Non-Provisional Patent Applications

A non-provisional patent application has many formal requirements.  If these requirements are not met, the application may not receive a filing date, which could result in a loss of patent rights. 

Filing Requirements

A non-provisional patent application includes a written document, which includes a specification (i.e., a written description and one or more claims); drawings (when necessary to understand the invention); an oath or declaration; and fees (i.e., a basic filing fee, a search fee and an examination fee).   See Sample Non-Provisional Patent Application.

Contents of the Specification

The specification typically includes the following sections in the order presented:

title of the invention,

cross-reference to related applications,

statement regarding federally sponsored research or development,

background of the invention,

summary of the invention,

description of the drawings,

detailed description of the invention,

claims, and

abstract of the disclosure.

Title

The title of the invention should be short and specific, and must be 500 characters or less.  The title should be directed toward the invention being claimed.  It may be directed toward a product, a process or both.  It may also be directed toward a product by process.  It may further be directed toward a sub-combination and/or a combination

An example of a title directed toward a product may be “Granular Material for use on Roofing Shingles.” This is also a good example of a title directed toward a sub-combination.

An example of a title directed toward a process may be “Method for forming Granular Material for use on Roofing Shingles.”

A title directed toward a product and a process may read as “Granular Material for use on Roofing Shingles and Method for forming the same.”

A title directed toward a combination may read as “Roofing Shingle.”  The combination may be the granular material with other components resulting in a complete roofing shingle.

A title directed toward a sub-combination and combination may read as “Granular Material for use on Roofing Shingles and Roofing Shingle therewith.”

These are examples of titles for simple mechanical inventions.  Similarly structured titles may be used for other fields of invention. 

Cross-Reference to Related Applications

The cross-reference to related applications refers to one or more related and earlier filed applications.  The cross-reference has to identify the earlier filed application by application number, filing date and relationship.  An example of a proper cross-reference is “This is a divisional (or continuation, or continuation-in-part, as appropriate) application of Application No. ---, filed ---.” For more information about the cross-reference to related applications, see MPEP § 201.11.

It should be noted that the cross-reference is important for claiming priority to the earlier filed patent application.  However, priority to the earlier filed foreign patent application cannot be claimed through the cross-reference to related applications.  Such a claim must be made in an oath or declaration.  See MPEP § 201.13.

In either instance, whether a claim for priority is made to a US or foreign patent application, the claim may be made via an Application Data Sheet in lieu of a cross-reference or oath or declaration.  See 37 CFR 1.76 and Application Data Sheet.

As a related matter, a non-provisional patent application must make a claim for priority at the time it is filed, or during the pendency of the non-provisional patent application, and within four months of the non-provisional patent application filing date or within 16 months of the filing date of the earlier filed patent application, whichever is later.  See 37 CFR 1.78.

Background of the Invention

The background of the invention includes a field of the invention and a description of the related art

The field of the invention is useful in aiding the USPTO to readily identify the subject matter of the application, to allow the application to be assigned to an appropriate art unit, also referred to as examining group or technical center.  It may also be useful by the patent applicant for directing the application to a desired appropriate art unit, away from non-analogous or unrelated art (i.e., an unrelated technology).  For example, a field of the invention directed toward “land vehicles, and more particularly to wheelchairs” may direct that application to Group Art Unit 3611, and away from a less relevant art unit that also examines land vehicles (e.g., automobiles), the latter of which could result in a less sympathetic treatment of the claimed invention by an Examiner unfamiliar with the environment of the invention.

The US Classification is useful in formulating the field of the invention.  See also Classes Arranged by Art Unit and Patent Technology Centers.

Description of the Related Art

The description of the related art is a description of existing technology (i.e., prior art) and problems with the technology that are solved by the invention.  This is referred to as the problem-solution approach.  In recent years, the description of the related art has become a source for identifying unfavorable admissions by the applicant.  It has become a source for Examiners and alleged infringers to challenge the scope and validity of the patent claims. 

The applicant need not make any unfavorable admissions in the description of the related art.  The applicant’s obligation regarding any duty of disclosure is simply to supply the USPTO with any relevant information, usually in the form of prior art patents or published patent applications, of which the applicant is aware.  The applicant is not required to and should not comment on the relevance of the information.  Such comments may be used as unfavorable admissions. 

The written description of the related art should not become the source of potentially legally damaging admissions. 

