personnel determine that it is more likely than not that the claimed subject matter falls outside all of the statutory categories, they must provide an explanation. For example, a claim reciting only a musical composition, literary work, compilation of data signal, or legal document (e.g., an insurance policy) per se does not appear to be a process, machine, manufacture, or composition of matter. If USPTO personnel can establish a prima facie case that a claim does not fall into a statutory category, the patentability analysis does not end there. USPTO personnel must further continue with a statutory subject matter analysis. Also, USPTO personnel must still examine the claims for compliance with 35 U.S.C. 102 (novelty), 103 (nonobviousness), and 112.
Section 101 of title 35, United States Code, provides:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
As the Supreme Court has recognized, Congress chose the expansive language of 35 U.S.C. 101 so as to include “anything under the sun that is made by man” as statutory subject matter. 35 U.S.C. 101 defines four categories of inventions that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. The latter three categories define “things” or “products” while the first category defines “actions” (i.e., inventions that consist of a series of steps or acts to be performed). See 35 U.S.C. 100(b) (“The term ‘process’ means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”).
The subject matter courts have found to be outside of, or exceptions to, the four statutory categories of invention is limited to abstract ideas, laws of nature and natural phenomena. While this is easily stated, determining whether an applicant is seeking to patent an abstract idea, a law of nature or a natural phenomenon has proven to be challenging. These three exclusions recognize that subject matter that is not a practical application or use of an idea, a law of nature or a natural phenomenon is not patentable. Historically, the Supreme Court has further held in landmark cases that an “idea of itself is not patentable, but a new device by which it may be made practically useful is” and “while a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” The courts have also held that a claim may not preempt ideas, laws of nature or natural phenomena.
35 U.S.C. 112
The first paragraph of section 112 of title 35, United States Code, contains three separate and distinct requirements:
(A) adequate written description,
(B) enablement, and
(C) best mode.
Adequate Written Description
For the written description requirement, an applicant’s specification must reasonably convey to those skilled in the art that the applicant was in possession of the claimed invention as of the date of invention. The claimed invention subject matter need not be described literally, i.e., using the same terms, in order for the disclosure to satisfy the description requirement. Software aspects of inventions, for example, may be described functionally. See MPEP 2163 for further guidance with respect to the evaluation of a patent application for compliance with the written description requirement.
An applicant’s specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation. The fact that experimentation is complex, however, will not make it undue if a person of skill in the art typically engages in such complex experimentation.
See MPEP 2164 et seq. for detailed guidance with regard to the enablement requirement of 35 U.S.C. 112(a).
Determining compliance with the best mode requirement requires a two-prong inquiry:
(1) at the time the application was filed, did the inventor possess a best mode for practicing the invention; and
(2) if the inventor did possess a best mode, does the written description disclose the best mode such that a person skilled in the art could practice it.
See MPEP 2165 et seq. for additional guidance. Deficiencies related to disclosure of the best mode for carrying out the claimed invention are not usually encountered during examination of an application because evidence to support such a deficiency is seldom in the record.
35 U.S.C 112(b)
Formerly the second paragraph of 35 U.S.C. 112, 35 U.S.C. 112(b) contains two separate and distinct requirements: (A) that the claim(s) set forth the subject matter applicants regard as the invention, and (B) that the claim(s) particularly point out and distinctly claim the invention.
Novelty and Nonobviousness
Reviewing a claimed invention for compliance with 35 U.S.C. 102 and 103 begins with a comparison of the claimed subject matter to what is known in the prior art. If no differences are found between the claimed invention and the prior art, then the claimed invention lacks novelty and is to be rejected by USPTO personnel under 35 U.S.C. 102. Once differences are identified between the claimed invention and the prior art, those differences must be assessed and resolved in light of the knowledge possessed by a person of ordinary skill in the art. Against this backdrop, one must determine whether the invention would have been obvious at the time the invention was made. If not, the claimed invention satisfies 35 U.S.C. 103.
Section 102 of title 35, United States Code, provides:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor”s certificate filed more than twelve months before the filing of the application in the United States, or
(e) the invention was described in – (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
(f) he did not himself invent the subject matter sought to be patented, or
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
To anticipate a claim, a reference must teach every element of the claim. The courts have found, “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” “When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art.” “The identical invention must be shown in as complete detail as is contained in the … claim.” The elements must be arranged as required by the claim, but this is not an ipsissimis verbistest, i.e., identity of terminology is not required.
Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP 2131.01 and 2131.02 for more detail.
Section 103(a) of title 35, United States Code, provides:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The Supreme Court has particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” The Supreme court has also Court concluded that when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” The principles underlining these decisions are instructive when the question is whether a patent application claiming the combination of elements of prior art would have been obvious.
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, 35 U.S.C. 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.”
Once the examiner has considered the statutory requirements, do I get my patent?
In most cases, an examiner will determine that a patent application is deficient in at least one of the statutory requirements. After the application has been read, the claimed invention understood, and a prior art search made, the examiner will review and analyze the patent application in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity.
A first office action will typically reject at least part of the claims as being unpatentable. Don’t worry, this is normal. The applicant will then reply with arguments as to why the invention should be afforded patent protection. The examiner then reviews all the evidence, including arguments and evidence responsive to any rejection, before issuing the next Office action.
After reply by applicant or patent owner to a non-final action, the application will be reconsidered and again examined. The applicant will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination. The applicant may reply to such Office action with or without amendment, unless such Office action indicates that it is made final. If an application is finally rejected, the applicant may appeal, request continued examination, or abandon the application. If the final Office action allows the patent, the applicant must take care of some final procedural steps prior to an the actual issuance of the U.S. Patent.
How long does this all take?
This process usually takes years to complete. The lengthy pendency is partially due to the substantial backlog at the U.S. Patent and Trademark Office. The USPTO website includes a patent dashboard that summarizes the current statistics for time a patent application may pend before being finally disposed.
What does it mean for a patent application to be allowed?
A patent application will be allowed to issue into as a valid and enforceable U.S. patent after it has been found by the U.S. Patent and Trademark Office to comply with the statutory requirements for patentability. When an application is apparently ready for allowance, it may be reviewed by an examiner to make certain that the whole application meets all formal and substantive (i.e., statutory) requirements and that the language of the claims is enabled by and finds adequately descriptive support in the application disclosure as originally filed. Neglect to give due attention to these matters may lead to confusion as to the scope of the patent.
Frequently, the invention as originally described and claimed was of much greater scope than that defined in the claims as allowed. Some or much of the subject matter disclosed may be entirely outside the bounds of the claims accepted by the applicant. In such case, the examiner should require the applicant to modify the brief summary of the invention and restrict the descriptive matter so as to be in harmony with the claims. However valuable for reference purposes the examiner may consider the matter which is extraneous to the claimed invention, patents should be confined in their disclosures to the respective inventions patented (see 37 C.F.R. 1.71 and 1.73). Of course, enough background should be included to make the invention clearly understandable.
How do I find out if my patent application has been allowed to issue as a U.S. Patent?
If, on examination, it appears that the applicant is entitled to a patent under the law, a notice of allowance will be sent to the applicant at the correspondence address indicated in 37 C.F.R. 1.33. The notice of allowance shall specify a sum constituting the issue fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. The sum specified in the notice of allowance may also include the publication fee, in which case the issue fee and publication fee (37 C.F.R. 1.211(e)) must both be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable.
What happens after my patent application is allowed to issue as a U.S. Patent?
A Notice of Allowance is prepared and mailed, and the mailing date appearing thereon is recorded on the paper or image file wrapper table of contents. If an application is subject to publication, the Notice of Allowance will require both the issue fee and the publication fee. See 37 C.F.R. 1.211(e).
What is the issue fee and when is it due?
The issue fee and any required publication fee are due three months from the date of the Notice of Allowance. The amount of the issue fee and any required publication fee are shown in the Notice of Allowance. The Notice of Allowance will also reflect any issue fee previously paid in the application. The issue fee due does not reflect a credit for any previously paid issue fee in the application. The fee(s) due will be accepted from the applicant, assignee, or a registered attorney or agent, either of record or under 37 C.F.R. 1.34.
What happens after the issue fee has been paid?
Under the current publication process, utility and reissue patents are issued within about four weeks after the issue fee and any required publication fee are received in the Office. A patent number and issue date will be assigned to an application and an Issue Notification will be mailed after the issue fee has been paid and processed by the USPTO. Because the Issue Notification may be mailed less than two weeks before the application is expected to issue as a patent, applicants are advised to file any continuing application before receiving the Issue Notification to avoid loss of copendency.
