Part 4

According to the law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If the inventor is dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is insane, the application for patent may be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or a person having a proprietary interest in the invention may apply on behalf of the non-signing inventor.

If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.

Officers and employees of the Patent and Trademark Office are prohibited by law from applying for a patent or acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent.

Application For Patent

Non-Provisional Application for a Patent

A non-provisional application for a patent is made to the Assistant Commissioner for Patents and includes:

(1) A written document which comprises a specification (description and claims), and an oath or declaration;

(2) A drawing in those cases in which a drawing is necessary; and

(3) The filing fee. See the fee schedule.

All application papers must be in the English language or accompanied by a verified translation into the English language along with the required fee set forth in 37 CFR 1.17(k). All application papers must be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable and white paper.

The papers must be presented in a form having sufficient clarity and contrast between the paper and the writing to permit electronic reproduction. The application papers must all be the same size—either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8½ by 11 inches), with a top margins of at least 2.0 cm (¾ inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (¾ inch) and a bottom margin of at least 2.0 cm (¾ inch) with no holes made in the submitted papers. It is also required that the spacing on all papers be 1½ or double spaced and the application papers must be numbered consecutively (centrally located above or below the text) starting with page one.

The application for patent is not forwarded for examination until all required parts, complying with the rules related thereto, are received. If any application is filed without all the required parts for obtaining a filing date (incomplete or defective), the applicant will be notified of the deficiencies and given a time period to complete the application filing (a surcharge may be required)—at which time a filing date as of the date of such a completed submission will be obtained by the applicant. If the omission is not corrected within a set, specified time period, the application will be returned or otherwise disposed of; the filing fee if submitted will be refunded less a handling fee as set forth in the fee schedule.

It is desirable that all parts of the complete application be deposited in the Office together; otherwise each part must be signed and a letter must accompany each part, accurately and clearly connecting it with the other parts of the application.

All applications received in the PTO are numbered in serial order and the applicant will be informed of the application serial number and filing date by a filing receipt.

The filing date of an application for patent is the date on which the names of the inventors, a specification (including claims) and any required drawings are received in the PTO; or the date on which the last part completing the application are received in the case of a previously incomplete or defective application.

Provisional Application for a Patent

Since June 8, 1995, the PTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. Provisional applications may not be filed for design inventions. The filing date of a provisional application is the date on which a written description of the invention, drawings if necessary, and the name of the inventor(s) are received in the PTO. To be complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. Applicant would then have up to twelve months to file a non-provisional application for patent as described above. The claimed subject matter in the later filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application.

Provisional applications are not examined on their merits. A provisional application will become abandoned by the operation of law twelve months from its filing date. The twelve month pendency for a provisional application is not counted toward the 20 year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.

A surcharge is required for filing the basic filing fee or the cover sheet on a date later than the filing of the provisional application.

A brochure on Provisional Application for Patent is available by calling the PTO General Information Services at 1–800–786–9199 or 703–308–4357 or by accessing PTO’s Web site at _http://www.uspto.gov_.

Oath or Declaration, Signature

The oath or declaration of the applicant is required by law for a non-provisional application. The 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 allegations required by law and various allegations required by the Patent and Trademark Office rules. 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 as part of the original application for a patent involving designs, plants, and other patentable inventions; for reissue patents; when claiming matter originally shown or described but not originally claimed; or when filing a divisional or continuing application. A declaration does not need to be notarized.

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, of each inventor are required. The post office address and citizenship of each inventor are also required.

Sample forms are available by calling the PTO General Information Services at 800–786–9199 or 703–308–4357 or by accessing PTO Web site at _http://www.uspto.gov_ under the section titled “PTO Forms.”

The papers in a complete application will not be returned for any purpose whatsoever, nor will the filing fee be returned. If applicants have not preserved copies of the papers, the Office will furnish copies for a fee.

Filing Fees[1]

Footnote 1:

Please Note: The fees are current as of the revision date. Fees are subject to change in October of each year and should therefore be verified before submission to the PTO. A fee schedule may be obtained by writing to Commissioner of Patents and Trademarks, Washington, D.C. 20231—Attention: General Information Services or by calling the General Information Services at 800–786–9199 or 703–308–4357 or from the PTO Web site at _http://www.uspto.gov_.

