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Title: Patents and How to Get One - A Practical Handbook
Author: Commerce, U.S. Department of
Language: English
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PATENTS
AND HOW TO GET ONE
A PRACTICAL HANDBOOK
U.S. Department of Commerce
DOVER PUBLICATIONS, INC.
Mineola, New York
_Bibliographical Note_
This Dover edition, first published in 2000, is an unabridged and
unaltered republication of the work originally published by the Patent
and Trademark Office, Washington, D.C., in 1997 under the title _General
Information Concerning Patents_.
_International Standard Book Number: 0–486–41144–3_
Manufactured in the United States of America
Dover Publications, Inc., 31 East 2nd Street, Mineola, N.Y. 11501
Contents
───────────────────────────────────────────────────────────────────────
Functions of the Patent and Trademark Office 5
───────────────────────────────────────────────────────────────────────
Purpose of this booklet 6
───────────────────────────────────────────────────────────────────────
What is a patent? 7
───────────────────────────────────────────────────────────────────────
Patent laws 9
───────────────────────────────────────────────────────────────────────
What can be patented 10
───────────────────────────────────────────────────────────────────────
Novelty and other conditions for obtaining a patent 12
───────────────────────────────────────────────────────────────────────
The United States Patent and Trademark Office 13
───────────────────────────────────────────────────────────────────────
Publications of the Patent and Trademark Office 15
───────────────────────────────────────────────────────────────────────
General information and correspondence 19
───────────────────────────────────────────────────────────────────────
Library, search room services and Patent and Trademark Depository
Libraries 21
───────────────────────────────────────────────────────────────────────
Attorneys and agents 28
───────────────────────────────────────────────────────────────────────
Disclosure Document 31
───────────────────────────────────────────────────────────────────────
Who may apply for a patent 33
───────────────────────────────────────────────────────────────────────
Application for patent 34
───────────────────────────────────────────────────────────────────────
Oath or declaration, signature 37
───────────────────────────────────────────────────────────────────────
Filing Fees 38
───────────────────────────────────────────────────────────────────────
Specification (description and claims) 40
───────────────────────────────────────────────────────────────────────
Drawing 43
───────────────────────────────────────────────────────────────────────
Models, exhibits, specimens 54
───────────────────────────────────────────────────────────────────────
Examination of applications and proceedings in the Patent and
Trademark Office 55
───────────────────────────────────────────────────────────────────────
Amendments to application 58
───────────────────────────────────────────────────────────────────────
Time for response and abandonment 61
───────────────────────────────────────────────────────────────────────
Appeal to the Board of Patent Appeals and Interferences and to the
courts 62
───────────────────────────────────────────────────────────────────────
Interferences 63
───────────────────────────────────────────────────────────────────────
Allowance and issue of patent 65
───────────────────────────────────────────────────────────────────────
Nature of patent and patent rights 66
───────────────────────────────────────────────────────────────────────
Maintenance Fees 68
───────────────────────────────────────────────────────────────────────
Correction of patents 69
───────────────────────────────────────────────────────────────────────
Assignments and licenses 70
───────────────────────────────────────────────────────────────────────
Infringement of patents 73
───────────────────────────────────────────────────────────────────────
Patent marking and “patent pending” 74
───────────────────────────────────────────────────────────────────────
Design patents 75
───────────────────────────────────────────────────────────────────────
Plant patents 76
───────────────────────────────────────────────────────────────────────
Treaties and foreign patents 79
───────────────────────────────────────────────────────────────────────
Foreign applicants for United States patents 82
───────────────────────────────────────────────────────────────────────
Answers to questions frequently asked 84
───────────────────────────────────────────────────────────────────────
Functions of the Patent and Trademark Office
The Patent and Trademark Office (PTO) is an agency of the U.S.
Department of Commerce. The role of the Patent and Trademark Office is
to grant patents for the protection of inventions and to register
trademarks. It serves the interest of inventors and businesses with
respect to their inventions and corporate products, and service
identifications. It also advises and assists the bureaus and offices of
the Department of Commerce and other agencies of the Government in
matters involving “intellectual property” such as patents, trademarks
and semiconductor mask works. Through the preservation, classification,
and dissemination of patent information, the Office aids and encourages
innovation and the scientific and technical advancement of the nation.
In discharging its patent related duties, the Patent and Trademark
Office examines applications and grants patents on inventions when
applicants are entitled to them; it publishes and disseminates patent
information, records assignments of patents, maintains search files of
U.S. and foreign patents, and maintains a search room for public use in
examining issued patents and records. It supplies copies of patents and
official records to the public. Similar functions are performed relating
to trademarks.
Purpose of this Booklet
The purpose of this booklet is to give users some general information
about patents and the operations of the Patent and Trademark Office. It
attempts to answer many of the questions commonly asked of the Patent
and Trademark Office but is not intended to be a comprehensive textbook
on patent law or a guide for the patent attorney. It is hoped that this
information will be useful to inventors and prospective applicants for
patents, to students, and to others who may be interested in patents by
giving them a brief general introduction to the subject.
Additional information may be obtained from the publications listed
under the sections “Publications of the Patent and Trademark Office”
and “General information and correspondence.” Also, information is
available on the U.S. Patent and Trademark Office’s Web site at:
_http://www.uspto.gov_. The Patent and Trademark Office does not
publish any textbooks on patent law, but a number of such works for
the specialist and for the general reader have been published by
private concerns.
What Is a Patent?
A patent for an invention is a grant of a property right by the
Government to the inventor (or his or her heirs or assigns), acting
through the Patent and Trademark Office. The term of the patent shall be
20 years from the date on which the application for the patent was filed
in the United States or, if the application contains a specific
reference to an earlier filed application under 35 U.S.C. 120, 121 or
365(c), from the date the earliest such application was filed, subject
to the payment of maintenance fees. The right conferred by the patent
grant extends only throughout the United States and its territories and
possessions.
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. Most of the statements in the
preceding paragraphs will be explained in greater detail in later
sections.
Some persons occasionally confuse patents, copyrights, and trademarks.
Although there may be some resemblance in the rights of these three
kinds of intellectual property, they are different and serve different
purposes.
Copyrights
A copyright protects the writings of an author against copying.
Literary, dramatic, musical and artistic works are included within the
protection of the copyright law, which in some instances also confers
performing and recording rights. The copyright protects the form of
expression rather than to the subject matter of the writing. A
description of a machine could be copyrighted as a writing, but this
would only prevent others from copying the description; it would not
prevent others from writing a description of their own or from making
and using the machine. Copyrights are registered in the Copyright Office
in the Library of Congress. Information concerning copyrights may be
obtained from the Register of Copyrights, Library of Congress,
Washington, D.C. 20559. (Telephone 202–707–3000)
Trademarks/Servicemarks
A trademark or servicemark relates to any word, name, symbol or device
which is used in trade with goods or services to indicate the source or
origin of the goods or services and to distinguish them from the goods
or services of others. Trademark rights may be used to prevent others
from using a confusingly similar mark but not to prevent others from
making the same goods or from selling them under a non-confusing mark.
Similar rights may be acquired in marks used in the sale or advertising
of services (service marks). Trademarks and service marks which are used
in interstate or foreign commerce may be registered in the Patent and
Trademark Office. The procedure relating to the registration of
trademarks and some general information concerning trademarks is given
in a separate pamphlet entitled “Basic Facts About Trademarks.”
Patent Laws
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 law now in effect is 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.
The patent law specifies the subject matter for which a patent may be
obtained and the conditions for patentability. The law establishes the
Patent and Trademark Office to administer the law relating to the
granting of patents, and contains various other provisions relating to
patents.
What Can Be Patented
The patent law specifies the general field of subject matter that can be
patented and the conditions under which a patent may be obtained.
In the language of the statute, any person who “invents or discovers any
new and useful process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof, may obtain a patent,” subject
to the conditions and requirements of the law. The word “process” is
defined by law as a process, act or method, and primarily includes
industrial or technical processes. The term “machine” used in the
statute needs no explanation. The term “manufacture” refers to articles
which are made, and includes all manufactured articles. The term
“composition of matter” relates to chemical compositions and may include
mixtures of ingredients as well as new chemical compounds. These classes
of subject matter taken together include practically everything which is
made by man and the processes for making the products.
The Atomic Energy Act of 1954 excludes the patenting of inventions
useful solely in the utilization of special nuclear material or atomic
energy for atomic weapons.
