DRAFT

Patent Rights Training Course

I. Nature of a Patent and Patent Rights
A. A patent is a personal property grant that the Government gives an
inventor. The grant confers the right to exclude others from maing!
using! offering for sale! or selling the invention throughout the ".#.!
provided that maintenance fees are paid! for a term generally of $% years
from the earliest date the application &as filed &ith the ".#. Patent and
Trademar 'ffice (PT').
*. Three Types of Patents
a. "tility Patents+ are granted to inventors &ho discover or
invent any ne& and useful process! machine! article of
manufacture or compositions of matter! or any ne&
improvement to such inventions. ,-amples include .elcro
hoos and loop fasteners! semiconductor manufacturing
processes! ne& drugs. Pressman, David, Patent It Yourself,
9
th
Edition, Nolo Press, Berkeley, CA, 2002
/. Design Patents 0 are granted to anyone &ho invents a ne&!
original and ornamental design (including a computer
screen). "ni1ueness must /e purely ornamental. If
functional! the inventor must apply for a utility patent. iid
c. Plant Patent 0 granted to ase-ually reproduced plants /ut
/oth se-ually and ase-ually reproduci/le plants can /e
covered /y utility patents.
$. Re1uirements for Patenta/ility
a. An invention must /e new (novel and uno/vious). That is!
the invention is patenta/le only if (i) the invention &as
neither no&n nor used /y others in the ".#.! nor patented or
descri/ed in a printed pu/lication /efore the applicant2s
invention3 'R (ii) the invention &as patented or descri/ed in
a printed pu/lication in the ".#. or a foreign country or in
pu/lic use or on sale in the ".#. less than one year prior to
the application for patent.
/. If the invention is pu/licly disclosed (not disclosed pursuant
to a non+disclosure agreement (NDA) or put on sale! the
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inventor has one year from the pu/lic disclosure date to file
for a patent.
c. Foreign patent filing la&s are more stringent than ".#. patent
filing la&s. Filing must /e on or /efore the date of pu/lic
disclosure or pu/lic use. AN7 type of disclosure not
covered /y an NDA (&hether /y &ord of mouth!
demonstration! advertisement or article in a 8ournal)! /y the
inventor or anyone acting for him5her can prevent the
inventor+applicant from getting a patent.
d. AN IN.,NT'R 9"#T N'T DI#C:'#, T;,
IN.,NTI'N T' AN7 P,R#'N <IT;'"T '4TAINING
FR'9 T;AT P,R#'N A PR'P,R:7 #IGN,D N'N+
DI#C:'#"R, AGR,,9,NT.
II. ;o& to Patent and <hat to Consider <hen Thining A/out Patenting
A. Documenting Conception of the Invention
*. An inventor should not start to develop! /uild and test or disclose
an invention /efore he5she has documented and dated the
development process. The document (either note/oo or other
disclosure document) must record the chronological order of the
development and should /e signed /y at least t&o trust&orthy
people &ho have &itnessed and understood the invention. IN
PAT,NT :A<! DAT,# AR, D,CI#I.,. IT I# ,##,NTIA:
T;AT AN IN.,NT'R #IGN AND DAT, ,AC; #T,P 'F T;,
PR'C,## AND =,,P R,C'RD# 'F A:: FI:ING DAT,#.
F"RT;,R! PR'.ID,D T;AT T;,R, AR, T;, PR'P,R
NDAs IN P:AC,! A <ITN,##,D! DAT,D AND #IGN,D
R,C'RD 'F T;, IN.,NTI'N <I:: N'T C'NF:ICT <IT;
TRAD, #,CR,T PR'T,CTI'N 4"T <I:: 4':#T,R
'<N,R#;IP C:AI9# IN T;, ,.,NT 'F A T;,FT 'F
TRAD, #,CR,T#.
a. David Pressman in Patent It Yourself says that there are si-
reasons &hy it is legally important to promptly and properly
record the conception and development of the invention.
i. In case of a third party legal challenge in the PT'
revie& process on the grounds that either the
applicant is not the inventor or that a third party
simultaneously and independently came up &ith the
invention or that there is prior art. A dated! signed
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and &itnessed invention description can /e proof
against interference.
ii. Proof in case of theft.
iii. Proof in case of confusion of invention.
iv. Antedate References+ The PT' &ill re8ect a patent
application &here there is prior art that can
demonstrate that the invention is not original.
#igned! dated and &itnessed records can challenge
claims of prior art.
v. Proof to support costs for ta- or other purposes.
vi. To avoid o&nership disputes.
4. T&o Types of Procedural Filings> Regular and Provisional
*. Inventor2s ?uery> /uild and test first and then file a full (regular)
patent application or file a provisional patent application@
$. ,ach inventor must mae a strategic decision as to &hether he5she
should /uild and test his5her invention! develop the patenta/le
claims and file a patent application 'R file a provisional patent
application /efore /uilding and testing the invention. A
provisional application is N'T a patent application /ut a short
version of a patent application &ith a fi-ed t&elve+month term that
can /e used to esta/lish an early filing date for a su/se1uent patent
application.
