Patent Applications

Patent applications are not fill-in-the-blank forms.  Instead, patent applications are in a narrative form.  Depending on the type of application, it may take a few hours or few days or longer to prepare the patent application.

A design patent application (see Design Patent Applications page) is directed towards the ornamental appearance of an invention, which is primarily based on the drawings, barring any disclaimers (i.e., what you see is what you get). 

The specification of a design patent application principally has a title, a preamble, a description of the drawing figures and a single claim.  Even though some thought has to be given to how the design is presented, it typically takes only a few hours to prepare the specification and order drawings.  If the inventor provides a drawing file (e.g., Solidworks eDrawing, DWG, or vector PDF file) that the patent illustrator can use to produce the design patent application drawings, the drawing costs can be minimized.  The filing fee to the USPTO (see USPTO Fee Schedule) is about one-half that of a utility patent application.  Hence, the cost for preparing and filing a design patent application is relatively low. 

A utility patent application (see Utility Patent Applications page) is generally directed towards a product (i.e., an apparatus) or a process.  It may be in the form of a provisional patent application (see Provisional Patent Applications page) and a non-provisional patent application (see Non-Provisional Patent Applications page). 

A provisional patent application does not have some of the formal requirements of a non-provisional patent application.  While it has to be enabling (i.e., including sufficient information to allow the reader to make and use the invention), the specification simply requires a description of the invention.  Although no claims are required, care should be taken to ensure that the specification adequately supports future claims drawn towards the invention.  The provisional patent application may be filed with informal drawings (e.g., hand sketches), although the drawings should clearly provide an understanding of the subject matter sought to be patented.  Additionally, the filing fee to the USPTO is relatively low (see USPTO Fee Schedule).

A non-provisional patent application has a relatively lengthy specification, including a title, a background of the invention (including a field of the invention and a description of the prior art), a summary of the invention, a description of the drawings, a detailed description of the invention, a set of claims, and an abstract of the disclosure. 

Unlike a design patent application, which has a single claim, a non-provisional patent application has a claim set.  A claim strategy may include a hierarchy of claims (i.e., broad, intermediate, and narrow scope claims), sub-combination and combination claims to an apparatus, and method claims.  The claims may also be directed toward multiple inventions.  As a consequence, a great deal of time may be required to draft claims.

All the claims have to be supported by the specification and drawings, which include reference numerals that are called out in the detailed description of the invention.  Depending on the complexity of the invention, the specification may include a few pages or a great number of pages.  Likewise, the utility patent application could require a few drawings or a relatively large number of complex drawings.  As a consequence, it could take a few days or longer to prepare.

The basic filing fee to the USPTO for a non-provisional patent application is about twice that of a design patent application.  It entitles the applicant to three independent claims and a total of twenty claims.  Additional claims may be filed with the payment of excess claims fees  (see USPTO Fee Schedule).  As a consequence, the cost for preparing and filing a non-provisional patent application is relatively high.

Other non-provisional patent applications include a divisional patent application, a continuation patent application, and a continuation-in-part patent application.  These applications all require continuity or co-pendency with an earlier filed patent application (i.e., they have to be filed before the earlier filed application is abandoned or matures into a patent). 

A divisional patent application includes the same text in the written description (i.e., no new matter) as in an earlier filed patent application and is used to pursue claims for a non-elected invention following a restriction requirement in an earlier filed patent application.  In a restriction requirement, the Examiner groups claims in groups of one or more inventions and requires the applicant to choose or elect claims directed towards one invention for which the applicant wishes to obtain patent protection.  The non-elected claims may be pursued in a divisional patent application. 

A continuation patent application includes the same text in the written description as in an earlier filed patent application and typically includes claims different from those in an earlier filed patent application.  For example, the claims may use different claim language to claim the same invention that was claimed in the earlier filed patent application in a different way.  Alternatively, the claims may claim a different invention, which was disclosed but not claimed in an earlier filed patent application.  Or, the claims may simply differ in scope to advance the application towards allowance in light of rejections in an earlier filed patent application.  In a continuation patent application, the different claims have to be supported by the earlier filed patent application (i.e., no new matter).

The divisional and continuation patent applications receive the benefit of the filing date (i.e., the effective filing date) of the earlier filed patent application.

A continuation-in-part patent application typically includes the original text in the written description in an earlier filed patent application and additional text (i.e., new matter), which often refers to an improvement in the invention in the earlier filed patent application.  The claims are directed towards the improved invention. 

In a continuation-in-part patent application, the original text receives the benefit of the filing date (i.e., the effective filing date) of the earlier filed patent application and the additional text receives as its filing date the later filing date of the continuation-in-part patent application.

In addition to the aforementioned applications, a post grant application includes a reissue application.

A reissue application may be filed to correct an error that is present in a patent without any deceptive intention (i.e., to correct an error in the specification or drawing).  See MPEP § 1401.

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