The patent law specifies that the subject matter must be “useful.” The
term “useful” in this connection refers to the condition that the
subject matter has a useful purpose and also includes operativeness,
that is, a machine which will not operate to perform the intended
purpose would not be called useful, and therefore would not be granted a
patent.
Interpretations of the statute by the courts have defined the limits of
the field of subject matter which can be patented, thus it has been held
that the laws of nature, physical phenomena and abstract ideas are not
patentable subject matter.
A patent cannot be obtained upon a mere idea or suggestion. The patent
is granted upon the new machine, manufacture, etc., as has been said,
and not upon the idea or suggestion of the new machine. A complete
description of the actual machine or other subject matter for which a
patent is sought is required.
Novelty and Other Conditions for Obtaining a Patent
In order for an invention to be patentable it must be new as defined in
the patent law, which provides that an invention cannot be patented if:
“(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for patent,” or
“(b) the invention was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this country
more than one year prior to the application for patent in the United
States ...”
If the invention has been described in a printed publication anywhere in
the world, or if it has been in public use or on sale in this country
before the date that the applicant made his/her invention, a patent
cannot be obtained. If the invention has been described in a printed
publication anywhere, or has been in public use or on sale in this
country more than one year before the date on which an application for
patent is filed in this country, a patent cannot be obtained. In this
connection it is immaterial when the invention was made, or whether the
printed publication or public use was by the inventor himself/herself or
by someone else. If the inventor describes the invention in a printed
publication or uses the invention publicly, or places it on sale, he/she
must apply for a patent before one year has gone by, otherwise any right
to a patent will be lost.
Even if the subject matter sought to be patented is not exactly shown by
the prior art, and involves one or more differences over the most nearly
similar thing already known, a patent may still be refused if the
differences would be obvious. The subject matter sought to be patented
must be sufficiently different from what has been used or described
before that it may be said to be nonobvious to a person having ordinary
skill in the area of technology related to the invention. For example,
the substitution of one material for another, or changes in size, are
ordinarily not patentable.
The United States Patent and Trademark Office
Congress established the United States Patent and Trademark Office to
issue patents on behalf of the Government. The Patent and Trademark
Office as a distinct bureau may be said to date from the year 1802 when
a separate official in the Department of State who became known as
“Superintendent of Patents” was placed in charge of patents. The
revision of the patent laws enacted in 1836 reorganized the Patent and
Trademark Office and designated the official in charge as Commissioner
of Patents and Trademarks. The Patent and Trademark Office remained in
the Department of State until 1849 when it was transferred to the
Department of Interior. In 1925 it was transferred to the Department of
Commerce where it is today.
The Patent and Trademark Office administers the patent laws as they
relate to the granting of patents for inventions, and performs other
duties relating to patents. It examines applications for patents to
determine if the applicants are entitled to patents under the law and
grants the patents when they are so entitled; it publishes issued
patents and various publications concerning patents, records assignments
of patents, maintains a search room for the use of the public to examine
issued patents and records, supplies copies of records and other papers,
and the like. Similar functions are performed with respect to the
registration of trademarks. The Patent and Trademark Office has no
jurisdiction over questions of infringement and the enforcement of
patents, nor over matters relating to the promotion or utilization of
patents or inventions.
The head of the Office is the Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks, and his staff includes the
Deputy Assistant Secretary of Commerce and Deputy Commissioner of
Patents and Trademarks, several assistant commissioners, and other
officials. As head of the Office, the Commissioner superintends or
performs all duties respecting the granting and issuing of patents and
the registration of trademarks; exercises general supervision over the
entire work of the Patent and Trademark Office; prescribes the rules,
subject to the approval of the Secretary of Commerce, for the conduct of
proceedings in the Patent and Trademark Office, and for recognition of
attorneys and agents; decides various questions brought before him by
petition as prescribed by the rules; and performs other duties necessary
and required for the administration of the Patent and Trademark Office.
The work of examining applications for patents is divided among a number
of examining groups, each group having jurisdiction over certain
assigned fields of technology. Each group is headed by a group director
and staffed by examiners. The examiners review applications for patents
and determine whether patents can be granted. An appeal can be taken to
the Board of Patent Appeals and Interferences from their decisions
refusing to grant a patent, and a review by the Commissioner of Patents
and Trademarks may be had on other matters by petition. The examiners
also identify applications that claim the same invention and initiate
proceedings, known as interferences, to determine who was the first
inventor.
In addition to the examining groups, other offices perform various
services, such as receiving and distributing mail, receiving new
applications, handling sales of printed copies of patents, making copies
of records, inspecting drawings, and recording assignments.
At present, the Patent and Trademark Office has about 5,700 employees,
of whom about half are examiners and others with technical and legal
training. Patent applications are received at the rate of over 200,000
per year. The Patent and Trademark Office receives over five million
pieces of mail each year.
Publications of the Patent and Trademark Office
=U.S. Patents.=—The specification and accompanying drawings of all
patents are published on the day they are granted and printed copies are
sold to the public by the Patent and Trademark Office. Over 6,000,000
patents have been issued.
Printed copies of any patent, identified by its patent number, may be
purchased from the Patent and Trademark Office. Current fee schedule is
available by calling the PTO General Information Services at
1–800–786–9199 or 703–308–4357 or by accessing PTO’s Web site at
_http://www.uspto.gov_.
Future patents classified in subclasses containing subject matter of
interest may be obtained, as they issue, by prepayment of a deposit and
a service charge. For the cost of such subscription service, a separate
inquiry should be sent to the Patent and Trademark Office.
=Official Gazette of the United States Patent and Trademark Office.=—The
Official Gazette of the United States Patent and Trademark Office is the
official journal relating to patents and trademarks. It has been
published weekly since January 1872 (replacing the old “Patent Office
Reports”), and is now issued each Tuesday in two parts, one describing
patents and the other trademarks. It contains a claim and a selected
figure of the drawings of each patent granted on that day; notices of
patent and trademark lawsuits; indexes of patents and patentees; list of
patents available for license or sale; a list of Patent and Trademark
Depository Libraries (PTDLs); and much general information such as
orders, notices, changes in rules, changes in classification, etc. The
Official Gazette is sold on subscription and by single copies by the
Superintendent of Documents, U.S. Government Printing Office,
Washington, D.C. 20402.
The illustrations and claims of the patents are arranged in the Official
Gazette according to the Patent and Trademark Office classification of
subject matter, permitting ready reference to patents in any particular
technology. Copies of the Official Gazette are available in the PTDLs
and public libraries of other cities.
=Index of Patents.=—A two-part publication which summarizes for a given
calendar year the classification and inventor/assignee information at
the time of issue for utility, Design, Reissue, and Plant Patents;
Reexamination Certificates, and Statutory Invention Registrations
published weekly in the Official Gazette. Part I, List of Patentees
comprises an alphabetical listing of every patentee and assignee
recorded at the time the patent document was issued. Part II, Index to
Subjects of Inventions comprises a listing of all patents for the year
according to U.S. Patent Classification class and subclass designation
at the time the patent document was issued—it is not an index of
subjects, per se. Sold by the Superintendent of Documents.
=Index of Trademarks.=—An annual index of registrants of trademarks.
Sold by the Superintendent of Documents.
=Index to the U.S. Patent Classification System.=—An alphabetical list
of approximately 65,000 common, informal headings or terms which refer
to specific classes and subclasses in the Manual of Classification used
to categorize patents. It is intended as a means for initial entry into
the Classification System and should be especially useful for persons
not familiar with the system as well as those who may not be familiar
with any particular technology under study. Sold by the Superintendent
of Documents.
=Manual of Classification.=—A loose-leaf manual containing a list of all
the classes and subclasses of inventions in the Patent and Trademark
Office classification systems, a subject matter index, and other
information relating to U.S. patent classification system. Each subclass
has a short, descriptive title often arranged in a specific hierarchical
order designated by dots for indentation levels. Substitute pages are
issued from time to time. Annual subscription includes the basic manual
and substitute pages. Sold by the Superintendent of Documents.
=Classification Definitions.=—Gives a detailed definition for each class
and official subclass included in the Manual of Classification. The
definitions indicate the subject matter to be found in or excluded from
a class or subclass; they limit or expand in precise manner the meaning
intended for each subclass title; they serve as a guide to users of the
Manual of Classification to refer to the same subclass for patents on a
particular technology by eliminating, as much as possible, subjective
and varying interpretations of the meanings of subclass titles. The
“notes” illustrate the kinds of information that can be found in a
subclass and direct the searcher to other related subclasses which may
contain relevant information. Subscription service consists of a basic
full set of definitions and semiannual sets of updated definitions for
an indeterminate period. Sold by the Superintendent of Documents.