A. In order for an invention to /e patenta/le! it must /e ne& as
defined in the patent la&. To reiterate! ".#. patent la& provides
that an invention cannot /e patented if> !"a# the invention $as
kno$n or used y others in this %ountry, or &atented or des%ried
in a &rinted &uli%ation in this or a forei'n %ountry, efore the
invention thereof y the a&&li%ant for &atent,( or !"# the
invention $as &atented or des%ried in a &rinted &uli%ation in
this or a forei'n %ountry or in &uli% use or on sale in this %ountry
more than one year &rior to the a&&li%ation for &atent in the
)nited *tates + + +(
!,In determinin' &riority of invention,there shall e %onsidered
not only the res&e%tive dates of %on%e&tion and redu%tion to
&ra%ti%e of the invention, ut also the reasonale dili'en%e of one
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$ho $as first to %on%eive and last to redu%e to &ra%ti%e, from a
time &rior to %on%e&tion y the other+( -. )+*+C+ /02"'#"/#+
A. #ee Attachment 4 for Interference Actions and Priority Time
Charts.
C. Re1uirements for a Patent Application (a regular and not provisional
patent application)
*. Four statutory re1uirements>
a. #tatutory classes>
(i) process
(ii) machine
(iii) article of manufacture
(iv) composition or
(v) a Bne& useC of one of the a/ove
/. "tility
c. Novelty
d. Non+o/viousness
$. There must /e specifications and the specifications must have a
claim (or claims) particularly pointing out and distinguishing the
su/8ect matter of the invention.
a. THE WRITTEN CLAIMS ARE CRITICAL to EVERY
patent application. They define the scope of the protection
afforded /y the patent. Narro& claims &ill afford the
inventor limited! narro& protection around &hich third
parties may /e a/le to develop non+infringing products.
'ver/road claims ris challenge in the PT' revie& /y third
parties of prior art or o/viousness and may result in
re8ection of the application.
/. Claims may /e presented in independent form or in
dependent form! referring /ac to and further limiting
another claim or claims in the same application. Any
dependent claim! &hich refers /ac to more than one other
claim! is considered a Bmultiple dependent claim.C
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A. Dra&ings are generally re1uired for non+provisional patent
applications.
6. Filing fee
.+ 0he filin' date of an a&&li%ation for &atent is the date on $hi%h a
s&e%ifi%ation "in%ludin' at least one %laim# and any dra$in's
ne%essary to understand the su1e%t matter sou'ht to e &atented
are re%eived in the )*P023 or the date on $hi%h the last &art
%om&letin' the a&&li%ation is re%eived in the %ase of a &reviously
in%om&lete or defe%tive a&&li%ation+
D. 'ath+ An applicant must s&ear an oath or declaration as to the
inventors and must disclose any information that could affect the
e-amination or validity of the application. The applicant must
disclose all relevant prior art! any disadvantages of the invention
and any other information the e-aminer might &ant to no&.
Failure to disclose all relevant information or to /e truthful &ill
liely result in the patent /eing found invalid.
D. Provisional Application for a Patent
*. #ince *EEF! the PT' has offered inventors the option of filing a
provisional application for patent /efore filing a full patent
application.
$. Provisional application allo&s filing &ithout a formal patent claim!
oath or declaration! or any information disclosure statement of
prior art. It provides the means to esta/lish an early effective filing
date in a non+provisional patent application.
A. Features
a. Provides simplified filing &ith a lo&er initial investment
&ith one full year to assess the invention2s commercial
potential /efore committing to the higher cost of filing and
prosecuting a non+provisional application for patent.
/. ,sta/lishes an official "nited #tates patent application
filing date for the invention.
c. Permits one year2s authoriGation to use HPatent PendingH
notice in connection &ith the invention.
d. 4egins the Paris Convention priority year.
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e. ,na/les immediate commercial promotion of the invention
&ith greater security against having the invention stolen.
e. Preserves application in confidence &ithout pu/lication.
f. Permits applicant to o/tain "#PT' certified copies.
g. Allo&s for the filing of multiple provisional applications
for patent and for consolidating them in a single non+
provisional application for patent.
h. Provides for su/mission of additional inventor names /y
petition if omission occurred &ithout deceptive intent
(deletions are also possi/le /y petition).
6. <arnings and Cautions a/out Filing a Provisional Patent
Application (/efore filing the regular patent application)
a. The provisional application is N'T e-amined on its merits.
/. The provisional application &ill /ecome a/andoned
(terminated) *$ months from its filing date unless it is
converted to a non+provisional patent application. That is!
the inventor must /e a/le to reduce the invention to practice
and verify its claims &ithin the t&elve+month term of the
provisional patent application.
c. An applicant &hose invention is Hin useH or Hon saleH in the
".#. during the one+year provisional+application pendency
period may lose more than the /enefit of the provisional
application filing date if the one+year provisional+
application pendency period e-pires /efore a corresponding
non+provisional application is filed. #uch an applicant may
also lose the right to ever patent the invention.
d. A claim for the /enefit of a prior provisional application
must /e filed during the pendency of the non+provisional
application! and &ithin four months of the non+provisional
application filing date or &ithin si-teen months of the
provisional application filing date (&hichever is later).
