What is a nonprovisional utility patent application?
A nonprovisional utility patent application may be filed with the U.S. Patent and Trademark Office (USPTO) to be examined for patentability. If a patent examiner determines that a nonprovisional patent application meets the requirements for patentability, the nonprovisional patent application may be issued into a valid and enforceable U.S. Patent. A nonprovisional patent application requires that an invention be claimed an disclosed sufficiently as required by law.
What are the parts needed to draft a valid nonprovisional patent application?
In most instances, a nonprovisional patent application will be broken into a variety of sections, each of which will collectively comprise the application. These sections will be described in greater detail below.
Claim or Claims
The claim or claims must particularly point out and distinctly claim the subject matter which the inventor or inventors regard as the invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is determined, in large measure, by the scope of the claims.
A nonprovisional application for a utility patent must contain at least one claim. The claim or claims section must begin on a separate physical sheet or electronic page. If there are several claims, they must be numbered consecutively in Arabic numerals.
One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Any dependent claim that refers to more than one other claim (“a multiple dependent claim”) shall refer to such other claims in the alternative only. Each claim should be a single sentence, and where a claim sets forth a number of elements or steps, each element or step of the claim should be separated by a line indentation.
The specification is a written description of the invention and of the manner and process of making and using the invention that concludes with the claims to the invention, which must begin on a new page. The specification must be in clear, full, concise, and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use the same.
For inventions involving computer programming, computer program listings may be submitted as part of the specification as set forth in 37 CFR 1.96(b) and (c). Other than for a reissue application or reexamination proceeding, the pages of the specification (but not the transmittal letter sheets or other forms), including claims and abstract, must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably below, the text. The lines of the specification must be 1.5 or double spaced (lines of text not comprising the specification need not be 1.5 or double spaced). It is desirable to include an indentation at the beginning of each new paragraph, and for paragraphs to be numbered (i.e., , , , etc.).
Abstract of the Disclosure
The purpose of the abstract is to enable the USPTO and the public to determine quickly the nature of the technical disclosures of your invention. The abstract points out what is new in the art to which your invention pertains. It should be in narrative form and generally limited to a single paragraph, and it must begin on a separate page. An abstract should not be longer than 150 words. See MPEP 608.01(b) for more information.
More specifically, what should be included in the specification?
As discussed above, the specification of a patent application includes a written description disclosing the invention in detail. The specification is typically comprised of multiple parts, each of which will be discussed below.
Title of Invention
The title of the invention (or an introductory portion stating the name, citizenship, residence of each applicant, and the title of the invention) should appear as the heading on the first page of the specification. Although a title may have up to 500 characters, the title must be as short and specific as possible.
Cross-Reference to Related Applications
Any nonprovisional utility patent application claiming the benefit of one or more prior-filed copending nonprovisional applications (or international applications designating the United States of America) under 35 USC §§120, 121 or 365(c), or to a provisional patent application under 35 USC §119(e) must contain in the first sentence(s) of the specification following the title, a reference to each prior application, identifying it by the application number or international application number and international filing date, and indicating the relationship of the applications, or include the reference to the earlier application in an application data sheet under 37 CFR §1.76. See 37 CFR 1.78. Cross-references to other related patent applications may be made when appropriate.
Statement Regarding Federally Sponsored Research or Development (if applicable)
This section should contain a statement as to rights to inventions made under federally sponsored research and development (if any). See MPEP §310 for more information.
Background of the Invention
This section should include a statement of the field of endeavor to which the invention pertains. This section may also include a paraphrasing of the applicable U.S. patent classification definitions or the subject matter of the claimed invention.
Also, it should contain a description of information known to you, including references to specific documents, which are related to your invention. It should contain, if applicable, references to specific problems involved in the prior art (or state of technology) which your invention is drawn toward. See MPEP 608.01(c) for more information.
