content of us patent applications & filing requirements 1 contents of us patent applications...

Content of US Patent Applications & Filing Requirements 1

Contents of US Patent Applications & Filing Requirements

Usman Ansar Khan, Ph.D.

Regional Workshop – CIIT

October 9, 2013

The content provided in these workshop presentation materials is for general informational purposes only, and neither is intended to constitute nor should be construed as legal opinion or legal advice. The content herein is only the opinion of the author and is not attributable to H.C. Park & Associates, PLC.


Table of Contents

I. Parts of An Application

II.Filing Requirements

III.Common Drafting Errors

IV.Summary


Parts of An Application• Title• Cross-Reference to Related Application(s)• Background• Summary of the Invention• Brief Description of the Drawings• Detailed Description of the Invention• Abstract• Claims• Drawings


Title

- Heading on the first page of the specification

- May be up to 500 characters

- Should be as short and specific as possible

- Examiners often require amending title if not specific enough

- First words of the title such as “An”, “A”, “The”, “Improvement of”, or “New” may be omitted by the USPTO in official records

MPEP § 606

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Cross-Reference to Related Application

- First sentence in specification after title- Reference to claim the benefit of one or more prior filed

copending provisional, non-provisional, or international application

- Identify priority application by the application number and filing date

- Indicate relationship to priority applications (e.g., continuation, divisional, reissue, etc)

Content of US Patent Applications & Filing Requirements

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Other Reference Statements- Included only if applicable

- Statement regarding rights of federally sponsored research or development (MPEP § 310)

- Included names to party of a joint research agreement (37 C.F.R. § 1.71(g))

- Reference to a gene sequence listing, a table, or a computer program listing appendix submitted on compact disc and an incorporation-by-reference of the material on the compact disc (37 C.F.R. § 1.96(c))


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Background

- Two parts:

1) Field of the Invention

- A statement of the field of endeavor to which the invention pertains

2) Description of the related art

- A brief description of information known to the inventor(s), possibly including references to specific documents related to the invention

- Typically includes a statement pertaining to the problem involved in the prior art (or state of technology) which the invention is drawn toward.

MPEP § 608.01(c)


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Summary of the Invention

- Typically includes one or two specific statements summarizing the invention’s nature and substance

- Summary should be directed to the specific invention being claimed

- Typically also includes restating (in identical words) of the independent claims and/or dependent claims in narrative English

MPEP § 608.01(d)


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Brief Description of the Drawings

- Includes a listing of drawings with a sentence or two describing each drawing

- Used by USPTO to determine if all figures noted in the specification are present in the application – if there is a missing figure – a Notice of Omitted Item(s) is issued

- Must include a statement (example included below) if a color figure is also being provided

The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.

MPEP § 608.01(f)


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Detailed Description of the Invention

- Invention must be described including a process for making the invention in full, clear, concise, and accurate terms

- Description should be sufficient enough so that any person of ordinary skill in the pertinent art, science, or area could make and use the invention without extensive experimentation (Enablement requirement - MPEP § 2164 and 35 U.S.C. § 112)

- Should distinguish invention from prior inventions

- Should disclose best mode for carrying out the invention

- Should describe each element in the drawings

MPEP § 608.01(g)


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Abstract

- Purpose: To enable USPTO and public to quickly determine the nature of the technical disclosures of the invention

- Should point to novelty in invention

- Should be in narrative form and limited to 150 words

- Single paragraph on a separate page

MPEP § 608.01(b)


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Claims

- Purpose: Define the scope of the protection of the patent application

- Requirements:- Must clearly and particularly point out and distinctly claim the

subject matter Applicant(s) regards as the invention- Must be separate from the Detailed Description (must begin on

separate piece of paper)- Must have at least one claim

- Claims can be independent, dependent, or multiple dependent

- Determine, in part, fee required to be submitted with an application

MPEP § 608.01(i)-§ 608.01(o)


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Drawings

- Must show all claimed features of the invention- Necessary to include if drawing is required for

understanding the subject matter being claimed- Should be in black ink, but can be in color if color is

necessary to disclose/describe the subject matter being claimed. Multiple color inks should be distinguishable if the colored inks are printed in black and white