,. Pu/lication of Patent Applications
*. The PT' is re1uired to pu/lish patent applications for most plant
and utility patent applications. An applicant may re1uest that the
application not /e pu/lished! ut only if the invention has not een
and $ill not e the su1e%t of an a&&li%ation filed in a forei'n
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%ountry that re4uires &uli%ation /5 months after filin' "or earlier
%laimed &riority date# or under the Patent Cooperation Treaty.
$. Pu/lication occurs after e-piration of an *I+month period
follo&ing the earliest effective filing date or priority date claimed
/y an application. Follo&ing pu/lication! the 'ffice no longer
holds the application for patent in confidence and any mem/er of
the pu/lic may re1uest access to the entire file history of the
application.
III PT' Revie& Process (as descri/ed /y the PT')
A. Filing and Initial ,-amination. The e-amination of the application
consists of a study of the application for compliance &ith the legal
re1uirements and a search through ".#. patents! pu/lications of patent
applications! foreign patent documents! and availa/le literature! to see if
the claimed invention is ne&! useful and nono/vious and if the application
meets the re1uirements of the patent statute and rules of practice. The
e-aminer in the light of the study and the result of the search reaches a
decision.
4. 'ffice Action The PT' notifies the applicant in &riting of its action. If
the PT' re8ects the application! the 'ffice Action &ill state the reasons for
an adverse action or re1uirement and the PT' &ill give Binformation or
references J as may /e useful in aiding the applicant to 8udge the
propriety of continuing the prosecution of his5her application.C
C. Amendments to Application The applicant may amend his5her
application /efore or after the first e-amination and 'ffice Action in
accordance &ith the PT' rules. After final re8ection or action!
amendments may /e made canceling claims or complying &ith any
re1uirement of form that has /een made in an 'ffice Action.
Per the PT'! BThe specifications! claims! and dra&ing must /e amended
and revised &hen re1uired! to correct inaccuracies of description and
definition or unnecessary &ords! and to provide su/stantial
correspondence /et&een the claims! the description! and the dra&ing. All
amendments of the dra&ings or specifications! and all additions thereto
must not include ne& matter /eyond the original disclosure. 9atter not
found in either! involving a departure from or an addition to the original
disclosure! cannot /e added to the application even though supported /y a
supplemental oath or declaration! and can /e sho&n or claimed only in a
separate applicationC. a separate page! a mared+up version entitled
[Link] &ith marings to sho& changes madeJThe original num/ering
of the claims must /e preserved throughout the prosecution. <hen claims
are canceled! the remaining claims must not /e renum/ered. <hen claims
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are added /y amendment or su/stituted for canceled claims! they must /e
num/ered /y the applicant consecutively /eginning &ith the num/er ne-t
follo&ing the highest num/ered claim previously presented.C
D. Time for Reply and A/andonment. The ma-imum period for the
applicant2s reply is si- months /ut the PT' may shorten the time for reply
to not less than A% days. The usual period for reply to an 'ffice action is
three months. ,-tensions of time are generally not availa/le after an
application has /een allo&ed. If no reply is received &ithin the time
period! the application is considered La/andoned and no longer pending2.
;o&ever! if it can /e sho&n that the failure to prosecute &as unavoida/le
or unintentional! the PT' may revive the application.
,. Appeal to the 4oard of Patent Appeals and Interferences and to the Courts
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Attachment A
From the PTO Website on Patentability
Novelty and uno/viousness are re1uirements of Patent :a&. Any difference may suffice.
9ust /e uno/vious as compared &ith prior art.
Patent cannot /e o/tained for an idea or suggestion. A complete description of the
invention is re1uired. For utility patents the application must detail ho& to mae and use
the invention along &ith claims that define the invention
In order for an invention to /e patenta/le it must /e ne& as defined in the patent la&!
&hich provides that an invention cannot /e patented if> B(a) the invention &as no&n or
used /y others in this country! or patented or descri/ed in a printed pu/lication in this or a
foreign country! /efore the invention thereof /y the applicant for patent!C or B(/) the
invention &as patented or descri/ed in a printed pu/lication in this or a foreign country or
in pu/lic use or on sale in this country more than one year prior to the application for
patent in the "nited #tates . . .C
If the invention has /een descri/ed in a printed pu/lication any&here in the &orld! or if it
has /een in pu/lic use or on sale in this country /efore the date that the applicant made
his5her invention! a patent cannot /e o/tained. If the invention has /een descri/ed in a
printed pu/lication any&here! or has /een in pu/lic use or on sale in this country more
than one year /efore the date on &hich an application for patent is filed in this country! a
patent cannot /e o/tained. In this connection it is immaterial &hen the invention &as
made! or &hether the printed pu/lication or pu/lic use &as /y the inventor
himself5herself or /y someone else. If the inventor descri/es the invention in a printed
pu/lication or uses the invention pu/licly! or places it on sale! he5she must apply for a
patent /efore one year has gone /y! other&ise any right to a patent &ill /e lost. The
inventor must file on the date of pu/lic use or disclosure! ho&ever! in order to preserve
patent rights in many foreign countries.