The filing fee of a non-provisional application, except in design and plant cases, consists of a basic fee and additional fees. The basic fee entitles the applicant to present twenty (20) claims, including not more than three (3) in independent form. An additional fee is required for each claim in independent form which is in excess of three (3) and an additional fee is required for each claim (whether independent or dependent) which is in excess of a total of twenty (20) claims. If the application contains multiple dependent claims, additional fees are required.

If the owner of the invention is a small entity, (an independent inventor, a small business concern or a non-profit organization), the filing fees are reduced by half if the small entity files a verified statement claiming small entity status.

To avoid errors in the payment of fees it is suggested that the table in the enclosed patent application transmittal letter be utilized to calculate the fee payment.

In calculating fees, a claim is in singularly dependent form if it incorporates by reference a single preceding claim which may be an independent or a dependent claim. A multiple dependent claim or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference is made.

The law also provides for the payment of additional fees on presentation of additional claims after the application is filed. When an amendment is filed which presents additional claims over the total number already paid for, or additional independent claims over the number of independent claims already accounted for, it must be accompanied by any additional fees due.

Specification (Description and Claims)

The following order of arrangement should be observed in framing the application:

(a) Application transmittal form.

(b) Fee transmittal form.

(c) Title of the Invention.

(d) Cross Reference to related applications (if any).

(e) Statement of federally sponsored research/development (if any).

(f) Reference to a microfiche appendix (if any).

(g) Background of the Invention.

(h) Brief Summary of the Invention.

(i) Brief description of the several views of the drawing (if any).

(j) Detailed Description of the Invention.

(k) Claim or claims.

(1) Abstract of the disclosure.

(m) Drawings (if any).

(n) Executed oath or declaration.

(o) Sequence listing (if any).

(p) Plant Color Coding Sheet (applicable in plant patent applications).

The specification must include a written description of the invention and of the manner and process of making and using it, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the technological area to which the invention pertains, or with which it is most nearly connected, to make and use the same.

The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter, or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor for carrying out the invention must be set forth.

In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.

The title of the invention, which should be as short and specific as possible, should appear as a heading on the first page of the specification, if it does not otherwise appear at the beginning of the application.

A brief abstract of the technical disclosure in the specification including that which is new in the art to which the invention pertains, must be set forth on a separate page immediately following the claims. The abstract should be in the form of a single paragraph of 250 words or less, under the heading “Abstract of the Disclosure.”

A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention should precede the detailed description. The summary should be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.

When there are drawings, there shall be a brief description of the several views of the drawings, and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures, and to the different parts by use of reference numerals.

The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention. The portion of the application in which the applicant sets forth the claim or claims is an important part of the application, as it is the claims that define the scope of the protection afforded by the patent and which questions of infringement are judged by the courts.

More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied. One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers back to more than one other claim is considered a “multiple dependent claim.”

Multiple dependent claims shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. Claims in dependent form shall be construed to include all of the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate all the limitations of each of the particular claims in relation to which it is being considered.

The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.

Drawing

The applicant for a patent will be required by law to furnish a drawing of the invention whenever the nature of the case requires a drawing to understand the invention. However, the Commissioner may require a drawing where the nature of the subject matter admits of it; this drawing must be filed with the application. This includes practically all inventions except compositions of matter or processes, but a drawing may also be useful in the case of many processes.

The drawing must show every feature of the invention specified in the claims, and is required by the Office rules to be in a particular form. The Office specifies the size of the sheet on which the drawing is made, the type of paper, the margins, and other details relating to the making of the drawing. The reason for specifying the standards in detail is that the drawings are printed and published in a uniform style when the patent issues, and the drawings must also be such that they can be readily understood by persons using the patent descriptions.

No names or other identification will be permitted within the “sight” of the drawing, and applicants are expected to use the space above and between the hole locations to identify each sheet of drawings. This identification may consist of the attorney’s name and docket number or the inventor’s name and case number and may include the sheet number and the total number of sheets filed (for example, “sheet 2 of 4”). The following rule, reproduced from title 37 of the Code of Federal Regulations, relates to the standards for drawings:

§ 1.84 Standards for drawings.