=Title 37 Code of Federal Regulations.=—Includes rules of practice for
Patents, Trademarks, and Copyrights. Available from the Superintendent
of Documents.
=Basic Facts about Trademarks.=—Contains general information for the
layman about applications for, and registration of, trademarks and
service marks. Sold by the Superintendent of Documents.
=Attorneys and Agents Registered to Practice Before the U.S. Patent and
Trademark Office.=—An alphabetical and geographical listing of patent
attorneys and agents registered to practice before the U.S. Patent and
Trademark Office. Sold by the Superintendent of Documents.
=Manual of Patent Examining Procedure (MPEP).=—A loose-leaf manual which
serves primarily as a detailed reference work on patent examining
practice and procedure for the Patent and Trademark Office’s Examining
Corps. Subscription service includes basic manual, periodic revisions,
and change notices. Sold by the Superintendent of Documents. (The MPEP
is also available in electronic form from the PTO’s Office of Electronic
Information and as an Internet information file.)
=Guide for the Preparation of Patent Drawings.=—A collection of the most
pertinent rules from Title 37 of the Code of Federal Regulations
pertaining to patent drawings with interpretations of those rules and
examples. Sold by the Superintendent of Documents.
=PTO Products and Services Catalog, Information Dissemination
Organizations (IDO).=—This compendium describes the products and
services available from the Patent and Trademark Office (PTO) and
provides ordering information. Many items are available free of charge
from the Information Dissemination Organizations (IDOs). The catalog
lists products and services available from the three IDO offices
responsible for public records; electronic products/services; general
information; PTO’s public search facilities in Arlington, Virginia; and
the network of 80 Patent and Trademark Depository Libraries (PTDLs) in
49 states, the District of Columbia, and Puerto Rico. Included is
detailed descriptions of data available on magnetic tape, diskette, or
CD-ROM. A number of products can be ordered in paper form, including PTO
forms and patent or trademark copies, as well as Technology Assessment
and Forecast (TAF) statistical reports and research publications.
Available from the PTO General Information Services at 1–800–786–9199 or
703–308–4357.
Many publications listed above, as well as other Patent and Trademark
Office products and services are available electronically from IDO or on
the PTO’s Web site. Call General Information Services for more
information at 800–786–9199 or 703–308–4357.
General Information and Correspondence
All business with the Patent and Trademark Office should be transacted
in writing and all correspondence relating to patent matters should be
addressed to “ASSISTANT COMMISSIONER FOR PATENTS, WASHINGTON, D.C.
20231.” Correspondents should be sure to include their full return
addresses, including zip codes. The principal location of the PTO is
Crystal Plaza 3, 2021 Jefferson Davis Highway, Arlington, Virginia. The
personal presence of applicants at the PTO is unnecessary.
Applicants and attorneys are required to conduct their business with
decorum and courtesy. Papers presented in violation of this requirement
will be returned.
Separate letters (but not necessarily in separate envelopes) should be
written for each distinct subject of inquiry, such as assignments,
payments, orders for printed copies of patents, orders for copies of
records, and requests for other services. None of these inquiries should
be included with letters responding to Office actions in applications.
When a letter concerns a patent application, the correspondent must
include the application number, filing date, and Group Art Unit number.
When a letter concerns a patent, it must include the name of the
patentee, the title of the invention, the patent number, and the date of
issue.
An order for a copy of an assignment must give the book and page, or
reel and frame of the record, as well as the name of the inventor;
otherwise, an additional charge is made for the time consumed in making
the search for the assignment.
Applications for patents are not open to the public, and no information
concerning them is released except on written authority of the
applicant, his/her assignee, or his/her attorney, or when necessary to
the conduct of the business of the PTO. Patents and related records,
including records of any decisions, the records of assignments other
than those relating to assignments of patent applications, books, and
other records and papers in the Office are open to the public. They may
be inspected in the Patent and Trademark Office Search Room or copies
may be ordered.
The Office cannot respond to inquiries concerning the novelty and
patentability of an invention in advance of the filing of an
application; give advice as to possible infringement of a patent; advise
of the propriety of filing an application; respond to inquiries as to
whether, or to whom, any alleged invention has been patented; act as an
expounder of the patent law or as counselor for individuals, except in
deciding questions arising before it in regularly filed cases.
Information of a general nature may be furnished either directly or by
supplying or calling attention to an appropriate publication.
Library, Search Room Services and Patent and Trademark Depository
Libraries
The Scientific and Technical Information Center of the Patent and
Trademark Office located at Crystal Plaza 3, 2C01, 2021 Jefferson Davis
Highway, Arlington, VA, has available for public use over 120,000
volumes of scientific and technical books in various languages, about
90,000 bound volumes of periodicals devoted to science and technology,
the official journals of 77 foreign patent organizations, and over 40
million foreign patents on paper, microfilm, microfiche, and CD-ROM. The
Scientific and Technical Information Center is open to the public from
8:30 a.m. to 5:00 p.m., Monday through Friday except federal holidays.
The Patent Search Room located at Crystal Plaza 3, 1A01, 2021 Jefferson
Davis Highway, Arlington, VA, is provided where the public may search
and examine United States patents granted since 1790. Patents are
arranged according to the U.S. Patent Classification System of over 400
classes and over 136,000 subclasses. By searching in these classified
groupings of patents, it is possible to determine, before actually
filing an application, whether an invention has been anticipated by a
United States patent, and it is also possible to obtain the information
contained in patents relating to any field of endeavor. The Patent
Search Room contains a set of United States patents arranged in
numerical order and a complete set of the Official Gazette.
A Files Information Room also is maintained where the public may inspect
the records and files of issued patents and other open records.
Applicants, their attorneys or agents, and the general public are not
entitled to use the records and files in the examiners’ rooms.
The Patent Search Room is open from 8 a.m. to 8 p.m. Monday through
Friday except on Federal holidays.
Since a patent is not always granted when an application is filed, many
inventors attempt to make their own search of the prior patents and
publications before applying for a patent. This may be done in the
Patent Search Room of the Patent and Trademark Office, and in libraries,
located throughout the U.S., which have been designated as Patent and
Trademark Depository Libraries (PTDLs). An inventor may make a
preliminary search through the United States patents to discover if the
particular invention or one similar to it has been shown in the prior
patent. An inventor may also employ patent attorneys or agents to
perform the preliminary search. This search is not always as complete as
that made by the Patent and Trademark Office during the examination of
an application, but only serves, as its name indicates, a preliminary
purpose. For this reason, the Patent and Trademark Office examiner may,
and often does, reject claims in an application on the basis of prior
patents or publications not found in the preliminary search.
Those who cannot come to the Patent Search Room may order from the
Patent and Trademark Office copies of lists of original patents or of
cross-referenced patents contained in the subclasses comprising the
field of search, or may inspect and obtain copies of the patents at a
Patent and Trademark Depository Library. The Patent and Trademark
Depository Libraries (PTDLs) receive current issues of U.S. Patents and
maintain collections of earlier issued patents and trademark
information. The scope of these collections varies from library to
library, ranging from patents of only recent years to all or most of the
patents issued since 1790.
These patent collections are open to public use. Each of the PTDLs, in
addition, offers the publications of the U.S. Patent Classification
System (e.g., Manual of Classification, Index to the U.S. Patent
Classification System, Classification Definitions, etc.) and other
patent documents and forms, and provides technical staff assistance in
their use to aid the public in gaining effective access to information
contained in patents. The collections are organized in patent number
sequence.
Available in all PTDLs is the Cassis CD-ROM system. With various files,
it permits the effective identification of appropriate classifications
to search, provides numbers of patents assigned to a classification to
facilitate finding the patents in a numerical file of patents, provides
the current classification(s) of all patents, permits word searching on
classification titles, and on abstracts, and provides certain
bibliographic information on more recently issued patents.
Facilities for making paper copies from microfilm, the paper bound
volumes or CD-ROM are generally provided for a fee.
Due to variations in the scope of patent collections among the PTDLs and
in their hours of service to the public, anyone contemplating the use of
the patents at a particular library is advised to contact that library,
in advance, about its collection, services, and hours, so as to avert
possible inconvenience.
