Filing a Utility Patent Application

Table of Contents

1.1 Can I reuse information from my PPA or other applications?

1.2 What should I consider in drafting the utility application?

1.3 How do I write the claims?

1.4 What documents are needed in filing the utility application?

1.4.1 Specification

1.4.2 Information Disclosure Statement (IDS)

1.4.3 Inventor’s Oath or Declaration

1.4.4 Fees

1.4.5 Transmittal letter

1.4.6 Drawings

1.4.7 Optional

1.4.7.1 Small entity and micro entity

1.4.7.2 Petition to Make Special (PTMS)

1.4.7.3 Assignments

1.4.7.4 Return receipt postcard

1.4.7.5 Power of attorney

1.4.7.6 Non-publication Request (NPR)

1.5 Can you request early publication of your application?

1.6 What is a secrecy order?

1.7 What happens when the utility application has been filed?

1.8 How to Respond to Formality/Pre-Examination Review?

1.1 Is it possible to reuse information from my PPA and other applications?

To describe the background and state of the art, it is common to refer to other patent applications. This helps to set the scene for your invention. You can also modify original text and drawings to show the operation of your invention, if necessary.

You must cite the published patent or original patent in your utility patent application to be able to use this information. The reference(s) and the Information Disclosure Statement (IDS 1449) must be submitted.

Particularly, you should describe your invention in detail. This is important to differentiate your invention from other prior inventions. If applicable, you should explain the improvement’s and differences in operation. Your application could be rejected if it is obvious or anticipated over the prior art.

1.2 What should you consider when drafting a utility application?

Before you file the application, make sure you know whether your idea is patentable. Also, consider factors such as cost, timing, type, and subject matter. These factors include:

• What is the purpose of the invention? What problem does the invention address?
• Which major component/parts make up the invention? These components can you remove, rearrange, and/or combine?
• Which components are novel in the invention, and why do they matter? Is there an equivalent for these components?
• What is the interconnection of these components? Does the interconnection seem novel? Is there any non-obvious benefit arising from your particular arrangement or interconnection
• Which part of the invention was the most difficult to develop?
• Is there another way to accomplish the same function as the invention?
• What problems did the invention solve, and what was its most difficult aspect?
• What are the advantages of the invention? How can they be achieved?
• What are the most desired features by customers and end-users? How can the competition offer them?
• What are the most important features that the competition is looking for? How can they be provided?
• How likely are certain features to be copied?
• Is the invention an improvement on an existing product or a new product? How can you improve the product?
• Are there other solutions?
• What elements or components can you add? What components or elements can you add?
• How can you simplify the main components of your invention or arrange them differently?
• Which parts are possible to substitute for or combine?
• What is the opposite of key elements and components? What is the best way to use these opposites in your invention?
• Is it possible to make it simple and affordable? How?

1.3 How do you write claims?

Patent claims are what the inventor intended to protect. They define the scope of a patent and what it does and doesn’t cover. A patent claim defines the patent right granted by the patent office. It is essential to be precise and clear when writing patent claims.

While PPAs don’t require claims, utility patent applications need at least one claim. The claim must clearly and explicitly claim the subject matter the inventor considers to be the invention. The claim specify the scope of patent protection. The language used to identify your claim determines whether the USPTO grants patent protection.

There are two types. Claim 1 should be considered an independent claim and stand alone. Claim 1 usually has several dependent claims. These claim revert to claim 1 and add limitations. Software professionals may view dependent claims as instantiations or extensions of an independent claim.

Each claim has three sections: the preamble and the transitional phrase. The body is the claim’s main section. The claim’s preamble is its first section. The example car claim below has the preamble as the phrase “A vehicle”. The transitional phrase is “comprising”, meaning including not limiting, and the body contains parts of the engine, frame, and wheels. The body is connected to the engine and frame, and the wheels also relate to the other elements or parts.

1.4 What documents are required to file a utility application?

Your utility application should include the following information:

1.4.1 Specification

A specification is a set of documents that describes the invention in detail and how it is made, used, or worked. It should be clear, concise, precise, and in such a way that anyone with the same expertise can understand it. The claims should be stated in the written description. It must not contain information not relevant to the applicant’s invention.

1.4.2 Information Disclosure Statement

A disclosure statement (IDS), is a submission of background art or information about previous art to the United States Patent and Trademark Office by a patent applicant during the patent prosecution process.

All patent applicants have a duty to disclose any relevant art or background information they are aware of that could be relevant to the patentability of their invention.

You and your attorney must share all information about prior art that may influence the patent examiner who is reviewing your application. The information is contained in the IDS. The IDS consists of a transmittal email if it is filed via USPS mail and a PTO Form SB/08 that asks you to disclose any prior art. Attach copies of non-U.S. articles and patents.

1.4.3 The Inventor’s Oath/Declaration

The USPTO has provided a form that allows you to declare whether you are an original inventor or not.