,ven if the su/8ect matter sought to /e patented is not e-actly sho&n /y the prior art! and
involves one or more differences over the most nearly similar thing already no&n! a
patent may still /e refused if the differences &ould /e o/vious. The su/8ect matter sought
to /e patented must /e sufficiently different from &hat has /een used or descri/ed /efore
that it may /e said to /e nono/vious to a person having ordinary sill in the area of
technology related to the invention. For e-ample! the su/stitution of one color for
another! or changes in siGe! are ordinarily not patenta/le.
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Attachment B
INTERFERENCE ACTIONS AND THE PRIORITY OF
INENTIONS
An interference is an inter &artes proceeding directed at determining the
first to invent as among the parties to the proceeding! involving t&o or
more pending applications naming different inventors or one or more
pending applications and one or more une-pired patents naming different
inventors. The "nited #tates is unusual in having a first to invent rather
than a first to file system first of many to reduce an invention to practice
around the same time &ill /e the sole party to o/tain a patent unless
another &as the first to conceive and couple a later+in+time reduction to
practice &ith diligence from a time 8ust prior to &hen the second conceiver
entered the field to the first conceiverMs reduction to practice. #ee the
priority time charts /elo& illustrating this point. "pon conclusion of
interference! su/8ect matter claimed /y the losing party that &as the /asis
of the interference is re8ected under the Patent la&s unless the acts
sho&ing prior invention &ere not in this country.
It is noted that the la& re1uires that &hoever invents or discovers is the
party &ho may o/tain a patent for the particular invention or discovery
(applicant5applicants) set forth the re1uirement that the actual inventor(s)
/e the party &ho applies for a patent or that a patent /e applied for on
/ehalf of the inventor. <here it can /e sho&n that an applicant has
HderivedH an invention from another! a re8ection under the la& is proper.
(Although derivation and priority of invention /oth focus on inventorship!
derivation addresses originality! i.e.! &ho invented the su/8ect matter!
&hereas priority focuses on &hich party invented the su/8ect matter first.).
PRIORITY TI!E CHARTS
The follo&ing PT' priority time charts illustrate the a&ard of invention
priority in several situations. The time charts apply to interference
proceedings and are also applica/le to declarations or affidavits filed &ith
the application. An applicant does not have to sho& that the invention
&as not a/andoned! suppressed! or concealed from the time of an actual
reduction to practice to a constructive reduction to practice /ecause the
length of time taen to file a patent application after an actual reduction to
practice is generally of no conse1uence e-cept in an interference
proceeding.
For purposes of analysis under the Regulations! the conception and
reduction to practice of the reference to /e antedated are /oth considered
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/eing on the effective filing date of domestic patent or foreign patent or
the date of printed pu/lication.
In the charts C ! conce"tion R ! reduction to "ractice #either actual or
constructi$e% Ra ! actual reduction to "ractice Rc ! constructi$e
reduction to "ractice and T&! co''ence'ent o( diligence
E"am#le $
A is a&arded priority in an interference! or antedates 4 as a reference in
the conte-t of a declaration or affidavit filed under the Regulations!
/ecause A conceived the invention /efore 4 and constructively reduced
the invention to practice /efore 4 reduced the invention to practice. The
same result &ould /e reached if the conception date &ere the same for
/oth inventors A and 4.
E"am#le %
A is a&arded priority in an interference! or antedates 4 as a reference in
the conte-t of a declaration or affidavit filed under the Regulations! if A
can sho& reasona/le diligence from TD (a point 8ust prior to 4Ms
conception) until Rc /ecause A conceived the invention /efore 4! and
diligently constructively reduced the invention to practice even though this
&as after 4 reduced the invention to practice.
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E"am#le &
A is a&arded priority in an interference in the a/sence of a/andonment!
suppression! or concealment from Ra to Rc! /ecause A conceived the
invention /efore 4! actually reduced the invention to practice /efore 4
reduced the invention to practice! and did not a/andon! suppress! or
conceal the invention after actually reducing the invention to practice and
/efore constructively reducing the invention to practice.
A antedates 4 as a reference in the conte-t of a declaration or affidavit
filed under the Regulations /ecause A conceived the invention /efore 4
and actually reduced the invention to practice /efore 4 reduced the
invention to practice.