──────────────────────────────────────────────────────────────────────
State Name of Library Telephone #
──────────────────────────────────────────────────────────────────────
Alabama * Auburn: Ralph Brown 334–844–1747
Draughon Library, Auburn
University
Birmingham Public Library 205–226–3620
──────────────────────────────────────────────────────────────────────
Alaska Anchorage: Z. J. Loussac 907–562–7323
Public Library,
Anchorage Municipal
Libraries
──────────────────────────────────────────────────────────────────────
Arizona * Tempe: Noble Science and 602–965–7010
Engineering
Library, Arizona State
University
──────────────────────────────────────────────────────────────────────
Arkansas * Little Rock: Arkansas 501–682–2053
State Library
──────────────────────────────────────────────────────────────────────
California * Los Angeles Public Library 213–228–7220
Sacramento: California State 916–654–0069
Library
San Diego Public Library 619–236–5813
* San Francisco Public 415–557–4500
Library
** Sunnyvale Center for 408–730–7290
Innovation, Invention and
Ideas
──────────────────────────────────────────────────────────────────────
Colorado Denver Public Library 303–640–6220
──────────────────────────────────────────────────────────────────────
Delaware Newark: University of 302–831–2965
Delaware Library
──────────────────────────────────────────────────────────────────────
District of Columbia Washington: Founders 202–806–7252
Library, Howard University
──────────────────────────────────────────────────────────────────────
Florida * Fort Lauderdale: Broward 954–357–7444
County Main Library
* Miami-Dade Public Library 305–375–2665
Orlando: University of 407–823–2562
Central Florida Libraries
Tampa Campus Library, 813–974–2726
University of South
Florida
──────────────────────────────────────────────────────────────────────
Georgia Atlanta: Library and 404–894–4508
Information Center,
Georgia Institute of
Technology
──────────────────────────────────────────────────────────────────────
Hawaii * Honolulu: Hawaii State 808–586–3477
Library
──────────────────────────────────────────────────────────────────────
Idaho Moscow: University of Idaho 208–885–6235
Library
──────────────────────────────────────────────────────────────────────
Illinois Chicago Public Library 312–747–4450
Springfield: Illinois State 217–782–5659
Library
──────────────────────────────────────────────────────────────────────
Indiana Indianapolis-Marion County 317–269–1741
Public Library
West Lafayette: Siegesmund 317–494–2872
Engineering Library,
Purdue University
──────────────────────────────────────────────────────────────────────
Iowa Des Moines: State Library of 515–281–4118
Iowa
──────────────────────────────────────────────────────────────────────
Kansas * Wichita: Ablah Library, 316–978–3155
Wichita State University
──────────────────────────────────────────────────────────────────────
Kentucky * Louisville Free Public 502–574–1611
Library
──────────────────────────────────────────────────────────────────────
Louisiana Baton Rouge: Troy H. 504–388–8875
Middleton Library,
Louisiana State University
──────────────────────────────────────────────────────────────────────
Maine Orono: Raymond H. Fogler 207–581–1678
Library, University of
Maine
──────────────────────────────────────────────────────────────────────
Maryland College Park: Engineering & 301–405–9157
Physical Sciences Library,
University of Maryland
──────────────────────────────────────────────────────────────────────
Massachusetts Amherst: Physical Sciences 413–545–1370
and Engineering Library,
University of
Massachusetts
* Boston Public Library 617–536–5400
Ext. 265
──────────────────────────────────────────────────────────────────────
Michigan Ann Arbor: Media Union 313–647–5735
Library, The University of
Michigan
Big Rapids: Abigail S. Timme 616–592–3602
Library, Ferris State
University
** Detroit: Great Lakes 313–833–3379
Patent and Trademark
Center, Detroit Public
Library
──────────────────────────────────────────────────────────────────────
Minnesota * Minneapolis Public Library 612–372–6570
and Information Center
──────────────────────────────────────────────────────────────────────
Mississippi Jackson: Mississippi Library 601–359–1036
Commission
──────────────────────────────────────────────────────────────────────
Missouri * Kansas City: Linda Hall 816–363–4600
Library
St. Louis Public Library 314–241–2288
Ext. 390
──────────────────────────────────────────────────────────────────────
Montana Butte: Montana Tech of the 406–496–4281
University of Montana
Library
──────────────────────────────────────────────────────────────────────
Nebraska * Lincoln: Engineering 402–472–3411
Library, University of
Nebraska-Lincoln
──────────────────────────────────────────────────────────────────────
Nevada Reno: University Library, 702–784–6500
University of Nevada-Reno Ext. 257
──────────────────────────────────────────────────────────────────────
New Hampshire Concord: New Hampshire State 603–271–2239
Library
──────────────────────────────────────────────────────────────────────
New Jersey Newark Public Library 201–733–7782
Piscataway: Library of 908–445–2895
Science and Medicine,
Rutgers University
──────────────────────────────────────────────────────────────────────
New Mexico Albuquerque: Centennial 505–277–4412
Science and Engineering
Library, The University of
New Mexico
──────────────────────────────────────────────────────────────────────
New York Albany: New York State 518–474–5355
Library
* Buffalo and Erie County 716–858–7101
Public Library
New York: Science, Industry 212–592–7000
and Business Library, New
York Public Library
──────────────────────────────────────────────────────────────────────
North Carolina * Raleigh: D.H. Hill 919–515–3280
Library, North Carolina
State University
──────────────────────────────────────────────────────────────────────
North Dakota Grand Forks: Chester Fritz 701–777–4888
Library, University of
North Dakota
──────────────────────────────────────────────────────────────────────
Ohio Akron-Summit County Public 330–643–9075
Library
Cincinnati: The Public 513–369–6936
Library of Cincinnati and
Hamilton County
* Cleveland Public Library 216–623–2870
Columbus: Ohio State 614–292–6175
University Libraries
* Toledo/Lucas County Public 419–259–5212
Library
──────────────────────────────────────────────────────────────────────
Oklahoma * Stillwater: Oklahoma State 405–744–7086
University
──────────────────────────────────────────────────────────────────────
Oregon * Portland: Lewis & Clark 503–768–6786
College
──────────────────────────────────────────────────────────────────────
Pennsylvania * Philadelphia: The Free 215–686–5331
Library of Philadelphia
Pittsburgh: The Carnegie 412–622–3138
Library of Pittsburgh
University Park: Pattee 814–865–4861
Library, Pennsylvania
State University
──────────────────────────────────────────────────────────────────────
Puerto Rico Mayaguez: General Library, 787–832–4040
University of Puerto Rico Ext. 3459
──────────────────────────────────────────────────────────────────────
Rhode Island Providence Public Library 401–455–8027
──────────────────────────────────────────────────────────────────────
South Carolina Clemson: R.M. Cooper 864–656–3024
Library, Clemson
University
──────────────────────────────────────────────────────────────────────
South Dakota Rapid City: Devereaux 605–394–1275
Library, South Dakota
School of Mines &
Technology
──────────────────────────────────────────────────────────────────────
Tennessee Memphis & Shelby County 901–725–8877
Public Library and
Information Center
Nashville: Stevenson Science 615–322–2717
and Engineering Library,
Vanderbilt University
──────────────────────────────────────────────────────────────────────
Texas Austin: McKinney Engineering 512–495–4500
Library, The University of
Texas at Austin
* College Station: Sterling 409–845–3826
C. Evans Library, Texas
A&M University
* Dallas Public Library 214–670–1468
Houston: The Fondren 713–527–8101
Library, Rice University Ext. 2587
Lubbock: Texas Tech 806–742–2282
University Library
──────────────────────────────────────────────────────────────────────
Utah * Salt Lake City: Marriott 801–581–8394
Library, University of
Utah
──────────────────────────────────────────────────────────────────────
Vermont Burlington: Bailey Howe 802–656–2542
Library, University of
Vermont
──────────────────────────────────────────────────────────────────────
Virginia * Richmond: James Branch 804–828–1104
Cabell Library, Virginia
Commonwealth University
──────────────────────────────────────────────────────────────────────
Washington * Seattle: Engineering 206–543–0740
Library, University of
Washington
──────────────────────────────────────────────────────────────────────
West Virginia Morgantown: Evansdale 304–293–2510
Library, West Virginia Ext. 113
University
──────────────────────────────────────────────────────────────────────
Wisconsin Madison: Kurt F. Wendt 608–262–6845
Library, University of
Wisconsin-Madison
Milwaukee Public Library 414–286–3051
──────────────────────────────────────────────────────────────────────
Wyoming Casper: Natrona County 307–237–4935
Public Library
──────────────────────────────────────────────────────────────────────
_Note: * Denotes APS-Text access; ** denotes partnership PTDL.