Brief Summary of the Invention
This section should present the substance or general idea of the claimed invention in summarized form. The summary can include the advantages of the invention and how it solves previously existing problems. Preferably, problems are identified in the Background of the Invention section. A statement of the object of the invention may also be included. See MPEP 608.01(d) for more information.
Brief Description of the Several Views of the Drawing
Where there are drawings, you must include a listing of all figures by number (e.g., Figure 1A) and with corresponding statements explaining what each figure depicts.
Detailed Description of the Invention
In this section, the invention must be explained along with the process of making and using the invention in full, clear, concise, and exact terms. This section should distinguish the invention from other inventions and from what is old and describe completely the process, machine, manufacture, composition of matter, or improvement invented. In the case of an improvement, the description should be confined to the specific improvement and to the parts that necessarily cooperate with it or which are necessary to completely understand the invention.
It is required that the description be sufficient so that any person of ordinary skill in the pertinent art, science, or area could make and use the invention without extensive experimentation. The best mode contemplated by the inventor of carrying out the invention must be set forth in the description. Each element in the drawings should be mentioned in the description. See MPEP 608.01(g) for more information.
What should I know regarding the filing of a nonprovisional patent application?
A nonprovisional utility patent application can be filed with the USPTO through the Office’s electronic filing system called EFS-Web, delivery by U. S. mail, or hand delivery to the Office in Alexandria, Virginia. By far, most patent applications filed at the USPTO are utility applications. 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). The only way to avoid paying the additional $400 non-electronic filing fee is by filing the nonprovisional utility application via EFS-Web.(The non-electronic filing fee does not apply to reissue, design, plant, or provisional applications.) EFS-Web is a web-based patent application and document submission system in which anyone with a web-enabled computer can file patent applications without downloading special software or changing document preparation tools and processes. More information is available at http://www.uspto.gov/patents/process/file/efs/index.jsp. Full technical support for EFS-Web is available through the Patent Electronic Business Center (EBC) by calling 866-217-9197 from 6 a.m. to 12 midnight Eastern Standard Time (EST), Monday through Friday, except federal holidays.
When filing a nonprovisional utility patent application, it must be submitted in the English language or be accompanied by a translation in the English language, a statement that the translation is accurate and have payment of the fee set forth in 37 CFR §1.17(i). If an applicant files a non-provisional utility application in a language other than English without the translation, statement, or fee, the Applicant will be given a notice and time period to submit the missing item(s).
A nonprovisional utility patent application must include a specification, including a description and a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees. Note that by filing the nonprovisional utility application electronically via EFS-Web, the basic filing fee for an applicant qualifying for small entity status is reduced by 50 percent. That’s a savings of almost $100 compared to the filing fee for a small entity applicant who files his or her application in paper. As mentioned in the “Filing Options” section above, there is an additional non-electronic filing fee ($200 for small entity applicants) for nonprovisional utility applications filed in paper. Therefore,the total savings to the small entity applicant who files a nonprovisional utility application electronically is almost $300!
EFS-Web accepts electronic documents formatted in Portable Document Format (PDF). 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 that 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.
Each document can be created in a PDF format for filing via EFS-Web must have a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch) and a bottom margin of at least 2.0 cm (3/4 inch). The application pages must be numbered consecutively (centrally located above or below the text) starting with page one. In addition, the PDF document size should be 8.5 inch by 11 inch (standard size) or 21 centimeter by 29.7 centimeter (DIN size A4). The specification, including the abstract and claims, must have lines that are 1 1/2 or double-spaced in a single column of text. The text must be a nonscript font (e.g., Arial, Times Roman, or Courier), preferably with a font size of 12. Handwritten text scanned into PDF format is not acceptable.
A complete nonprovisional utility patent application should contain the elements listed below, arranged in the order shown. Description of some of these elements is provided below:
- Utility Patent Application Transmittal Form or Transmittal Letter,
- Appropriate Fees,
- Application Data Sheet (see 37 CFR §1.76),
- Specification (with at least one claim),
- Drawings (when necessary),
- Executed Oath or Declaration,
- Nucleotide and/or Amino Acid Sequence Listing (when necessary), and
- Large Tables or Computer Listings (when necessary).