Drawings of existing technology (i.e., prior art drawings) often referenced in the description of the related art may also be a source of the applicant's admissions.  For example, in a description of the related art, an applicant describes a solenoid valve with a coil assembly with reference to a prior art drawing.  In the detailed description of the invention, the applicant refers to the same drawing, modified to show an improved coil assembly (i.e., the invention).  For example, compare Figs. 1 and 8 in US 6,362,717

Armed with the prior art drawing, the patent Examiner only needs to search in the prior art for a coil assembly, which can be combined with the applicant’s prior art drawing in a rejection of the claims (i.e., claims directed toward a solenoid valve with the improved coil assembly).  The Examiner does not need to look for the technology shown in the prior art drawing, since the applicant has obligingly supplied that for him. 

The applicant should keep any description of the related art brief.  Care should be used to make only very generalized statements about the prior art.  There should be no discussion of any particular prior art patent or published patent application.  Reference to any particular prior art should be reserved to citations of the prior art in a separately filed Information Disclosure Statement (see MPEP § 609).

The summary of the invention typically paraphrases the broadest independent claim or claims in the patent application.  Reciting objectives and advantages was once typical of the summary but today, touting objectives and advantages may adversely affect the scope of the claims.  Hence, the summary of the invention should be brief and limited to a broad recitation of the invention or inventions.

The detailed description is one of the most important parts of the patent application.  It has to provide an enabling disclosure.  That is to say, it has to enable people skilled in the art to make and use the invention.  Additionally, it must describe the best mode contemplated by the inventor of carrying out his or her invention.  The best mode does not require the description of production details.  However, the requirement does not permit inventors to disclose only what the inventors know to be an inferior embodiment of the invention, while retaining or concealing the best embodiment for themselves. 

As an exemplary best mode scenario, an applicant conceives of a seal assembly and seal guard for a universal joint.  The applicant discovers that a seal, which forms a part of the invention, produced from a self-lubricating plastic provides superior benefits over other materials.  In this case, the use of a self-lubricating plastic is more than a mere production detail.  It is the best mode for carrying out the invention.  As such, it must be described in the detailed description of the invention.

Claims

The claims commence on a separate sheet, following the detailed description.  Each claim has to take the form of a single sentence, beginning with a capital letter and ending with a period.  Each element or step of a claim may be separated by a line indentation.  For the form of claims, see MPEP § 608.01(m).

Each claim includes a preamble, a transition, and a body

The preamble introduces the invention by name and often recites an intended use (e.g., “A caster assembly for agricultural equipment” or “A method for customizing a menu structure.”). By convention, the preamble provided a general description of the elements or steps of the claimed invention that were known.  However, this is no longer customary in the United States, although such a description is required in most foreign countries.

The transition appears at the end of the preamble.  It is the term or phrase that forms a connection between the preamble and the body (e.g.,“the assembly comprising” or “the method comprising the steps of.”). The transition is typically punctuated with a colon, and it is set apart from the body, which follows. 

Care must be taken in choosing the transition, as it has particular legal import.  For example, the term “comprising” is an open-ended term, which allows the invention to include features other than those recited in the claim.  Synonymous with the term “comprising” are the terms “including,” “containing,” and the phrase “characterized by.” These are all open-ended terms that do not exclude additional, unrecited elements or method steps from the claimed invention.

The phrase “consisting essentially of” is a transition that limits the scope of a claim to the specified element or steps of the claim and those that do not materially affect the basic and novel characteristics of the claimed invention.

The phrase “consisting of” is closed ended, meaning that it excludes any element or step not recited in the claim.  That is to say, the scope of the claim is limited to the elements or steps recited in the claim, and no others

The body includes elements or steps of the claimed invention.  Most countries outside the United States limit the recitation of elements and steps in the body of the claim to those that are considered new or novel.  However, this is often not a practice observed in the United States.

Each element or step of a claim may, and often is, recited separately and indented.  Steps are typically indented, preceded by alphabetic characters, and begin with the gerund form of a verb. 

An example of a format for an apparatus claim may appear as follows:      

A widget for … , the widget comprising:      

a flutenator having … , and            

a fluctuator operatively connected to the flutenator, the fluctuator including …

Compare this to the following example of a format for a method claim:      

A method for … , the method comprising the steps of:      

a) combining … ,      

b) mixing … , and      

c) baking …

The meaning of every term used in any claim should be clearly supported or understood by reading the detailed description of the specification.  Every term used in the claims should be identified in the detailed description by reference to the drawings, using reference numerals designating the part or parts to which the term refers.  This is particularly important in apparatus claims (i.e., claims toward mechanical and electrical inventions).