Partnership Libraries have access to APS-Text, APS-Image, and
X-Search._
Attorneys and Agents
The preparation of an application for patent and the conducting of the
proceedings in the Patent and Trademark Office to obtain the patent is
an undertaking requiring the knowledge of patent law and rules and
Patent and Trademark Office practice and procedures, as well as
knowledge of the scientific or technical matters involved in the
particular invention.
Inventors may prepare their own applications and file them in the Patent
and Trademark Office and conduct the proceedings themselves, but unless
they are familiar with these matters or study them in detail, they may
get into considerable difficulty. While a patent may be obtained in many
cases by persons not skilled in this work, there would be no assurance
that the patent obtained would adequately protect the particular
invention.
Most inventors employ the services of registered patent attorneys or
patent agents. The law gives the Patent and Trademark Office the power
to make rules and regulations governing conduct and the recognition of
patent attorneys and agents to practice before the Patent and Trademark
Office. Persons who are not recognized by the Patent and Trademark
Office for this practice are not permitted by law to represent inventors
before the Patent and Trademark Office.
The Patent and Trademark Office maintains a register of attorneys and
agents. To be admitted to this register, a person must comply with the
regulations prescribed by the Office, which require a showing that the
person is of good moral character and of good repute and that he/she has
the legal, and scientific and technical qualifications necessary to
render applicants for patents a valuable service. Certain of these
qualifications must be demonstrated by the passing of an examination.
Those admitted to the examination must have a college degree in
engineering or physical science or the equivalent of such a degree.
The Patent and Trademark Office registers both attorneys at law and
persons who are not attorneys at law. The former persons are now
referred to as “patent attorneys” and the latter persons are referred to
as “patent agents.” Insofar as the work of preparing an application for
a patent and conducting the prosecution in the Patent and Trademark
Office is concerned, patent agents are usually just as well qualified as
patent attorneys, although patent agents cannot conduct patent
litigation in the courts or perform various services which the local
jurisdiction considers as practicing law. For example, a patent agent
could not draw up a contract relating to a patent, such as an assignment
or a license, if the state in which he/she resides considers drafting
contracts as practicing law.
Some individuals and organizations that are not registered advertise
their services in the fields of patent searching and invention marketing
and development. Such individuals and organizations cannot represent
inventors before the Patent and Trademark Office. They are not subject
to Patent and Trademark Office discipline, and the Office cannot assist
inventors in dealing with them.
The Patent and Trademark Office cannot recommend any particular attorney
or agent, or aid in the selection of an attorney or agent, as by
stating, in response to inquiry that a named patent attorney, agent, or
firm, is “reliable” or “capable.” The Patent and Trademark Office
publishes a directory of all registered patent attorneys and agents who
have indicated their availability to accept new clients, arranged by
states, cities, and foreign countries. The Directory may be purchased in
paper form from the Government Printing Office or from the PTO’s Office
of Electronic Information on the Cassis ASSIST CD-ROM disc. It is also
available on the PTO Web site.
The telephone directories of most large cities have, in the classified
section, a heading for patent attorneys under which those in that area
are listed. Many large cities have associations of patent attorneys.
In employing a patent attorney or agent, the inventor executes a power
of attorney or authorization of agent which must be filed in the Patent
and Trademark Office and is usually a part of the application papers.
When an attorney or agent has been appointed, the Office does not
communicate with the inventor directly but conducts the correspondence
with the attorney or agent since he/she is acting for the inventor
thereafter although the inventor is free to contact the Patent and
Trademark Office concerning the status of his/her application. The
inventor may remove the attorney or agent by revoking the power of
attorney or authorization of agent.
The Patent and Trademark Office has the power to disbar, or suspend from
practicing before it, persons guilty of gross misconduct, etc., but this
can only be done after a full hearing with the presentation of clear and
convincing evidence concerning the misconduct. The Patent and Trademark
Office will receive and, in appropriate cases, act upon complaints
against attorneys and agents. The fees charged to inventors by patent
attorneys and agents for their professional services are not subject to
regulation by the Patent and Trademark Office. Definite evidence of
overcharging may afford basis for Patent and Trademark Office action,
but the Office rarely intervenes in disputes concerning fees.
Disclosure Document
One of the services provided for inventors is the acceptance and
preservation by the Patent and Trademark Office for a two year period of
papers signed by the inventor(s) disclosing an invention. This
disclosure is accepted as evidence of the dates of conception of the
invention. The Disclosure Document will be retained for two years and
then be destroyed unless it is referred to in a separate letter in a
related patent application within those two years.
Disclosure Documents may also be filed at selected Patent and Trademark
Depository Libraries (PTDLs), presently including the Sunnyvale (CA)
Center for Innovation, Invention and Ideas and Great Lakes Patent and
Trademark Center at the Detroit (MI) Public Library. A listing of PTDLs
is included in this pamphlet under the heading “Library, Search Room
Searches and Patent and Trademark Depository Libraries.” One copy of the
document is kept at the PTDL and the original documents are sent to the
Patent and Trademark Office for fee collection, processing and
retention. Disclosure Documents are kept in confidence by the PTO.
The Disclosure Document is not a patent application and the date of its
receipt in the PTO does not become the effective filing date of any
patent application subsequently filed. The benefits provided by the
document will depend upon the adequacy of the disclosure and therefore,
it is recommended that the Disclosure Document be a clear and complete
explanation of the manner and process of making and using the invention.
When the nature of the invention permits, a drawing or sketch should be
included.
A fee must accompany the disclosure. See the current fee schedule. To
facilitate the PTO’s electronic data capture and storage of the
Disclosure Document, it must be on white paper having dimensions not to
exceed 8½ x 11 inches (21.6 X 28.0 cm) with each page numbered. Text and
drawings must be sufficiently dark to permit reproduction with commonly
used office copying machines. Oversized papers, even if foldable to the
above dimensions will not be accepted.
Attachments such as videotapes and working models will not be accepted
and will be returned.
The Disclosure Document must be accompanied by a separate signed cover
letter stating that it is submitted by, or on behalf of, the inventor(s)
and requesting that the material be received into the Disclosure
Document Program. The original submission will not be returned. A notice
with an identifying number and date of receipt in the PTO will be mailed
to the customer, indicating that the Disclosure Document may be relied
upon only as evidence and that a patent application should be diligently
filed if patent protection is desired.
A brochure on Disclosure Documents is available by calling the PTO
General Information Services at 1–800–786–9199 or 703–308–4357.
Who May Apply for a Patent
According to the law, only the inventor may apply for a patent, with
certain exceptions. If a person who is not the inventor should apply for
a patent, the patent, if it were obtained, would be invalid. The person
applying in such a case who falsely states that he/she is the inventor
would also be subject to criminal penalties. If the inventor is dead,
the application may be made by legal representatives, that is, the
administrator or executor of the estate. If the inventor is insane, the
application for patent may be made by a guardian. If an inventor refuses
to apply for a patent or cannot be found, a joint inventor or a person
having a proprietary interest in the invention may apply on behalf of
the non-signing inventor.
If two or more persons make an invention jointly, they apply for a
patent as joint inventors. A person who makes a financial contribution
is not a joint inventor and cannot be joined in the application as an
inventor. It is possible to correct an innocent mistake in erroneously
omitting an inventor or in erroneously naming a person as an inventor.
Officers and employees of the Patent and Trademark Office are prohibited
by law from applying for a patent or acquiring, directly or indirectly,
except by inheritance or bequest, any patent or any right or interest in
any patent.
Application For Patent
Non-Provisional Application for a Patent
A non-provisional application for a patent is made to the Assistant
Commissioner for Patents and includes:
(1) A written document which comprises a specification (description and
claims), and an oath or declaration;
(2) A drawing in those cases in which a drawing is necessary; and
(3) The filing fee. See the fee schedule.
All application papers must be in the English language or accompanied by
a verified translation into the English language along with the required
fee set forth in 37 CFR 1.17(k). All application papers must be legibly
written either by a typewriter or mechanical printer in permanent dark
ink or its equivalent in portrait orientation on flexible, strong,
smooth, non-shiny, durable and white paper.
The papers must be presented in a form having sufficient clarity and
contrast between the paper and the writing to permit electronic
reproduction. The application papers must all be the same size—either
21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8½ by 11
inches), with a top margins of at least 2.0 cm (¾ inch), a left side
margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0
cm (¾ inch) and a bottom margin of at least 2.0 cm (¾ inch) with no
holes made in the submitted papers. It is also required that the spacing
on all papers be 1½ or double spaced and the application papers must be
numbered consecutively (centrally located above or below the text)
starting with page one.
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 set, 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.
It is 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.
All applications received in the PTO are numbered in serial order and
the applicant will be informed of the application serial number and
filing date by a filing receipt.