E"am#le '
A is a&arded priority in an interference if A can sho& reasona/le diligence
from TD (a point 8ust prior to 4Ms conception) until Ra in the a/sence of
a/andonment! suppression! or concealment from Ra to Rc! /ecause A
conceived the invention /efore 4! diligently actually reduced the invention
to practice (after 4 reduced the invention to practice)! and did not
a/andon! suppress! or conceal the invention after actually reducing the
invention to practice and /efore constructively reducing the invention to
practice.
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A antedates 4 as a reference in the conte-t of a declaration or affidavit
filed under the Regulations /ecause A conceived the invention /efore 4!
and diligently actually reduced the invention to practice! even though this
&as after 4 reduced the invention to practice.
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Attachment C
Patentability6 &7 8,S,C, $2$9$2&
:$2$, In/entions #atentable
<hoever invents or discovers any ne& and useful process! machine! manufacture! or
composition of matter! or any ne& and useful improvement thereof! may o/tain a patent
therefore! su/8ect to the conditions and re1uirements of this title ;AF "#C NN* et se1.O.
N*%$. Conditions for patenta/ility3 novelty and loss of right to patent
A person shall /e entitled to a patent unless++
(a) the invention &as no&n or used /y others in this country! or patented or
descri/ed in a printed pu/lication in this or a foreign country! /efore the invention thereof
/y the applicant for patent! or
(/) the invention &as patented or descri/ed in a printed pu/lication in this or a
foreign country or in pu/lic use or on sale in this country! more than one year prior to the
date of the application for patent in the "nited #tates! or
(c) he has a/andoned the invention! or
(d) the invention &as first patented or caused to /e patented! or &as the su/8ect of an
inventorMs certificate! /y the applicant or his legal representatives or assigns in a foreign
country prior to the date of the application for patent in this country on an application for
patent or inventorMs certificate filed more than t&elve months /efore the filing of the
application in the "nited #tates! or
(e) the invention &as descri/ed in a patent granted on an application for patent /y
another filed in the "nited #tates /efore the invention thereof /y the applicant for patent!
or on an international application /y another &ho has fulfilled the re1uirements of
paragraphs (*)! ($)! and (6) of section AK* (c) of this title! /efore the invention thereof /y
the applicant for patent! or
(f) he did not himself invent the su/8ect matter sought to /e patented! or
(g)(*) during the course of an interference conducted under section *AF or section
$E*! another inventor involved therein esta/lishes! to the e-tent permitted in
section *%6! that /efore such personMs invention thereof the invention &as made
/y such other inventor and not a/andoned! suppressed! or concealed! or ($) /efore
such personMs invention thereof! the invention &as made in this country /y another
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inventor &ho had not a/andoned! suppressed! or concealed it. In determining
priority of invention under this su/section! there shall /e considered not only the
respective dates of conception and reduction to practice of the invention! /ut also
the reasona/le diligence of one &ho &as first to conceive and last to reduce to
practice! from a time prior to conception /y the other.
:$2&, Con1itions 0or #atentability< non9ob/io-s s-b=ect matter
(a) A patent may not /e o/tained though the invention is not identically disclosed or
descri/ed as set forth in section *%$ of this title! if the differences /et&een the su/8ect
matter sought to /e patented and the prior art are such that the su/8ect matter as a &hole
&ould have /een o/vious at the time the invention &as made to a person having ordinary
sill in the art to &hich said su/8ect matter pertains. Patenta/ility shall not /e negatived
/y the manner in &hich the invention &as made.
(/) (*) Not&ithstanding su/section (a)! and upon timely election /y the
applicant for patent to proceed under this su/section! a /iotechnological process
using or resulting in a composition of matter that is novel under section *%$ and
nono/vious under su/section (a) of this section shall /e considered nono/vious if
(A) claims to the process and the composition of matter are
contained in either the same application for patent or in
separate applications having the same effective filing date3
and
(4) the composition of matter! and the process at the time it
&as invented! &ere o&ned /y the same person or su/8ect to
an o/ligation of assignment to the same person.
($) A patent issued on a process under paragraph (*)++
(A) shall also contain the claims to the composition of
matter used in or made /y that process! or
(4) shall! if such composition of matter is claimed in
another patent! /e set to e-pire on the same date as such
other patent! not&ithstanding section *F6.
(A) For purposes of paragraph (*)! the term H/iotechnological processH
means+
(A) a process of genetically altering or other&ise inducing
a single+ or multi+celled organism to++
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(i) e-press an e-ogenous nucleotide
se1uence!
(ii) inhi/it! eliminate! augment! or alter
e-pression of an endogenous nucleotide
se1uence! or
(iii) e-press a specific physiological
characteristic not naturally associated &ith
said organism3
(4) cell fusion procedures yielding a cell line that e-presses
a specific protein! such as a monoclonal anti/ody3 and
(C) a method of using a product produced /y a process
defined /y su/paragraph (A) or (4)! or a com/ination of
su/paragraphs (A) and (4).
(c). #u/8ect matter developed /y another person! &hich 1ualifies as prior art only
under one or more of su/sections (e)! (f)! and (g) of section *%$ of this
title! shall not preclude patenta/ility under this section &here the su/8ect matter and the
claimed invention &ere! at the time the invention &as made! o&ned /y the same person
or su/8ect to an o/ligation of assignment to the same person.
