Apply For a Patent

The first step in obtaining a patent is to file the specification and drawings along with the required forms with the U.S.PTO. This is known as the “patent application”. A patent application may be a “utility”, “design” or “international” (PCT) patent application. A “Utility” patent application may be either a provisional or non provisional patent application. The format and forms prescribed for each of these is different and is further explained in this chapter.Once the application has been submitted, the U.S. PTO will review the application and will revert back to the applicant or the applicant’s attorney if they require further information or clarification. If the inventive concept applied for does not satisfy the patentable criteria of novelty, non obviousness and usefulness, the examiner will issue an office action. The applicant will be given a prescribed time within which a suitable response must be filed. Failure to respond within the time limit without applying for a time extension will result in the application going abandoned. If the examiner is satisfied with the response, the patent will be granted. However, if the response does not meet the requirements of the office action, subsequent office actions may be sent. Details of office actions and their responses are explained in Chapter 5.

Patent applications may be posted to the U.S. PTO or be filed with the U.S. PTO electronically. This chapter will explain how to apply for a patent, the procedural requirements, electronic filing and the legal forms required.

• Advantages of Electronic Filing: The U.S. PTO offers the applicants the choice of mailing the patent application or electronically filing the application. An application may be electronically filed by using the EFS web software on the U.S. PTO website. The user of this software to file an application may be registered or unregistered. A registered user has more options available such as filing follow on documents and saving the application before submitting it. However, a registered user requires a digital certificate in order to authenticate the identity of the user. Obtaining this certificate is a simple process where a request may be filed with the Patent Electronic Business Center who will send the certificate to the concerned person.
• The main benefits of electronic filing of patent applications are, Lower fee: The basic filing fee for electronically filed patent applications for small entities and individuals is $82 as opposed to $165 for postal applications for small entities and individuals. Safe Transaction: The U.S PTO guarantees users of the EFS web the “same legal protection as paper-based filings”. Users are issued an acknowledgment receipt of the filing with details such as the date of the filing, title of the invention, name of the first inventor and details of the forms submitted with the filing.Simple Procedure: The EFS web software is user friendly and self explanatory. The U.S. PTO also provides tutorials on their website on the application process.Correction Friendly: Before the application is submitted to the U.S. PTO, the EFS web software evaluates the documents and information entered and will inform the user if there are any problems so that corrections, if any, can be made at this stage.

  Quick Process: Due to the EFS user friendly software, the entire patent application filing process can be completed quickly and an acknowledgment receipt issued. With postal filings, it usually takes a week before the acknowledgment receipt is issued and received in the mail.

• Electronic Filing of a Patent Application: The following is a step by step instruction on how to electronically file patent applications.
  1. 1. Go to the U.S. PTO website at www.uspto.gov
     2. Click on “Patents” on the left side of page and “File Online in EFS Web”
  1. 1. Authenticate identity by uploading digital certificate
  1. 1. Choose the appropriate box
        1. The certificate holder
        2. The type of application; if it’s a new application or existing application
  1. Upload the necessary documents
  2. If there are no corrections to be made, click “Continue”. If there is a warning shown, make the required change to the file.
  3. Choose the fees to be paid
  4. Review the total fee amount and documents and click “Submit”. Click submit only once.
  5. You may proceed to pay the fees at this time or pay it later
     Existing Application:
     1. If documents or fees for an existing application is required to be filed, then click on existing application and enter the application number and confirmation number of the existing patent application in the space provided.
     2. Upload the required documents. If there are no documents to be uploaded and only fees need to be paid, click “continue to calculate fees”.
     3. Review the documents uploaded and if there are no corrections required, click “continue”
     4. Select the fees required to be paid
     5. Verify the content
     6. Pay the fees at this time or pay later
• Patent Application Forms: Along with the specification and drawings of a patent application, U.S. PTO prescribed forms need to be filed along with the application. These forms are readily available on the U.S. PTO website at http://www.uspto.gov/web/forms/index.html#patent. The forms required to be submitted along with the patent application is different for the various kinds of patent applications. The forms listed in this book are current as on July 30, 2009. For updated forms, refer the U.S.PTO website.
• Provisional Utility Patent Application Forms: A Provisional Utility Patent Application only requires a cover sheet to be filed along with the provisional specification and drawings. The applicant must download provisional cover sheet (SB 16) from the U.S. PTO website and file this with the provisional specification and drawings.
• Non Provisional Utility Patent Application Forms: A complete or non provisional patent application requires the following forms to be submitted with the U.S. PTO.
  1. Transmittal.
  2. Oath or Declaration.
  3. Power of Attorney.
  4. IDS Form.
  5. Statement Under 37 CFR3.73(b) in case of an assignment.
• Transmittal: The U.S. PTO requires that a transmittal be submitted along with a patent application. There is a different form for a utility patent application and a design patent application. Oath or Declaration: The oath or declaration form is signed by the inventor(s). According to the MPEP, “the applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; and shall state of what country he is a citizen”. MPEP 602 states:
  (a) An oath or declaration filed under § 1.51(b)(2) as a part of a non provisional application must:(1) Be executed, i.e., signed, in accordance with either § 1.66 or § 1.68. There is no minimum age for a person to be qualified to sign, but the person must be competent to sign, i.e., understand the document that the person is signing;
  (2) Identify each inventor by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial;
  (3) Identify the country of citizenship of each inventor; and
  (4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.
  (b) In addition to meeting the requirements of paragraph (a) of this section, the oath or declaration must also: (1) Identify the application to which it is directed;
  (2) State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and
  (3) State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
  (c) Unless such information is supplied on an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
  (1) The mailing address, and the residence if an inventor lives at a location which is different from where the inventor customarily receives mail, of each inventor; and
  (2) Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made pursuant to § 1.55, and any foreign application having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.
  (d) (1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
  (i) The prior non-provisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;
  (ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;
  (iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and
  (iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.
  (2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application.
  (3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by:
  (i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and
  (ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.
  (4) Where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney or correspondence address during the prosecution of the prior application.
  (5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
  (e) A newly executed oath or declaration must be filed in any continuation-in-part application, which application may name all, more, or fewer than all of the inventors named in the prior application.” Power of Attorney: The Applicant is expected to file a “Power of Attorney” form with the U.S. PTO giving his attorney the right to represent him before the Patent Office. MPEP 601.02 states, “The attorney’s or agent’s full mailing address (including ZIP Code) must be given in every power of attorney. The telephone and fax numbers of the attorney or agent should also be included in the power of attorney form.IDS Form: The IDS Form or Information Disclosure Statement is statement submitted to the U.S. PTO disclosing the prior art if any. “In non provisional applications filed under 35 U.S.C. 111(a), applicants and other individuals substantively involved with the preparation and/or prosecution of the application have a duty to submit to the Office information which is material to patentability as defined in 37 CFR 1.56. (MPEP 609). An IDS form is taken into consideration only if the IDS form is filed, Within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d); Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application; Before the mailing of a first Office action on the merits; or Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114, MPEP 609 (b).