Utility Patent Application Transmittal Form or Transmittal Letter
A Utility Patent Application Transmittal Form or a transmittal letter should be filed with every patent application to identify the items being filed (e.g., specification, claims, drawings, declaration, and information disclosure statement). The form identifies the applicant(s), the type of application, the title of the invention, the contents of the application, and any accompanying enclosures. (Form PTO/SB/21 should be used for all correspondence after initial filing.)
You can electronically submit the required filing, search, and examination fees using a credit card or electronic funds transfer. For example, when filing your patent application on-line via EFS-Web, it is better to pay these fees on-line when filing the application via EFS-Web, rather than later, because any filing, search, or examination fee paid on a date later than the patent application filing date requires a late surcharge of $130 ($65 for small entity applicants). The late surcharge will also be owed if you file the required oath or declaration on a date later than the application filing date, so it’s best to ensure that the required fees and the oath or declaration are included with the specification (including claims) and drawings filed via EFS-Web. You can also file your nonprovisional utility application in paper by mail or by hand-delivery, however, this will cost you an additional non-electronic filing fee of $400 ($200 for small entities) on top of the regular filing, search, and examination fees. If you file in paper anyway, the Fee Transmittal Form (Form PTO/SB/17) may be used to calculate the prescribed filing, examination, and search fees, any excess claim fees or application size fee, and indicate the method of payment (by check, money order, deposit account, or credit card).
Although it is recommended to pay the filing, search, and examination fees on-line at the time of filing your application via EFS-Web in order to avoid the late surcharge, if you pay the fees later by check or money order, the check or money order must be made payable to the “Director of the United States Patent and Trademark Office.” If an application is filed without the fees, the applicant will be notified and required to submit the fees plus the late surcharge within the time period set in the notice.
If your nonprovisional utility application filed via EFS-Web includes a total number of specification and drawing pages that exceeds 133, an application size fee will be due. (For applications filed in paper, an application size fee is due if the total number of pages exceeds 100 pages.) Further, if the application has more than three independent claims or more than 20 total claims, excess claims fees will be due. Fees are subject to change and the applicant should consult the current Fee Schedule before filing the application.
Please note that two sets of fees exist, one for small entities and one for large entities. If you qualify as a small entity for patent fee purposes, no special form is required to claim your entitlement to reduced fees (you may check a special box on the transmittal form), but you should only pay small entity rates after ensuring that you qualify for the small entity status. For example, small entity status may be appropriate if the inventors have not assigned any rights in the invention set forth in the application and are not under any obligation to do so (as may be required in an employment contract),. See 37 CFR §1.27 and MPEP §509.02 for more information
Application Data Sheet
The application data sheet or sheets are voluntarily submitted in either provisional or nonprovisional applications with bibliographic data arranged in a format specified by the USPTO. Specific bibliographic data includes applicant information, correspondence information, application information, representative information, domestic priority information, foreign priority information and assignment information. See 37 CFR §1.76 and MPEP §601.05 for more information.
Supplemental application data sheets may be subsequently provided prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under 37 CFR §1.63 or 1.67. However, certain information cannot be changed by simply filing a supplemental application data sheet. For example, changes to the named inventors must comply with the requirements of 37 CFR §1.48, correspondence address changes must comply with the requirements of 37 CFR §1.33(a), and changes to an inventor’s citizenship must comply with the requirements of 37 CFR §1.63 or 1.67. Supplemental application data sheets must be titled “Supplemental Application Data Sheet,” include all of the section headings listed in 37 CFR 1.76(b) and all appropriate data for each section heading, and must identify the information that is being changed, preferably with underlining for insertions, and strike-through or brackets for text removed.