&7 8,S,C, $$$ A##lication,
(a) IN G,N,RA:.+
(*) <RITT,N APP:ICATI'N.+An application for patent shall /e made!
or authoriGed to /e made! /y the inventor! e-cept as other&ise provided in this
title! in &riting to the Director.
($) C'NT,NT#.+#uch application shall include+
(A) a specification as prescri/ed /y section $$% of this title3
(4) a dra&ing as prescri/ed /y section **A of this title3 and
(C) an oath /y the applicant as prescri/ed /y section **F of this title.
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(A) F,, AND 'AT;.+The application must /e accompanied /y the fee
re1uired /y la&. The fee and oath may /e su/mitted after the specification
and any re1uired dra&ing are su/mitted! &ithin such period and under
such conditions! including the payment of a surcharge! as may /e
prescri/ed /y the Director.
(6) FAI:"R, T' #"49IT.+"pon failure to su/mit the fee and oath
&ithin such prescri/ed period! the application shall /e regarded as
a/andoned! unless it is sho&n to the satisfaction of the Director that the
delay in su/mitting the fee and oath &as unavoida/le or unintentional. The
filing date of an application shall /e the date on &hich the specification
and any re1uired dra&ing are received in the Patent and Trademar 'ffice.
(/) PR'.I#I'NA: APP:ICATI'N.+
(*) A"T;'RIPATI'N.+A provisional application for patent shall /e
made or authoriGed to /e made /y the inventor! e-cept as other&ise
provided in this title! in &riting to the Director. #uch application shall
include+
(A) a specification as prescri/ed /y the first paragraph of section **$ of
this title3 and
(4) a dra&ing as prescri/ed /y section **A of this title.
($) C:AI9.+A claim! as re1uired /y the second through fifth paragraphs
o0 section **$6 shall not /e re1uired in a provisional application.
(A) F,,.+
(A) The application must /e accompanied /y the fee re1uired /y la&.
(4) The fee may /e su/mitted after the specification and any re1uired
dra&ing are su/mitted! &ithin such period and under such conditions!
including the payment of a surcharge! as may /e prescri/ed /y the
Director.
(C) "pon failure to su/mit the fee &ithin such prescri/ed period! the
application shall /e regarded as a/andoned! unless it is sho&n to the
satisfaction of the Director that the delay in su/mitting the fee &as
unavoida/le or unintentional.
(6) FI:ING DAT,.+The filing date of a provisional application shall /e the
date on &hich the specification and any re1uired dra&ing are received in
the Patent and Trademar 'ffice.
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DRAFT
(F) A4AND'N9,NT.+Not&ithstanding the a/sence of a claim! upon
timely re1uest and as prescri/ed /y the Director! a provisional application
may /e treated as an application filed under su/section (a). #u/8ect to
section 119(e)(A) of this title! if no such re1uest is made! the provisional
application shall /e regarded as a/andoned *$ months after the filing date
of such application and shall not /e su/8ect to revival after such *$+month
period.
(D) 'T;,R 4A#I# F'R PR'.I#I'NA: APP:ICATI'N.+#u/8ect to all
the conditions in this su/section and section **E(e) of this title! and as
prescri/ed /y the Director! an application for patent filed under su/section
(a) may /e treated as a provisional application for patent.
(K) N' RIG;T 'F PRI'RIT7 'R 4,N,FIT 'F ,AR:I,#T FI:ING
DAT,.+A provisional application shall not /e entitled to the right of
priority of any other application under section **E or &>7(a5 of this title or
to the /enefit of an earlier filing date in the "nited #tates under section
$%2! *$*6 or ADF(c) of this title.
(I) APP:ICA4:, PR'.I#I'N#.+The provisions of this title relating to
applications for patent shall apply to provisional applications for patent!
e-cept as other&ise provided! and e-cept that provisional applications for
patent shall not /e su/8ect to sections **F6 *A*6 *AF! and *FK of this title.
&7 8,S,C, $$% S#eci0ication,
The specification shall contain a &ritten description of the invention! and
of the manner and process of maing and using it! in such full! clear!
concise! and e-act terms as to ena/le any person silled in the art to &hich
it pertains! or &ith &hich it is most nearly connected! to mae and use the
same! and shall set forth the /est mode contemplated /y the inventor of
carrying out his invention.
The specification shall conclude &ith one or more claims particularly
pointing out and distinctly claiming the su/8ect matter &hich the applicant
regards as his invention.
A claim may /e &ritten in independent or! if the nature of the case admits!
in dependent or multiple dependent form.
#u/8ect to the follo&ing paragraph! a claim in dependent form shall
contain a reference to a claim previously set forth and then specify a
further limitation of the su/8ect matter claimed. A claim in dependent form
shall /e construed to incorporate /y reference all the limitations of the
claim to &hich it refers.