The filing date of an application for patent is the date on which the
names of the inventors, a specification (including claims) and any
required drawings are received in the PTO; or the date on which the last
part completing the application are received in the case of a previously
incomplete or defective application.
Provisional Application for a Patent
Since June 8, 1995, the PTO has offered inventors the option of filing a
provisional application for patent which was designed to provide a lower
cost first patent filing in the United States and to give U.S.
applicants parity with foreign applicants. Claims and oath or
declaration are NOT required for a provisional application. Provisional
application provides the means to establish an early effective filing
date in a patent application and permits the term “Patent Pending” to be
applied in connection with the invention. Provisional applications may
not be filed for design inventions. The filing date of a provisional
application is the date on which a written description of the invention,
drawings if necessary, and the name of the inventor(s) are received in
the PTO. To be complete, a provisional application must also include the
filing fee, and a cover sheet specifying that the application is a
provisional application for patent. Applicant would then have up to
twelve months to file a non-provisional application for patent as
described above. The claimed subject matter in the later filed
non-provisional application is entitled to the benefit of the filing
date of the provisional application if it has support in the provisional
application.
Provisional applications are not examined on their merits. A provisional
application will become abandoned by the operation of law twelve months
from its filing date. The twelve month pendency for a provisional
application is not counted toward the 20 year term of a patent granted
on a subsequently filed non-provisional application which relies on the
filing date of the provisional application.
A surcharge is required for filing the basic filing fee or the cover
sheet on a date later than the filing of the provisional application.
A brochure on Provisional Application for Patent is available by calling
the PTO General Information Services at 1–800–786–9199 or 703–308–4357
or by accessing PTO’s Web site at _http://www.uspto.gov_.
Oath or Declaration, Signature
The oath or declaration of the applicant is required by law for a
non-provisional application. The 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 allegations required by law and various allegations
required by the Patent and Trademark Office rules. 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 as part of the original application for a patent involving designs,
plants, and other patentable inventions; for reissue patents; when
claiming matter originally shown or described but not originally
claimed; or when filing a divisional or continuing application. A
declaration does not need to be notarized.
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, of each
inventor are required. The post office address and citizenship of each
inventor are also required.
Sample forms are available by calling the PTO General Information
Services at 800–786–9199 or 703–308–4357 or by accessing PTO Web site at
_http://www.uspto.gov_ under the section titled “PTO Forms.”
The papers in a complete application will not be returned for any
purpose whatsoever, nor will the filing fee be returned. If applicants
have not preserved copies of the papers, the Office will furnish copies
for a fee.
Filing Fees[1]
Footnote 1:
Please Note: The fees are current as of the revision date. Fees are
subject to change in October of each year and should therefore be
verified before submission to the PTO. A fee schedule may be obtained
by writing to Commissioner of Patents and Trademarks, Washington, D.C.
20231—Attention: General Information Services or by calling the
General Information Services at 800–786–9199 or 703–308–4357 or from
the PTO Web site at _http://www.uspto.gov_.
The filing fee of a non-provisional application, except in design and
plant cases, consists of a basic fee and additional fees. The basic fee
entitles the applicant to present twenty (20) claims, including not more
than three (3) in independent form. An additional fee is required for
each claim in independent form which is in excess of three (3) and an
additional fee is required for each claim (whether independent or
dependent) which is in excess of a total of twenty (20) claims. If the
application contains multiple dependent claims, additional fees are
required.
If the owner of the invention is a small entity, (an independent
inventor, a small business concern or a non-profit organization), the
filing fees are reduced by half if the small entity files a verified
statement claiming small entity status.
To avoid errors in the payment of fees it is suggested that the table in
the enclosed patent application transmittal letter be utilized to
calculate the fee payment.
In calculating fees, a claim is in singularly dependent form if it
incorporates by reference a single preceding claim which may be an
independent or a dependent claim. A multiple dependent claim or any
claim depending therefrom shall be considered as separate dependent
claims in accordance with the number of claims to which reference is
made.
The law also provides for the payment of additional fees on presentation
of additional claims after the application is filed. When an amendment
is filed which presents additional claims over the total number already
paid for, or additional independent claims over the number of
independent claims already accounted for, it must be accompanied by any
additional fees due.
Specification
(Description and Claims)
The following order of arrangement should be observed in framing the
application:
(a) Application transmittal form.
(b) Fee transmittal form.
(c) Title of the Invention.
(d) Cross Reference to related applications (if any).
(e) Statement of federally sponsored research/development (if any).
(f) Reference to a microfiche appendix (if any).
(g) Background of the Invention.
(h) Brief Summary of the Invention.
(i) Brief description of the several views of the drawing (if any).
(j) Detailed Description of the Invention.
(k) Claim or claims.
(1) Abstract of the disclosure.
(m) Drawings (if any).
(n) Executed oath or declaration.
(o) Sequence listing (if any).
(p) Plant Color Coding Sheet (applicable in plant patent applications).
The specification must include a written description of the invention
and of the manner and process of making and using it, and is required to
be in such full, clear, concise, and exact terms as to enable any person
skilled in the technological area to which the invention pertains, or
with which it is most nearly connected, to make and use the same.
The specification must set forth the precise invention for which a
patent is solicited, in such manner as to distinguish it from other
inventions and from what is old. It must describe completely a specific
embodiment of the process, machine, manufacture, composition of matter,
or improvement invented, and must explain the mode of operation or
principle whenever applicable. The best mode contemplated by the
inventor for carrying out the invention must be set forth.
In the case of an improvement, the specification must particularly point
out the part or parts of the process, machine, manufacture, or
composition of matter to which the improvement relates, and the
description should be confined to the specific improvement and to such
parts as necessarily cooperate with it or as may be necessary to a
complete understanding or description of it.
The title of the invention, which should be as short and specific as
possible, should appear as a heading on the first page of the
specification, if it does not otherwise appear at the beginning of the
application.
A brief abstract of the technical disclosure in the specification
including that which is new in the art to which the invention pertains,
must be set forth on a separate page immediately following the claims.
The abstract should be in the form of a single paragraph of 250 words or
less, under the heading “Abstract of the Disclosure.”
A brief summary of the invention indicating its nature and substance,
which may include a statement of the object of the invention should
precede the detailed description. The summary should be commensurate
with the invention as claimed and any object recited should be that of
the invention as claimed.
When there are drawings, there shall be a brief description of the
several views of the drawings, and the detailed description of the
invention shall refer to the different views by specifying the numbers
of the figures, and to the different parts by use of reference numerals.
The specification must conclude with a claim or claims particularly
pointing out and distinctly claiming the subject matter which 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 and which questions of infringement
are judged by the courts.
More than one claim may be presented provided they differ substantially
from each other and are not unduly multiplied. One or more claims may be
presented in dependent form, referring back to and further limiting
another claim or claims in the same application. Any dependent claim
which refers back to more than one other claim is considered a “multiple
dependent claim.”
Multiple dependent claims shall refer to such other claims in the
alternative only. A multiple dependent claim shall not serve as a basis
for any other multiple dependent claim. Claims in dependent form shall
be construed to include all of the limitations of the claim incorporated
by reference into the dependent claim. A multiple dependent claim shall
be construed to incorporate all the limitations of each of the
particular claims in relation to which it is being considered.
The claim or claims must conform to the invention as set forth in the
remainder of the specification and the terms and phrases used in the
claims must find clear support or antecedent basis in the description so
that the meaning of the terms in the claims may be ascertainable by
reference to the description.
Drawing
The applicant for a patent will be required by law to furnish a drawing
of the invention whenever the nature of the case requires a drawing to
understand the invention. However, the Commissioner may require a
drawing where the nature of the subject matter admits of it; this
drawing must be filed with the application. This includes practically
all inventions except compositions of matter or processes, but a drawing
may also be useful in the case of many processes.
The drawing must show every feature of the invention specified in the
claims, and is required by the Office rules to be in a particular form.
The Office specifies the size of the sheet on which the drawing is made,
the type of paper, the margins, and other details relating to the making
of the drawing. The reason for specifying the standards in detail is
that the drawings are printed and published in a uniform style when the
patent issues, and the drawings must also be such that they can be
readily understood by persons using the patent descriptions.
No names or other identification will be permitted within the “sight” of
the drawing, and applicants are expected to use the space above and
between the hole locations to identify each sheet of drawings. This
identification may consist of the attorney’s name and docket number or
the inventor’s name and case number and may include the sheet number and
the total number of sheets filed (for example, “sheet 2 of 4”). The
following rule, reproduced from title 37 of the Code of Federal
Regulations, relates to the standards for drawings:
§ 1.84 Standards for drawings.