  Design Patent Application Forms: The forms required to filed for a design patent application are,

  1. The Design Patent Application Transmittal Form
  2. The Specification; and
  3. The Drawings

• FeesUtility Patents: The patent application fees for large and small entities are different. The U.S. PTO defines a “small entity” as “one where the number of employees including the employees of any affiliated companies does not exceed 500, and the entity has not licensed, assigned, granted or conveyed and is under no obligation to license, assign, grant or convey the intellectual property rights contained in this patent application to an entity that does not qualify as a non-profit organization or a small entity business concern under 13 CFR 121.802.” To qualify for small entity status and pay the lower small entity fee, the applicant must meet the requirements mentioned above.
• Filing Fees: Patent fees are revised by the U.S. PTO every year. According to the U.S. PTO fee schedule (last revised on May 1, 2009), the filing fees for a utility patent are as follows:
  

  Filing Fee	Large Entity	Small Entity
  Provisional application filing fee	$220	$110
  Basic Filing Fee	$330	$82
  Examination Fee	$220	$110
  Claims in excess of 20	$52 (per excess claim)	$26 (per excess claim)
  Independent claims in excess of 3	$50	$25
  Surcharge – Late provisional filing fee or cover sheet	$52 (per excess claim)	$26 (per excess claim)
  Surcharge – Late filing fee, search fee, examination fee or oath or declaration	$130	$65

  Issuance Fees: When a patent application has been allowed, the applicant is required to pay a fee known as the “issuance fee” for the patent grant. Failure to pay the issuance fee within three (3) months from the date of receipt of the notice of allowance will result in the patent being abandoned.

  Issuance Fee	Large Entity	Small Entity
  Utility Patent Issuance Fee	$1510	$755
  Publication fee for early, voluntary, or normal publication	$300

  Maintenance Fees: Maintenance fees are due over the term of the patent at prescribed times.

  Maintenance Fee	Large Entity	Small Entity
  Due at 3.5 years	$980	$490
  Due at 7.5 years	$2480	$1240
  Due at 11.5 years	$4110	$2055
  Surcharge – 3.5 year – Late payment within 6 months	$130	$65
  Surcharge – 7.5 year – Late payment within 6 months	$130	$65
  Surcharge – 11.5 year – Late payment within 6 months	$130	$65
  Surcharge after expiration – Late payment is unavoidable	$700
  Surcharge after expiration – Late payment is unintentional	$1640

  Miscellaneous Fees

  Miscellaneous Fee	Large Entity	Small Entity
  Request for continued examination (RCE) (see 37 CFR 1.114)	$810	$405
  Submission of an Information Disclosure Statement	$180
  Filing a submission after final rejection (see 37 CFR 1.129(a))	$810	$405
  Extension for response within first month	$130.00	$65.00
  Extension for response within second month	$490.00	$245.00
  Extension for response within third month	$1,110.00	$555.00
  Extension for response within fourth month	$1,730.00	$865.00
  Extension for response within fifth month	$2,350.00	$1,175.00
  Petition to revive unavoidably abandoned application	$540.00
  Petition to revive unintentionally abandoned application	$1,620.00
  Acceptance of an unintentionally delayed claim for priority, or for filling a request for the restoration of the right of priority	$1,410.00
  Extension of term of patent	$1,120.00

  Design Patents

  Filing Fee	Large Entity	Small Entity
  Basic filing fee	$220.00	$110
  Design Search Fee	$100.00	$50.00
  Design Examination Fee	$140.00	$70.00
  Additional 50 sheets that exceeds 100 sheets	$270.00	$135.00

  Issuance Fee	Large Entity	Small Entity
  Design issue fee	$860.00	$430.00
  Publication fee for early, voluntary, or normal publication	$300

  Maintenance Fee	Large Entity	Small Entity
  Due at 3.5 years	$980	$490
  Due at 7.5 years	$2480	$1240
  Due at 11.5 years	$4110	$2055
  Surcharge – 3.5 year – Late payment within 6 months	$130	$65
  Surcharge – 7.5 year – Late payment within 6 months	$130	$65
  Surcharge – 11.5 year – Late payment within 6 months	$130	$65
  Surcharge after expiration – Late payment is unavoidable	$700
  Surcharge after expiration – Late payment is unintentional	$1640