1.4.4 Fees

A patent cost  vary depending on the type of patent and how many tasks the attorney must perform as well as the complexity of the invention. All rates are available at the USPTO.

Fees depend on many factors, such as whether you are eligible for the small entity discount or if you are filing for power-of- attorney. For the most current information, visit the USPTO website.

The USPTO permits payment by personal check or money order. You will need to complete a Fee Transmittal Letter for any payment. You will also need to complete the Credit Card Payment Form (2038) for credit card payments.

1.4.5 Transmittal letter

The PPA Cover Sheet is a similar format to a transmittal letter. It serves as a checklist for application elements, such as the fee transmittal forms, if you claim small entities or micro entities for a fee reduction, and the specification, including the background, and summary.

1.4.6 Drawings

Drawings can be part of the specification. They can be very useful tools to show the operation of the invention.

We encourage drawing overabundance

Drawings don’t necessarily have to be art. However, they should accurately describe the invention and show it off. They must also adhere to the USPTO drawing guidelines.

You should be aware that drawings can’t be altered after you file them, except for minor typographical errors. Anything submitted after the filing date may not be used to override any insufficiency in the specification due to a lack of an enabling or inadequate disclosure or to supplement it. We recommend you provide more drawings than the minimum, as drawings can be powerful tools to explain your invention’s operation.

With a utility patent application, the USPTO needs formal drawings. The drawings requires one adhere to specific USPTO requirements, such as:

• Black and white should be the preferred color for drawings. In some circumstances, they may be in color, but only when absolutely necessary. Photos are not accepted in utility or design patent applications unless it is the only way to display information.
• The inventor’s name, docket or application number, and the invention’s title must be included in drawings. These details should be included at the top of each sheet’s front margin. Every sheet should also be labeled “Replacement Sheet”, “New Sheet,” or the “Annotated Sheet”.
• Tables, waveforms and chemical and mathematical formulas may be considered drawings. However, they must follow the guidelines. Each formula should have labels because they can be treated as separate drawings.
• Waveform groups are considered one figure, with a common vertical and horizontal axis. Time is noted on the horizontal. Each waveform must be identified by a different letter.
• Drawings may include symbols and viewpoints that identify specific aspects of the specification. In such cases, labels and a legend are particularly helpful. The “Guide for the Preparation Patent Drawings” is a list of accepted symbols and legends, which can be found at www.uspto.gov.
• Photographs and drawings should be clean, precise, and scaled.
• Each part of the drawing or photograph must be identified with a number.

1.4.7 Optional

10.4.7.1 Micro entity and small entity

Small entity

You may eligible for a small entity discount if you are an independent inventor, small business owner, or nonprofit. For small entities that fit for reduced fees, the filing, searching, examining, and issuing of patent applications and patents fees are reduced 50% and 25%, respectively, for those that file certifications that meet the requirements for micro-entity.

If the inventors have not transferred any rights to the invention as set forth in the application, and they are not required to do so in an employment contract, small entity status might be appropriate. Small entities can be independent inventors with all rights to the invention or inventors who have transferred all rights and rights to small businesses with less than 500 employees. To claim reduced patent fees, you don’t need to fill out a special form if you are a small entity. You can check a box on the transmittal form.

The process of claiming small entity status can be simple. After proving your eligibility, you simply need to pay the small entity rates. This will allow the patent office the right to grant the small entity status.

Requesting small entity status can be done by either checking the small entity box on your utility application transmittal letter or the box in the ADS application information box.

Micro-entity

If you submit the Certificate of Micro Entity Status, you may be eligible for a 75% fee reduction on most PTO fees. The fee reduction applies wherever the applicant is:

• An individual
• A company with not more 500 employees is considered to be
• A non-profit organization (includes a university)

You must verify that you meet all conditions to qualify. The easiest way to do this is to complete the PTO form, such as the one below.

1.4.7.2 Petition to Make Special (PTMS)

Your utility patent application can be expedited based on your age, health, or industry.

You can apply for utility patents faster if you are eligible under the Accelerated Examination Programme (AEP). AEP may be available to you in a variety of ways. Based on your health, age, or other special circumstances, you may be eligible, such as COVID-related inventions.

You must submit your utility patent application online to determine eligibility. Other detailed instructions are required, which can prove quite difficult. Visit the USPTO website for more information and to request an examination acceleration.

1.4.7.3 Assignments

The patent ownership can be transferred to another person via assignment. This should be recorded with USPTO.

Ownership can be signed over to another person via assignment. As mentioned earlier, the USPTO should record all assignments. This can be done either when you file your patent application or later.

1.4.7.4 Return receipt postcard

The USPTO responds slowly, so it is a good idea to include a stamped postcard along with your application. They will stamp the card with an 8-digit number and date of receipt within a month.

Although electronic filing is preferred (and mailed submissions are more expensive now), it may take longer for the USPTO to respond to your request if you choose to file by post. You should include a stamped postcard along with your application to receive an informal acknowledgment from the PTO. This will allow them to quickly acknowledge receipt. This postcard may take up to a month to arrive.