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A claim in multiple dependent form shall contain a reference! in the
alternative only! to more than one claim previously set forth and then
specify a further limitation of the su/8ect matter claimed. A multiple
dependent claim shall not serve as a /asis for any other multiple dependent
claim. A multiple dependent claim shall /e construed to incorporate /y
reference all the limitations of the particular claim in relation to &hich it is
/eing considered.
An element in a claim for a com/ination may /e e-pressed as a means or
step for performing a specified function &ithout the recital of structure!
material! or acts in support thereof! and such claim shall /e construed to
cover the corresponding structure! material! or acts descri/ed in the
specification and e1uivalents thereof.
&7 8,S,C, $$& Dra+in.s,
The applicant shall furnish a dra&ing &here necessary for the
understanding of the su/8ect matter sought to /e patented. <hen the nature
of such su/8ect matter admits of illustration /y a dra&ing and the applicant
has not furnished such a dra&ing! the Director may re1uire its su/mission
&ithin a time period of not less than t&o months from the sending of a
notice thereof. Dra&ings su/mitted after the filing date of the application
may not /e used (i) to overcome any insufficiency of the specification due
to lac of an ena/ling disclosure or other&ise inade1uate disclosure
therein! or (ii) to supplement the original disclosure thereof for the purpose
of interpretation of the scope of any claim.
&7 8,S,C, $$' !o1els6 s#ecimens,
The Director may re1uire the applicant to furnish a model of convenient
siGe to e-hi/it advantageously the several parts of his invention.
<hen the invention relates to a composition of matter! the Director may
re1uire the applicant to furnish specimens or ingredients for the purpose of
inspection or e-periment.
&7 8,S,C, $$7 Oath o0 a##licant,
The applicant shall mae oath that he /elieves himself to /e the original
and first inventor of the process! machine! manufacture! or composition of
matter! or improvement thereof! for &hich he solicits a patent3 and shall
state of &hat country he is a citiGen. #uch oath may /e made /efore any
person &ithin the "nited #tates authoriGed /y la& to administer oaths! or!
&hen made in a foreign country! /efore any diplomatic or consular officer
of the "nited #tates authoriGed to administer oaths! or /efore any officer
having an official seal and authoriGed to administer oaths in the foreign
Nancy 4o&en Page *E *%565$%*6
DRAFT
country in &hich the applicant may /e! &hose authority is proved /y
certificate of a diplomatic or consular officer of the "nited #tates! or
apostille of an official designated /y a foreign country &hich! /y treaty or
convention! accords lie effect to apostilles of designated officials in the
"nited #tates. #uch oath is valid if it complies &ith the la&s of the state or
country &here made. <hen the application is made as provided in this title
/y a person other than the inventor! the oath may /e so varied in form that
it can /e made /y him. For purposes of this section! a consular officer
shall include any "nited #tates citiGen serving overseas! authoriGed to
perform notarial functions pursuant to section *KF% of the Revised
#tatutes! as amended ($$ ".#.C. 6$$*).
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DRAFT
PTO Fre?-ently As@e1 A-estions
$, What 1o the terms B#atent #en1in.C an1 B#atent a##lie1 0orC meanD
A. They are used /y a manufacturer or seller of an article to inform the pu/lic that an
application for patent on that article is on file in the "nited #tates Patent and Trademar
'ffice. The la& imposes a fine on those &ho use these terms falsely to deceive the pu/lic.
%, Is there any [Link] that the 8SPTO +ill .i/e others in0ormation containe1 in my
a##lication +hile it is #en1in.D
A. 9ost patent applications filed on or after Novem/er $E! $%%%! &ill /e pu/lished *I
months after the filing date of the application! or any earlier filing date relied upon under
Title AF! "nited #tates Code. 'ther&ise! all patent applications are maintained in the
strictest confidence until the patent is issued or the application is pu/lished. After the
application has /een pu/lished! ho&ever! a mem/er of the pu/lic may re1uest a copy of
the application file. After the patent is issued! the 'ffice file containing the application
and all correspondence leading up to issuance of the patent is made availa/le in the Files
Information "nit for inspection /y anyone! and copies of these files may /e purchased
from the 'ffice.
&, !ay I +rite to the 8SPTO 1irectly abo-t my a##lication a0ter it is 0ile1D
A. The 'ffice &ill ans&er an applicant2s in1uiries as to the status of the application! and
inform you &hether your application has /een re8ected! allo&ed! or is a&aiting action.
;o&ever! if you have a patent attorney or agent of record in the application file the 'ffice
&ill not correspond &ith /oth you and the attorney5agent concerning the merits of your
application. All comments concerning your application should /e for&arded through your
attorney or agent.
', Is it necessary to .o to the 8SPTO to transact b-siness concernin. #atent
mattersD
A. No. 9ost /usiness &ith the 'ffice is conducted /y &ritten correspondence. Intervie&s
regarding pending applications can /e arranged &ith e-aminers if necessary and are often
helpful.