Are there requirements for my patent to remain valid after it has been issued?
All utility patents which issue from applications filed on or after December 12, 1980 are subject to maintenance fees, which must be paid to maintain the patent in force. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from the date of the original patent grant. Fee payments must include both patent and application numbers. If the fee is being paid for reissue, the application number required is the reissue application number. To access information on the current fees and costs associated with your patent, access the fee schedule.
How do I pay my maintenance fees?
There are 3 ways you may pay maintenance fees on your patent:
Pay Online using a credit card, deposit account, or EFT account.
Pay by Fax using a credit card or deposit account, and fax to 571-273-6500. If paying by fax, complete and submit the “Maintenance Fee Transmittal Form” and the “Credit Card Payment Form” (if paying with a credit card).
Pay by Mail using a check or money order, credit card, or deposit account. If paying by mail, complete and submit the “Maintenance Fee Transmittal Form “ and the “Credit Card Payment Form” (if paying with a credit card).
What happens if I do not pay the maintenance fees?
If the maintenance fee is not paid within the required time period, the fee may still be paid within the grace period with an additional surcharge. The grace period is typically six months. Unless the maintenance fee and any applicable surcharge is paid within the required time periods, the patent will expire as of the end of the corresponding grace periods. A patent which expires for the failure to pay the maintenance fee will expire at the end of the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant. Maintenance fees cannot be paid in advance.
What if I forgot to pay the maintenance fees, can my patent rights be reinstated?
A payment of maintenance fees and any necessary surcharges will be considered to be late or insufficient include instances when:
(A) Though a payment was received, additional funds are required due to surcharge or fee increase;
(B) Though a payment was received in an amount for small entity, the patented file records do not indicate that an assertion of small entity status was received; or
(C) The payment was received after the patent expired.
If the Office considers a payment to be late or insufficient, a notice (e.g., a Notice of Non-Acceptance of Patent Maintenance Fee) will be sent to the “fee submitter.” Reply to the notice is required prior to the expiration of the grace period in order to avoid the expiration of the patent. If a reply is not received prior to the expiration of the patent, then an appropriate petition is required. See MPEP 2580 and 2590.
If no payment has been made prior to the expiration of a patent, maintenance fees due on a patent based on an expiration of the patent if, upon petition, may be accepted if the delay in payment of the maintenance fee is shown to the satisfaction of the Director of the Office to have been unavoidable or unintentional. The appropriate surcharge must be paid as a condition of accepting payment of the maintenance fee.
If the Director of the Office accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired but will be subject to the certain intervening rights and provisions, which are described in 35 U.S.C. 41(c)(2).
A patent may be reinstated at any time following the expiration of the patent for failure to timely pay a maintenance fee due to an unavoidable delay. A petition to accept late payment of a maintenance fee, where the delay was unavoidable, must include:
(A) the required maintenance fee;
(B) the surcharge for an unavoidably expired patent; and
(C) a showing that the delay was unavoidable since reasonable care was taken to ensure that the maintenance fee would be paid timely and that the petition was filed promptly after the patentee was notified of, or otherwise became aware of, the expiration of the patent.
The required showing must enumerate the steps taken to ensure timely payment of the maintenance fee, the date and the manner in which patentee became aware of the expiration of the patent, and the steps taken to file the petition promptly. Furthermore, an adequate showing requires a statement by all persons with direct knowledge of the cause of the delay, setting forth the facts as they know them. Copies of all documentary evidence referred to in a statement should be furnished as exhibits to the statement.
A patent may be reinstated within 24 months after the 6-month grace period if the delay in payment is shown to the satisfaction of the Director of the Office to have been unintentional. See MPEP 711.03(c) for a general discussion of the “unintentional” delay standard.
A petition filed under the unintentional standard must include:
(A) the required maintenance;
(B) the surcharge for an unintentionally expired patent; and
(C) a statement that the delay in payment of the maintenance fee was unintentional.
A person seeking reinstatement of an expired patent should not make a statement that the delay in payment of the maintenance fee was unintentional unless the entire delay was unintentional, including the period from discovery that the maintenance fee was not timely paid until payment of the maintenance fee. For example, a statement that the delay in payment of the maintenance fee was unintentional would not be proper when the patentee becomes aware of an unintentional failure to timely pay the maintenance fee and then intentionally delays filing a petition for reinstatement of the patent.