(a) =Drawings.= There are two acceptable categories for presenting
drawings in utility patent applications:
(1) _Black ink._ Black and white drawings are normally required. India
ink, or its equivalent that secures solid black lines, must be used for
drawings, or
(2) _Color._ On rare occasions, color drawings may be necessary as the
only practical medium by which to disclose the subject matter sought to
be patented in a utility patent application or the subject matter of a
statutory invention registration. The Patent and Trademark Office will
accept color drawings in utility patent applications and statutory
invention registrations only after granting a petition filed under this
paragraph explaining why the color drawings are necessary. Any such
petition must include the following:
(i) The appropriate fee set forth in 37 CFR 1.17(h);
(ii) Three (3) sets of color drawings; and
(iii) The specification must contain the following language as the first
paragraph in that portion of the specification relating to the brief
description of the drawing:
“_The file of this patent contains at least one drawing executed in
color. Copies of this patent with color drawing(s) will be provided by
the Patent and Trademark Office upon request and payment of the
necessary fee._”
If the language is not in the specification, a proposed amendment to
insert the language must accompany the petition.
(b) =Photographs.=
(1) _Black and white._ Photographs are not ordinarily permitted in
utility and design patent applications. However, the Office will accept
photographs in utility and design patent applications only after
granting a petition filed under this paragraph which requests that
photographs be accepted. Any such petition must include the following:
(i) The appropriate fee set forth in 37 CFR 1.17(h); and
(ii) Three (3) sets of photographs.
Photographs must either be developed on double weight photographic paper
or be permanently mounted on Bristol board. The photographs must be of
sufficient quality so that all details in the drawing are reproducible
in the printed patent.
(2) _Color._ Color photographs will be accepted in utility patent
applications if the conditions for accepting color drawings have been
satisfied. See paragraph (a)(2) of this section.
(c) =Identification of drawings.= Identifying indicia, if provided,
should include the application number or the title of the invention,
inventor’s name, docket number (if any), and the name and telephone
number of a person to call if the Office is unable to match the drawings
to the proper application. This information should be placed on the back
of each sheet of drawings a minimum distance of 1.5 cm. (⅝ inch) down
from the top of the page. In addition, a reference to the application
number, or, if an application number has not been assigned, the
inventor’s name, may be included in the left-hand corner provided that
the reference appears within 1.5 cm. (9⁄16 inch) from the top of the
sheet.
(d) =Graphic forms in drawings.= Chemical or mathematical formulae,
tables, and waveforms may be submitted as drawings and are subject to
the same requirements as drawings. Each chemical or mathematical formula
must be labeled as a separate figure, using brackets when necessary, to
show that information is properly integrated. Each group of waveforms
must be presented as a single figure, using a common vertical axis with
time extending along the horizontal axis. Each individual waveform
discussed in the specification must be identified with a separate letter
designation adjacent to the vertical axis.
(e) =Type of paper.= Drawings submitted to the Office must be made on
paper which is flexible, strong, white, smooth, non-shiny, and durable.
All sheets must be free from cracks, creases, and folds. Only one side
of the sheet shall be used for the drawing. Each sheet must be
reasonably free from erasures and must be free from alterations,
overwritings, and interlineations. Photographs must either be developed
on double weight photographic paper or be permanently mounted on Bristol
board. See paragraph (b) of this section for other requirements for
photographs.
(f) =Size of paper.= All drawing sheets in an application must be the
same size. One of the shorter sides of the sheet is regarded as its top.
The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8½ by 11 inches).
(g) =Margins.= The sheets must not contain frames around the sight;
i.e., the usable surface, but should have scan target points, i.e.,
cross-hairs, printed on two catercorner margin corners. Each sheet must
include a top margin of at least 2.5 cm. (1 inch), a left side margin of
at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (9⁄16
inch), and a bottom margin of at least 1.0 cm. (⅜ inch), thereby leaving
a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm.
(DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. by
24.4 cm. (6‑15⁄16 by 9⅝ inches) on 21.6 cm. by 27.9 cm. (8½ by 11 inch)
drawing sheets.
(h) =Views.= The drawing must contain as many views as necessary to show
the invention. The views may be plan, elevation, section, or perspective
views. Detail views of portions of elements, on a larger scale if
necessary, may also be used. All views of the drawing must be grouped
together and arranged on the sheet(s) without wasting space, preferably
in an upright position, clearly separated from one another, and must not
be included in the sheets containing the specifications, claims, or
abstract. Views must not be connected by projection lines and must not
contain center lines. Waveforms of electrical signals may be connected
by dashed lines to show the relative timing of the waveforms.
(1) _Exploded views._ Exploded views, with the separated parts embraced
by a bracket, to show the relationship or order of assembly of various
parts are permissible. When an exploded view is shown in a figure which
is on the same sheet as another figure, the exploded view should be
placed in brackets.
(2) _Partial views._ When necessary, a view of a large machine or device
in its entirety may be broken into partial views on a single sheet, or
extended over several sheets if there is no loss in facility of
understanding the view. Partial views drawn on separate sheets must
always be capable of being linked edge to edge so that no partial view
contains parts of another partial view. A smaller scale view should be
included showing the whole formed by the partial views and indicating
the positions of the parts shown. When a portion of a view is enlarged
for magnification purposes, the view and the enlarged view must each be
labeled as separate views.
(i) Where views on two or more sheets form, in effect, a single complete
view, the views on the several sheets must be so arranged that the
complete figure can be assembled without concealing any part of any of
the views appearing on the various sheets.
(ii) A very long view may be divided into several parts placed one above
the other on a single sheet. However, the relationship between the
different parts must be clear and unambiguous.
(3) _Sectional views._ The plane upon which a sectional view is taken
should be indicated on the view from which the section is cut by a
broken line. The ends of the broken line should be designated by Arabic
or Roman numerals corresponding to the view number of the sectional
view, and should have arrows to indicate the direction of sight.
Hatching must be used to indicate section portions of an object, and
must be made by regularly spaced oblique parallel lines spaced
sufficiently apart to enable the lines to be distinguished without
difficulty. Hatching should not impede the clear reading of the
reference characters and lead lines. If it is not possible to place
reference characters outside the hatched area, the hatching may be
broken off wherever reference characters are inserted. Hatching must be
at a substantial angle to the surrounding axes or principal lines,
preferably 45°. A cross section must be set out and drawn to show all of
the materials as they are shown in the view from which the cross section
was taken. The parts in cross section must show proper material(s) by
hatching with regularly spaced parallel oblique strokes, the space
between strokes being chosen on the basis of the total area to be
hatched. The various parts of a cross section of the same item should be
hatched in the same manner and should accurately and graphically
indicate the nature of the material(s) that is illustrated in cross
section. The hatching of juxtaposed different elements must be angled in
a different way. In the case of large areas, hatching may be confined to
an edging drawn around the entire inside of the outline of the area to
be hatched. Different types of hatching should have different
conventional meanings as regards the nature of a material seen in cross
section.
(4) _Alternate position._ A moved position may be shown by a broken line
superimposed upon a suitable view if this can be done without crowding;
otherwise, a separate view must be used for this purpose.
(5) _Modified forms._ Modified forms of construction must be shown in
separate views.
(i) =Arrangement of views.= One view must not be placed upon another or
within the outline of another. All views on the same sheet should stand
in the same direction and, if possible, stand so that they can be read
with the sheet held in an upright position. If views wider than the
width of the sheet are necessary for the clearest illustration of the
invention, the sheet may be turned on its side so that the top of the
sheet, with the appropriate top margin to be used as the heading space,
is on the right-hand side. Words must appear in a horizontal,
left-to-right fashion when the page is either upright or turned so that
the top becomes the right side, except for graphs utilizing standard
scientific convention to denote the axis of abscissas (of X) and the
axis of ordinates (of Y).
(j) =View for Official Gazette.= One of the views should be suitable for
publication in the Official Gazette as the illustration of the
invention.
(k) =Scale.=
(1) The scale to which a drawing is made must be large enough to show
the mechanism without crowding when the drawing is reduced in size to
two-thirds in reproduction. Views of portions of the mechanism on a
larger scale should be used when necessary to show details clearly. Two
or more sheets may be used if one does not give sufficient room. The
number of sheets should be kept to a minimum.
(2) When approved by the examiner, the scale of the drawing may be
graphically represented. Indications such as “actual size” or “scale ½”
on the drawings, are not permitted, since these lose their meaning with
reproduction in a different format.