Encompass as much details as you can on the postcard as possible. This includes the inventor’s name and title, claims, abstract, the date that you signed the declaration/oath, check number, amount, and date. The self-addressed card must be properly addressed with the correct amount of stamp(s), or a meter stamp that conforms to USPS requirements. The USPTO will stamp the postcard with the application numbers and date of receipt once it has received the information. Both of these should be kept confidential.

1.4.7.5 Power to attorney

You usually grant power of attorney to an attorney if you are a client. A power of attorney allows the person who has it to represent you or handle your patent application. A power of attorney gives the person the ability to communicate with the patent office. This authorization must be filed with USPTO.

1.4.7.6 Nonpublication Request (NPR)

Non-publication request (NPR) is a request from the patent applicant not to publish a non-provisional application.

The publication is automatic after 18 months of non-provisional applications for patents are filed. The publication is halted by the non-publication request.

At applicants’ request, the USPTO may publish applications earlier than usual. This allows applicants to receive reasonable royalties from other people who use, make, or sell their inventions between the time the application is published, and the time the patent is granted.

Provisional applications will not be published. Utility applications, however, are published within 18 months of filing. You can request a Non-Publication Request (NPR) at the time you file. This request is a declaration that you won’t file international for a non U.S. patent. International patent office’s often publish applications within the 18-month period. If you decide to file for a U.S. non-U.S. Patent and change your mind after an international filing, you must notify the USPTO within 45 day. The USPTO will publish your U.S. utility application.

1.5 Can one request an earlier publication?

The USPTO holds all applications in strict confidence until it issues patents or publishes a publication, takes place 18 months after the filing. A fee is required for early publication.

The public can request a copy after the USPTO publishes a patent application. The public can also request a copy of the patent application after its issued.

Why request publication early if you must pay the fee and not let others know about it in advance? You can also have prior art status citations. If a patent issue with claims that are substantially identical to those in the published application, and the patent owner actually gave notice of publication, you can seek past damages. The patent owner can collect a reasonable royalty starting with the application’s publication date and ending on the date that the patent was granted. This is difficult because claims can be amended during the examination. This can happen if you claim your preferred embodiment in order to prevent someone from copying your product.

1.6 What is secrecy order?

According to the 1951 Invention Secrecy Law, certain patent applications may be subject to “secrecy orders”. The Commissioner for Patents will issue an order to keep the invention secret if the chief officer or defense agency has notified the government that publishing or disclosing the invention through granting a patent would be harmful to national security.

This prevents disclosure of the invention and allows the USPTO not to grant a patent. Even if the application is based on work that was done without government support or sponsorship, this requirement can be applied.

You can file a petition to revoke or remove a secrecy or confidentiality order if you disagree with the decision. This petition must contain facts that claim to make the order invalid or futile. If prior publications or patents have been alleged, the petition should include all relevant data and be accompanied by copies. You must include any contract between yourself and the Government that led to the invention’s development in your petition. If there isn’t, you should indicate.

1.7 What happens when the utility application has been filed?

Here is a quick overview of the USPTO process:

1. The USPTO reviews your application and determines if there is any informality.
2. You will receive a filing receipt. It will be mailed to you if all is well if you send it by regular mail. After clicking the “submit”  you will be presented with a printed receipt acknowledging receipt. You will receive a filing receipt that includes information like the names of the inventors, the invention title, the patent examining group that will examine your application, the filing date, the application’s serial number, and the number claims you are asserting. You have a limited time window to correct any errors.
3. A patent examiner will review the claims of a utility patent application. The patent examiner will decide whether or not you are eligible for a patent, and if so, what the scope of your patent should be. If a patent examiner rejects claims, you and your attorney should review the reasons and present arguments to counter the rejection. You may also submit an amendment to your objections.
4. The patent examiner reviews the amendment and changes it to a Notification of Allowance. This is a patent application approval.
5. If your case is accepted, you will need to complete the issuance form and pay a fee.
6. You have the option to appeal if your case is rejected.

1.8 How to Respond to Formality/Pre-Examination Review?

After receiving your application, the PTO will verify that it is complete and ready for examination. If your application is incomplete, has no claim, or pays filing fees, a Notice of Missing Parts may be sent. Any deficiencies or irregularities in new applications will be communicated to you through different types of pre-examination notices. These notices require that the missing items be submitted or corrected within the time frame for replying (typically one to two months). All requirements must be met. Here’s an example:

The drawings must be replaced. Please note that replacement sheets should be annotated with “Replacement Sheet” on the top. The replacement drawing or replacement specification cannot contain any new material.

A Notice Regarding Power will be sent to you if there are any issues with your Power of Attorney. It will explain the reason a power of attorney cannot be accepted. The PTO may send you a Notification Regarding Power of Attorney if there are any issues with your reply. This will include reasons to help identify the problem and fix it.