Patent Law Blog
Kalamazoo - U.S. Patent Law Blog

Non-Provisional Application for a Patent:

Posted January 4, 2017

A nonprovisional application for a patent is made to the Director of the United States Patent and Trademark Office and includes:

  • A written document which comprises a specification (description and claims);
  • Drawings (when necessary);
  • An oath or declaration; and
  • Filing, search, and examination fees. Fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents are reduced by 50 percent for any small entity that qualifies for reduced fees under 37 CFR 1.27(a), and are reduced by 75 percent for any micro entity that files a certification that the requirements under 37 CFR 1.29(a) or (d) are met.

Applicant must determine that small entity status under 37 CFR 1.27(a) is appropriate before making an assertion of entitlement to small entity status and paying a fee at the 50 percent small entity discount. Fees change each October. Note that by filing electronically via EFS-Web, the filing fee for an applicant qualifying for small entity status is further reduced.

Applicant must determine that micro entity status under 37 CFR 1.29(a) or (d) is appropriate before filing the required certification of micro entity status and paying a fee at the 75 percent micro entity discount. The patent forms Web page is indexed under the section titled Forms, Patents on the USPTO website at www.uspto.gov. There are two micro entity certification forms – namely form PTO/SB/15A for certifying micro entity status on the “gross income basis” under 37 CFR 1.29(a), and form PTO/SB/15B for certifying micro entity status on the “institution of higher education basis” under 37 CFR 1.29(d). Effective November 15, 2011, any regular nonprovisional utility application filed by mail or hand-delivery will require payment of an additional $400 fee called the “non-electronic filing fee,” which is reduced by 50 percent (to $200) for applicants that qualify for small entity status under 37 CFR 1.27(a) or micro entity status under 37 CFR 1.29(a) or (d). The only way to avoid having to pay the additional $400 non-electronic filing fee is by filing the regular nonprovisional utility application via EFS-Web.

Other patent correspondence, including design, plant, and provisional application filings, as well as correspondence filed in a nonprovisional application after the application filing date (known as “follow-on” correspondence), can still be filed by mail or hand-delivery without incurring the $400 non-electronic filing fee. You do not have to be a Registered eFiler to file a patent application via EFS-Web. However, unless you are a Registered eFiler, you must not attempt to file follow-on correspondence via EFS-Web, because Unregistered eFilers are not permitted to file follow-on correspondence via EFS-Web. Follow-on correspondence filed by anyone other than an EFS-Web Registered eFiler must be sent by mail or be hand-delivered. (See the “General Information and Correspondence” section of this brochure.) In the event you receive from the USPTO a “Notice of Incomplete Application” in response to your EFS-Web filing stating that an application number has been assigned but no filing date has been granted, you must become a Registered eFiler and file your reply to the “Notice of Incomplete Application” via EFS-Web in order to avoid the $400 non-electronic filing fee.

The specification (description and claims) can be created using a word processing program such as Microsoft® Word or Corel® WordPerfect. The document containing the specification can normally be converted into PDF format by the word processing program itself so that it can be included as an attachment when filing the application via EFS-Web. Other application documents, such as drawings and a hand-signed declaration, may have to be scanned as a PDF file for filing via EFS-Web. See the information available at www.uspto.gov/patents/process/file/efs/index.jsp. Any questions regarding filing applications via EFS-Web should be directed to the Electronic Business Center at 866-217-9197.

All application documents must be in the English language or a translation into the English language will be required along with the required fee set forth in 37 CFR 1.17(i). Each document (which should be filed via EFS-Web in PDF format) must have a top margin of at least 2 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2 cm (3/4 inch) and a bottom margin of at least 2 cm (3/4 inch) with no holes made in the submitted papers. It is also required that the spacing on all papers be 1.5 or double-spaced and the application papers must be numbered consecutively (centrally located above or below the text) starting with page one.

The specification must have text written in a nonscript font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12pt) lettering style having capital letters that should be at least 0.3175 cm (0.125 inch) high, but may be no smaller than 0.21 cm (0.08 inch) high (e.g., a font size of 6). The specification must have only a single column of text. The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter that the applicant regards as the invention. The portion of the application in which the applicant sets forth the claim or claims is an important part of the application, as it is the claims that define the scope of the protection afforded by the patent. The claims must commence on a separate sheet.

More than one claim may be presented provided they differ from each other. Claims may be presented in independent form (e.g. the claim stands by itself) or in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim that refers back to more than one other claim is considered a “multiple dependent claim.” The application for patent is not forwarded for examination until all required parts, complying with the rules related thereto, are received. If any application is filed without all the required parts for obtaining a filing date (incomplete or defective), the applicant will be notified of the deficiencies and given a time period to complete the application filing (a surcharge may be required)—at which time a filing date as of the date of such a completed submission will be obtained by the applicant. If the omission is not corrected within a specified time period, the application will be returned or otherwise disposed of; the filing fee if submitted will be refunded less a handling fee as set forth in the fee schedule.

The filing fee and declaration or oath need not be submitted with the parts requiring a filing date. It is, however, desirable that all parts of the complete application be deposited in the Office together; otherwise, each part must be signed and a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. If an application that has been accorded a filing date does not include the filing fee or the oath or declaration, applicant will be notified and given a time period to pay the filing fee, file an oath or declaration and pay a surcharge.All applications received in the USPTO are numbered in sequential order, and the applicant will be informed of the application number and filing date by a filing receipt.

The filing date of an application for patent is the date on which a specification (including at least one claim) and any drawings necessary to understand the subject matter sought to be patented are received in the USPTO; or the date on which the last part completing the application is received in the case of a previously incomplete or defective application.

www.uspto.gov/patents

 

Patent Infringement:

Posted December 19, 2016

To determine whether or not you are infringing a patent, you or your attorney would need to compare a patent’s claims and the accused product, system, or process. To infringe a patent, the accused must perform each and every element of one or more of its claims, or actively encourage, sell or offer to sell a component that leads to another’s infringement. The best way to understand each claim is in light of the description provided through the patent (called the “specification”). A person knowledgeable in the technology should be able to read the specification and be able to tell how to make and use the invention.

The written record created when the USPTO examined the patent application, called the "prosecution history" or “file wrapper”, provides further context for understanding the boundaries of the claims,  especially with respect to the closest prior art. Prior art consists of the references (books, articles, web pages and other information) that were publicly available before the date that the application was filed. A registered patent attorney can advise you regarding all of the above.

 

Patents:

Posted November 15, 2016

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.

There are three types of patents:

  • Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
  • Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
  • Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

www.uspto.gov/patents-getting-started/general-information-concerning-patents

 

Patent Laws

Posted October 21, 2016

The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads "Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The patent laws underwent a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code. Additionally, on November 29, 1999, Congress enacted the American Inventors Protection Act of 1999 (AIPA), which further revised the patent laws.

The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents.

www.uspto.gov/patents