MPEP § 608.01(f)


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Drawings

- To submit a colored drawing:

1) Must pay fee set forth by 37 C.F.R. § 1.17(h)

2) File 3 sets of the color drawing(s)

3) An amendment to the specification (Brief Description of Drawings section) must be made to indicate that a figure is in color

4) File a petition explaining why the color drawings are necessary

MPEP § 608.01(f)


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Filing Requirements

1) Provisional Applications

2) Non-provisional Applications


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Provisional Application

• Can be filed within 12 months of first sale, offer for sale, public use, or publication of invention

• Must file:1) Written description and drawings in compliance with 35 U.S.C.

§ 112, 1st paragraph, and 35 U.S.C. § 113, respectively

2) Filing fee

3) Cover sheet including:

- Identification of application as a provisional

- Name and residency of Inventor(s)

- Title of Invention

- Corresponding address

- Attorney/Agent and docket information (if applicable)

Submission/Filing Requirements


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Non-Provisional Application• Submission Requirements

- Utility Patent Application Transmittal Form- Fee Transmittal Form- Application Data Sheet (ADS) (optional)- Written Description (with at least one claim)- Drawings (if needed)- Executed Oath or Declaration (37 C.F.R. § 1.47)- Nucleotide and/or Amino Acid Sequence Listing (if applicable) - Power of Attorney and Statement under 37 C.F.R. § 3.73(b) (if applicable)


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Non-Provisional Application

• Utility Patent Application Transmittal Form

- Serves as cover page to indicate the types of papers being filed

- Should clearly indicate type of application, applicant, title of the invention, and any other enclosures (e.g., specification, oath/declaration)

• Fee Transmittal Form

- Indicates fees being paid and form of payment

- Fees include filing, search, and examination fees

- Pay fees as small entity or large entity


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• Application Data Sheet (ADS)

- Voluntary Submission

- Indicates:

- Application type - Priority Information

- Applicant information (name, address, citizenship)

- Entity Status

- Correspondence information

- Representative/Attorney Information

- Assignment Information


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• Application Data Sheet (ADS) • Statements in Transitional Applications (Nonprovisional

applications that are: 1) filed on or after March 16, 2013; and 2) claim foreign priority or domestic benefit of an application filed before March 16, 2013)

• If a transitional application has ever included a claim to an invention having an effective filing date on or after March 16, 2013, Applicant must provide a statement to that effect


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• Supplemental ADS

- Can be submitted prior to payment of issue fee to correct or update information previously submitted in an ADS or Oath/Declaration

• Written Description & Drawings

- Includes Title, Background, Summary of the Invention, Brief Description of Drawings, Detailed Description of the Invention, Abstract, and Drawings (as described)


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Non-Provisional Application• Oath/Declaration (37 C.F.R. § 1.63 and § 1.68)

- Statement by each inventor that he/she is the original and first inventor of the invention- Identifies full name and citizenship of each inventor- Must be executed (signed and dated) to be valid

• Oath/Declaration

- Must be in a language understood by the inventor (an English translation may be attached to the Oath/Declaration if the original Oath/Declaration is not in English)- Includes the following statements:

1) Executing person(s) understands the contents of the application including the claims 2) Executing person(s) acknowledges the duty of disclosure


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- Other required information (if ADS not submitted)

- Information regarding any claims for foreign priority

(specifying the application number, country, day,

month, and year of its filing)

- Residence and/or mailing address information of

inventors


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Non-Provisional Application• Oath/Declaration

- If filing a continuation or divisional application:

- No new oath/declaration required provided that 1) no new inventors have been added in the continuation or divisional application; and 2) no new matter is introduced

- Copy of executed oath / declaration in parent application should be submitted

- Statement requesting the deletion of the name of the person(s) who are not inventors in the child application (if applicable)

- If an inventor refuses to sign or cannot be located, 37 C.F.R. § 1.47 may apply