Oath or Declaration
An oath or declaration is required for applications involving designs, plants, and utility inventions and for reissue applications. Each inventor must make an oath or declaration that he/she believes himself/herself to be the original and first inventor of the subject matter of the application, and he/she must make various other statements required by law and various statements required by the USPTO rules. If an application data sheet is filed, the USPTO rules require fewer statements in the oath or declaration. See Title 37, Code of Federal Regulations, Sections 1.63 and 1.76. The oath must be sworn to by the inventor before a notary public or other officer authorized to administer oaths. A declaration may be used in lieu of an oath. A declaration does not require any witness or person to administer or verify its signing. Thus, use of a declaration is preferable. When filing a continuation or divisional application, a copy of an earlier-filed oath or declaration from the parent application may be acceptable. The oath or declaration must be signed by the inventor in person, or by the person entitled by law to make application on the inventor’s behalf. A full first and last name with middle initial or name, if any, and the citizenship of each inventor are required. The mailing address of each inventor and foreign priority information (if any) is also required if an application data sheet is not used.
Any oath or declaration must be in a language the inventor understands. If the oath or declaration used is in a language other than English, and is not in a form provided by the United States Patent and Trademark Office or provided in accordance with Patent Cooperation Treaty (PCT) Rule 4.17(iv), an English translation together with a statement that the translation is accurate is required. The USPTO provides forms PTO/SB/101-110, which are declaration forms in certain foreign languages with an English translation, for an applicant’s use.
If the person making the oath or declaration is not the inventor, the oath or declaration shall state the relationship of that person to the inventor, upon information and belief, the facts which the inventor would have been required to state, and the circumstances which render the inventor unable to sign, namely death, insanity or legal incapacity or unavailability/refusal to sign. (See 37 CFR §§1.42, 1.43, and 1.47.) If the inventor has refused or cannot be reached to sign the declaration, then a petition under 37 CFR §1.47 is required, and if there are inventors who have signed the oath or declaration, then the remaining inventors must sign the oath or declaration on behalf of the non-signing inventor. If none of the inventors will sign the oath or declaration because they refuse to do so or cannot be found or reached after diligent effort, then the oath or declaration must be signed by the party showing proprietary interest in the application, as shown in the petition under 37 CFR §1.47(b). If the inventor has died or is legally incapacitated, then the legal representative of the deceased or incapacitated inventor must sign the oath or declaration on behalf of the inventor.
A patent application is required to contain drawings, if drawings are necessary to understand the subject matter to be patented. Most patent applications contain drawings. The drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete and no application filing date will be granted by the USPTO. Please see the detailed Drawing Requirements section.
Where can I go for more information?
The U.S. Patent and Trademark hosts substantially all laws, requirements, and policies relating to patent requirements and examination. The USPTO website may be accessed at:
Also, the USPTO has a Patent and Trademark Resource Center (PTRC) Network is comprised of PTRC-designated libraries found in 46 states, the District of Columbia, and Puerto Rico. When a library is designated as a PTRC by the USPTO, it receives house copies of U.S. patents and patent and trademark materials and actively disseminates patent and trademark information to the public. The PTRC network provides access to many of the same products and services offered at the USPTO search facilities in Alexandria, VA. The scope of PTRC collections, hours of operation, services, and fees (where applicable) vary depending on PTRC location. Users are advised to call ahead to determine products and services available at a particular PTRC. PTRCs also offer automated access to patent and trademark information. Please refer to the USPTO’s web site for a complete list of PTRCs at www.uspto.gov/go/ptdl/.
Should I hire a patent attorney?
The patent application process is complex. The USPTO cannot and will not assist in the preparation of patent application papers. If an inventor is ready to apply for a patent, the USPTO strongly advises contacting a registered patent attorney or agent. Only registered attorneys and agents may help others to obtain patents. For more information relating to representation for filing and prosecuting your patent application, contact a patent attorney such as Scott Nyman at email@example.com or 312.487.2532.