Generally speaking, there are two types of claims: independent claims and dependent claims.  Independent claims do not depend from or refer to any other claim.  Dependent claims depend from other claims, and may depend from an independent claim or another dependent claim.  For more information about dependent claims, see MPEP § 608.01(n)

All dependent claims should be grouped together with the claim or claims from which they depend.  For grouping or numbering claims, see MPEP § 608.01(j).

A group of apparatus claims may appear as follows:      

1. A widget for … , the widget comprising:      

a flutenator having … , and            

a fluctuator operatively connected to the flutenator, the fluctuator including …      

2. The widget according to claim 1, wherein …      

3. The widget according to claim 1, further comprising …

The basic filing fee for a non-provisional patent application entitles the applicant to a total of twenty claims, and three independent claims.  The application may include additional independent claims and claims in excess of twenty for additional fees.  For excess claims fees, see MPEP § 714.10.

Abstract of the Disclosure

The specification concludes with an abstract, which is a brief narrative in the form of a single paragraph having 150 words or less.  It must be presented on a separate sheet following the claims.  It typically paraphrases the summary of the invention.  However, the abstract should be a brief narrative of the disclosure in the patent application. 

Drawings

The applicant must provide drawings that are necessary for understanding the invention.  Each drawing should refer to a figure reference (i.e., “Fig. 1,”“Fig. 2A,” etc.) and include reference numerals with lead lines pointing to features (i.e., component parts or method steps) in the drawings.  The detailed description of the patent application should call out the reference numerals when referring to features of the invention so that the reader can clearly identify and understand the features of the invention being claimed.  All reference numerals appearing in the drawings should be explained by or used in the detailed description, with reference to the same component, element or feature shown in the drawings.

Although black and white line drawings are normally required, color drawings, though rarely filed, may be filed for an additional fee.  The USPTO will also accept photographs if the photographs are the only practicable means for portraying the invention. 

For more information about drawings, see MPEP § 608.02.

Declaration

In the declaration, the declarant (i.e., the inventors) has to declare each inventor’s residence, mailing address, and citizenship and identify the inventors as the original and first inventors of the subject matter which is claimed.  The declarant has to acknowledge the duty to disclose any information that is material to patentability and make reference to any priority claims to foreign patent applications (unless filing an Application Data Sheet).

To view a sample declaration, see Sample Declaration.  The USPTO provides a declaration in the form of a fillable form PDF, referred to as a PTO/SB/01.  For additional forms, see Current PTO Forms.

For more information about declarations, see MPEP § 602.

Fees

The fees for filing a non-provisional patent application include filing, search and examination fees.  As of the date of this publication, these fees total $1,250 USD.  An additional $400 USD fee is required for all non-provisional patent applications that are not electronically filed via EFS-Web

Extra fees will be assessed for excess claims and excess application pages. If the applicant is a small entity, the applicant is entitled to pay a reduced statutory fee (i.e., the filing fee is reduced by 50%).  Hence, the total filing fees for a small entity is $625 USD.  By filing electronically via EFS-Web, the applicant will experience a savings of $200 USD compared to the filing fee for a small entity applicant who files an application in paper.  That is to say, an additional $200 USD fee will be required for all small entity non-provisional patent applications that are not electronically filed via EFS-Web.

The applicant must determine that a small entity status is appropriate before making an assertion of entitlement to small entity status and paying a small entity fee. 

Fees ordinarily change each October.  The fee schedule is posted on the USPTO Web site (see USPTO Fee Schedule). 

Cost

Generally speaking, a non-provisional patent application is the most costly form of application.  The cost of a non-provisional patent application widely varies, depending on the practitioner (i.e., the attorney), the quality of the application, the complexity of the invention, the volume of services provided and more.  The cost of a non-provisional patent application directed toward a simple or non-complex mechanical application (i.e., up to ten pages with less than four drawing sheets) typically starts at about $4,500 USD and averages about $7,500 USD, excluding drawing costs and the filing fee

If you have a question about non-provisional patent applications, askme at thedford@askmeip.com