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- If a continuation-in-part application is filed, a new oath / declaration should be filed

- A representative may sign on behalf of an inventor due to certain circumstances (e.g., death, insanity, incapacity / handicap of inventor, failure to reach inventor) - 37 C.F.R. § 1.42, § 1.43, and § 1.47 may apply


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• Oath vs. Declaration

Oath:

- Must be sworn to in the presence of authorized officer (e.g., notary public)

Declaration:

- Does not require presence of authorized officer (generally preferred)

- Includes statement that all information on declaration is true, and that willful false statements are punishable by law and may impact the validity of patent application


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Non-Provisional Application• Nucleotide and/or Amino Acid Sequence Listing

- Relevant section 37 C.F.R. § 1.821

• Power of Attorney- Written document through which inventors or assignee of patent application authorizes a patent practitioner to act on his/her behalf- Must be in writing and signed by inventor/assignee of application- May name only 1) one or more joint inventors; 2) a registered patent practitioner associated with a Customer Number; or 3) 10 or less registered patent practitioners as authorized representatives


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Non-Provisional Application• Statement under 37 C.F.R. § 3.73(b) or § 3.73(c)

- Establishes right of assignee to take action for an application by signing a statement identifying the assignee, and providing either:

1) Documentary evidence of a chain of title from the original owner to the assignee (including a statement affirming that the documentary evidence of the chain

of title from the original owner to the assignee was or concurrently is being submitted for recordation); or

2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the USPTO (e.g., reel and frame number).


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Preliminary Amendment

• An amendment submitted to the USPTO prior to the mailing of a First Office Action by the USPTO

• May be submitted either:

1) At the time of filing of an application; or

2) After filing of an application, but prior to mailing of a first Office Action

If 1, then the preliminary amendment is treated as part of the original disclosure.


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Preliminary Amendment• Amendments made in a preliminary amendment may be

included in the published version of the application• If amendments to the specification are made in a

preliminary amendment, the USPTO will issue a “Notice to File Corrected Application Papers” and require applicant(s) to submit a Substitute Specification

• If an amendment to the specification is made in a preliminary amendment only to add or amend a benefit claim to a prior-filed application, a substitute specification is not necessary

• Any amendment filed after filing of a RCE but prior to issuance of a Office Action is not a preliminary amendment


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Preliminary Amendment

• If the preliminary amendment is filed along with an application and includes new matter or subject matter not supported by the application & the oath/declaration submitted with the application does not include a reference to the preliminary amendment, the Examiner may require the applicant(s) to submit a supplemental oath/declaration referring to the preliminary amendment


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Preliminary Amendment• A preliminary amendment may not be entered if:

1) the preliminary amendment cancels all the claims without presenting any new or substitute claims;

2) the preliminary amendment interferes with the preparation of the first Office Action

• A preliminary amendment will be entered if:

1) the preliminary amendment is filed within 3 months of filing of the application

2) the preliminary amendment is filed within 3 months of the day the national stage of a 371 application is entered

3) the preliminary amendment is filed no later than the filing date of a continued prosecution application


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Common Drafting Errors

• Lack of claim support in specification and drawings

• Alternative vs. Required language (and vs. or)

• Preferred embodiments

• Patent profanity (must, required, only, should, necessary, important, critical, essential, unnecessary)

• Narrowly defining and limiting terms


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Common Drafting Errors

• Means-plus-function language

• Consistency

• Solely focusing on invention and not potential infringers

• Not describing alternatives


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SummaryApplication


TitleCross-Reference to Related Application(s)BackgroundSummary of the InventionBrief Description of the DrawingsDetailed Description of the InventionAbstractClaimsDrawings

Filing Requirements

FeesTransmittal Forms

Written Description & DrawingsOath / Declaration

AssignmentADS

Power of Attorney & Statement under 3.73b

Sequence ListingPreliminary Amendment

If applicable

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Questions ?


content of us patent applications & filing requirements 1 contents of us patent applications...

Documents

priority applications

specific invention

invention brief description

title reference

summarysummary slide

international application

application number

specific statements