(a) =Drawings.= There are two acceptable categories for presenting drawings in utility patent applications:

(1) _Black ink._ Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings, or

(2) _Color._ On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application or the subject matter of a statutory invention registration. The Patent and Trademark Office will accept color drawings in utility patent applications and statutory invention registrations only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:

(i) The appropriate fee set forth in 37 CFR 1.17(h);

(ii) Three (3) sets of color drawings; and

(iii) The specification must contain the following language as the first paragraph in that portion of the specification relating to the brief description of the drawing:

“_The file of this patent contains at least one drawing executed in color. Copies of this patent with color drawing(s) will be provided by the Patent and Trademark Office upon request and payment of the necessary fee._”

If the language is not in the specification, a proposed amendment to insert the language must accompany the petition.

(b) =Photographs.=

(1) _Black and white._ Photographs are not ordinarily permitted in utility and design patent applications. However, the Office will accept photographs in utility and design patent applications only after granting a petition filed under this paragraph which requests that photographs be accepted. Any such petition must include the following:

(i) The appropriate fee set forth in 37 CFR 1.17(h); and

(ii) Three (3) sets of photographs.

Photographs must either be developed on double weight photographic paper or be permanently mounted on Bristol board. The photographs must be of sufficient quality so that all details in the drawing are reproducible in the printed patent.

(2) _Color._ Color photographs will be accepted in utility patent applications if the conditions for accepting color drawings have been satisfied. See paragraph (a)(2) of this section.

(c) =Identification of drawings.= Identifying indicia, if provided, should include the application number or the title of the invention, inventor’s name, docket number (if any), and the name and telephone number of a person to call if the Office is unable to match the drawings to the proper application. This information should be placed on the back of each sheet of drawings a minimum distance of 1.5 cm. (⅝ inch) down from the top of the page. In addition, a reference to the application number, or, if an application number has not been assigned, the inventor’s name, may be included in the left-hand corner provided that the reference appears within 1.5 cm. (9⁄16 inch) from the top of the sheet.

(d) =Graphic forms in drawings.= Chemical or mathematical formulae, tables, and waveforms may be submitted as drawings and are subject to the same requirements as drawings. Each chemical or mathematical formula must be labeled as a separate figure, using brackets when necessary, to show that information is properly integrated. Each group of waveforms must be presented as a single figure, using a common vertical axis with time extending along the horizontal axis. Each individual waveform discussed in the specification must be identified with a separate letter designation adjacent to the vertical axis.

(e) =Type of paper.= Drawings submitted to the Office must be made on paper which is flexible, strong, white, smooth, non-shiny, and durable. All sheets must be free from cracks, creases, and folds. Only one side of the sheet shall be used for the drawing. Each sheet must be reasonably free from erasures and must be free from alterations, overwritings, and interlineations. Photographs must either be developed on double weight photographic paper or be permanently mounted on Bristol board. See paragraph (b) of this section for other requirements for photographs.

(f) =Size of paper.= All drawing sheets in an application must be the same size. One of the shorter sides of the sheet is regarded as its top. The size of the sheets on which drawings are made must be:

(1) 21.0 cm. by 29.7 cm. (DIN size A4), or (2) 21.6 cm. by 27.9 cm. (8½ by 11 inches).

(g) =Margins.= The sheets must not contain frames around the sight; i.e., the usable surface, but should have scan target points, i.e., cross-hairs, printed on two catercorner margin corners. Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (9⁄16 inch), and a bottom margin of at least 1.0 cm. (⅜ inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6‑15⁄16 by 9⅝ inches) on 21.6 cm. by 27.9 cm. (8½ by 11 inch) drawing sheets.

(h) =Views.= The drawing must contain as many views as necessary to show the invention. The views may be plan, elevation, section, or perspective views. Detail views of portions of elements, on a larger scale if necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract. Views must not be connected by projection lines and must not contain center lines. Waveforms of electrical signals may be connected by dashed lines to show the relative timing of the waveforms.

(1) _Exploded views._ Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.

(2) _Partial views._ When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains parts of another partial view. A smaller scale view should be included showing the whole formed by the partial views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.

(i) Where views on two or more sheets form, in effect, a single complete view, the views on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the views appearing on the various sheets.

(ii) A very long view may be divided into several parts placed one above the other on a single sheet. However, the relationship between the different parts must be clear and unambiguous.