7, I0 t+o or more #ersons +or@ [Link] to ma@e an in/ention6 to +hom +ill the
#atent be .rante1D
A. If each had a share in the ideas forming the invention as defined in the claims 0 even if
only as to one claim! they are 8oint inventors and a patent &ill /e issued to them 8ointly
on the /asis of a proper patent application. If! on the other hand! one of these persons has
Nancy 4o&en Page $* *%565$%*6
DRAFT
provided all of the ideas of the invention! and the other has only follo&ed instructions in
maing it! the person &ho contri/uted the ideas is the sole inventor and the patent
application and patent shall /e in his5her name alone.
>, I0 a 0irst #erson 0-rnishes all o0 the i1eas to ma@e an in/ention an1 a secon1
#erson em#loys the 0irst #erson or 0-rnishes the money 0or b-il1in. an1
testin. the in/ention6 sho-l1 the #atent a##lication be 0ile1 by the 0irst an1
secon1 #ersons =ointlyD
A. No. The application must /e signed /y the true inventor! and filed in the "#PT'! in
the inventor2s name. This is the person &ho furnishes the ideas (e.g. the first person in the
a/ove fact pattern)! not the employer or the person &ho furnishes the money.
E, Does the 8SPTO control the 0ees char.e1 by #atent attorneys an1 [Link] 0or their
ser/icesD
A. No. This is a matter /et&een you and your patent attorney or agent in &hich the 'ffice
taes no part. To avoid misunderstanding you may &ish to as for estimate charges for>
(a) the search (/) preparation of the patent application! and (c) "#PT' prosecution.
4, Will the 8SPTO hel# me to select a #atent attorney or [Link] to ma@e my #atent
search or to #re#are an1 #rosec-te my #atent a##licationD
A. No. The 'ffice cannot mae this choice for you. ;o&ever! your o&n friends or
general attorney may help you in maing a selection from among those listed as
registered practitioners on the 'ffice roster. Also! some /ar associations operate la&yer
referral services that maintain lists of patent la&yers availa/le to accept ne& clients.
F, Will the 8SPTO a1/ise me as to +hether a certain #atent #romotion [Link]
is reliable an1 tr-st+orthyD
A. No. The 'ffice has no control over such organiGations. The 'ffice &ill pu/lish
complaints regarding invention promoters and replies from the invention promoters. The
'ffice &ill not undertae any investigation of the invention promoters. ?uestions or
complaints should /e directed to the 9ail #top $63 Director of the ".#. Patent and
Trademar 'ffice3 P.'. 4o- *6F%3 Ale-andria! .A $$A*A+*6F% or call at (K%A) A%D+FFDI.
It is advisa/le! ho&ever! to chec on the reputation of invention promotion firms /efore
maing any commitments. It is suggested that you o/tain this information from the 4etter
4usiness 4ureau of the city in &hich the organiGation is located! or from the /ureau of
commerce and industry or /ureau of consumer affairs of the state in &hich the
organiGation has its place of /usiness. 7ou may also undertae to mae sure that you are
dealing &ith relia/le people /y asing your o&n patent attorney or agent or /y asing
others &ho may no& them.
Nancy 4o&en Page $$ *%565$%*6
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$2, Are there any [Link] in my area +hich can tell me ho+ an1 +here I may
be able to obtain assistance in 1e/elo#in. an1 mar@etin. my in/entionD
A. 7es. In your o&n or neigh/oring communities you may in1uire of such organiGations
as cham/ers of commerce and /ans. 9any communities have locally financed industrial
development organiGations! that can help you locate manufacturers and individuals &ho
might /e interested in promoting your idea.
$$, Are there any state .o/ernment [Link] that can hel# me in 1e/elo#in. an1
mar@etin. o0 my in/entionD
A. 7es. In nearly all states there are state planning and development agencies or
departments of commerce and industry &hich see ne& product and ne& process ideas to
assist manufacturers and communities in the state. If you do not no& the names or
addresses of your state organiGations you can o/tain this information /y &riting to the
governor of your state.
$%, Can the 8SPTO assist me in the 1e/elo#in. an1 mar@etin. o0 my #atentD
A. No. The 'ffice cannot act or advise concerning the /usiness transactions or
arrangements that are involved in the development and mareting of an invention. The
'ffice! ho&ever! &ill pu/lish for a fee! at the re1uest of a patent o&ner! a notice in the
'fficial GaGette that the patent is availa/le for licensing or sale. In addition! the 'ffice of
Independent Inventor Programs ('IIP) &as esta/lished in 9arch *EEE in order to meet
the special needs of independent inventors. The 'IIP esta/lishes ne& mechanisms to
/etter disseminate information a/out the patent and trademar processes and to foster
regular communication /et&een the "#PT' and independent inventors.
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R,:AT,D I##",# AND ADDITI'NA: T'PIC#
Non+Disclosure Agreements and Trade #ecret Protection
<ea versus #trong Patents
The Patent #earch
<riting Claims
Putting the Application Together
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