(3) Elements of the same view must be in proportion to each other,
unless a difference in proportion is indispensable for the clarity of
the view. Instead of showing elements in different proportion, a
supplementary view may be added giving a larger-scale illustration of
the element of the initial view. The enlarged element shown in the
second view should be surrounded by a finely drawn or “dot-dash” circle
in the first view indicating its location without obscuring the view.
(l) =Character of lines, numbers, and letters.= All drawings must be
made by a process which will give them satisfactory reproduction
characteristics. Every line, number, and letter must be durable, clean,
black (except for color drawings), sufficiently dense and dark, and
uniformly thick and well-defined. The weight of all lines and letters
must be heavy enough to permit adequate reproduction. This requirement
applies to all lines however fine, to shading, and to lines representing
cut surfaces in sectional views. Lines and strokes of different
thicknesses may be used in the same drawing where different thicknesses
have a different meaning.
(m) =Shading.= The use of shading in views is encouraged if it aids in
understanding the invention and if it does not reduce legibility.
Shading is used to indicate the surface or shape of spherical,
cylindrical, and conical elements of an object. Flat parts may also be
lightly shaded. Such shading is preferred in the case of parts shown in
perspective, but not for cross sections. See paragraph (h)(3) of this
section. Spaced lines for shading are preferred. These lines must be
thin, as few in number as practicable, and they must contrast with the
rest of the drawings. As a substitute for shading, heavy lines on the
shade side of objects can be used except where they superimpose on each
other or obscure reference characters. Light should come from the upper
left corner at an angle of 45°. Surface delineations should preferably
be shown by proper shading. Solid black shading areas are not permitted,
except when used to represent bar graphs or color.
(n) =Symbols.= Graphical drawing symbols may be used for conventional
elements when appropriate. The elements for which such symbols and
labeled representations are used must be adequately identified in the
specification. Known devices should be illustrated by symbols which have
a universally recognized conventional meaning and are generally accepted
in the art. Other symbols which are not universally recognized may be
used, subject to approval by the Office, if they are not likely to be
confused with existing conventional symbols, and if they are readily
identifiable.
(o) =Legends.= Suitable descriptive legends may be used, or may be
required by the Examiner, where necessary for understanding of the
drawing, subject to approval by the Office. They should contain as few
words as possible.
(p) =Numbers, Letters, and reference characters.=
(1) Reference characters (numerals are preferred), sheet numbers, and
view numbers must be plain and legible, and must not be used in
association with brackets or inverted commas, or enclosed within
outlines, e.g., encircled. They must be oriented in the same direction
as the view so as to avoid having to rotate the sheet. Reference
characters should be arranged to follow the profile of the object
depicted.
(2) The English alphabet must be used for letters, except where another
alphabet is customarily used, such as the Greek alphabet to indicate
angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at least .32
cm. (⅛ inch) in height. They should not be placed in the drawing so as
to interfere with its comprehension. Therefore, they should not cross or
mingle with the lines. They should not be placed upon hatched or shaded
surfaces. When necessary, such as indicating a surface or cross section,
a reference character may be underlined and a blank space may be left in
the hatching or shading where the character occurs so that it appears
distinct.
(4) The same part of an invention appearing in more than one view of the
drawing must always be designated by the same reference character, and
the same reference character must never be used to designate different
parts.
(5) Reference characters not mentioned in the description shall not
appear in the drawings. Reference characters mentioned in the
description must appear in the drawings.
(q) Lead lines. Lead lines are those lines between the reference
characters and the details referred to. Such lines may be straight or
curved and should be as short as possible. They must originate in the
immediate proximity of the reference character and extend to the feature
indicated. Lead lines must not cross each other. Lead lines are required
for each reference character except for those which indicate the surface
or cross section on which they are placed. Such a reference character
must be underlined to make it clear that a lead line has not been left
out by mistake. Lead lines must be executed in the same way as lines in
the drawing. See paragraph (1) of this section.
(r) =Arrows.= Arrows may be used at the ends of lines, provided that
their meaning is clear, as follows:
(1) On a lead line, a freestanding arrow to indicate the entire section
towards which it points;
(2) On a lead line, an arrow touching a line to indicate the surface
shown by the line looking along the direction of the arrow; or
(3) To show the direction of movement.
(s) =Copyright or Mask Work Notice.= A copyright or mask work notice may
appear in the drawing, but must be placed within the sight of the
drawing immediately below the figure representing the copyright or mask
work material and be limited to letters having a print size of .32 cm.
to .64 cm. (⅛ to ¼ inches) high. The content of the notice must be
limited to only those elements provided for by law. For example, “e1983
John Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be
properly limited and, under current statutes, legally sufficient notices
of copyright and mask work, respectively. Inclusion of a copyright or
mask work notice will be permitted only if the authorization language
set forth in w 1.71(e) is included at the beginning (preferably as the
first paragraph) of the specification.
(t) =Numbering of sheets of drawings.= The sheets of drawings should be
numbered in consecutive Arabic numerals, starting with 1, within the
sight as defined in paragraph (g) of this section. These numbers, if
present, must be placed in the middle of the top of the sheet, but not
in the margin. The numbers can be placed on the right-hand side if the
drawing extends too close to the middle of the top edge of the usable
surface. The drawing sheet numbering must be clear and larger than the
numbers used as reference characters to avoid confusion. The number of
each sheet should be shown by two Arabic numerals placed on either side
of an oblique line, with the first being the sheet number and the second
being the total number of sheets of drawings, with no other marking.
(u) =Numbering of views.=
(1) The different views must be numbered in consecutive Arabic numerals,
starting with 1, independent of the numbering of the sheets and, if
possible, in the order in which they appear on the drawing sheet(s).
Partial views intended to form one complete view, on one or several
sheets, must be identified by the same number followed by a capital
letter. View numbers must be preceded by the abbreviation “FIG.” Where
only a single view is used in an application to illustrate the claimed
invention, it must not be numbered and the abbreviation “FIG.” must not
appear.
(2) Numbers and letters identifying the views must be simple and clear
and must not be used in association with brackets, circles, or inverted
commas. The view numbers must be larger than the numbers used for
reference characters.
(v) =Security markings.= Authorized security markings may be placed on
the drawings provided they are outside the sight, preferably centered in
the top margin.
(w) =Corrections.= Any corrections on drawings submitted to the Office
must be durable and permanent.
(x) =Holes.= No holes should be made by applicant in the drawing sheets.
The requirements relating to drawings are strictly enforced, but a
drawing not complying with all of the regulations may be accepted for
purpose of examination, and correction or a new drawing will be required
later.
Applicants are advised to employ competent draftsmen to make their
drawings.
Models, Exhibits, Specimens
Models are not required in most patent applications since the
description of the invention in the specification and the drawings must
be sufficiently full, clear, and complete and capable of being
understood to disclose the invention without the aid of a model. A model
will not be admitted unless specifically requested by the examiner.
A working model, or other physical exhibit, may be required by the
Office if deemed necessary. This is not done very often. A working model
may be requested in the case of applications for patent for alleged
perpetual motion devices.
When the invention relates to a composition of matter, the applicant may
be required to furnish specimens of the composition, or of its
ingredients or intermediates, for inspection or experiment. If the
invention is a microbiological invention, a deposit of the
micro-organism involved is required.
Examination of Applications and Proceedings in the Patent and Trademark
Office
Applications, other than provisional applications, filed in the Patent
and Trademark Office and accepted as complete applications are assigned
for examination to the respective examining groups having charge of the
areas of technology related to the invention. In the examining group,
applications are taken up for examination by the examiner to whom they
have been assigned in the order in which they have been filed or in
accordance with examining procedures established by the Commissioner.
Applications will not be advanced out of turn for examination or for
further action except as provided by the rules, or upon order of the
Commissioner to expedite the business of the Office, or upon a verified
showing which, in the opinion of the Commissioner, will justify
advancing them.
The examination of the application consists of a study of the
application for compliance with the legal requirements and a search
through United States patents, foreign patent documents, and available
literature, to see if the claimed invention is new and nonobvious. A
decision is reached by the examiner in the light of the study and the
result of the search.
As a result of the examination by the Office, patents are granted in the
case of about two out of every three applications for patents which are
filed.
Office Action
The applicant is notified in writing of the examiner’s decision by an
“action” which is normally mailed to the attorney or agent of record.
The reasons for any adverse action or any objection or requirement are
stated in the action and such information or references are given as may
be useful in aiding the applicant to judge the propriety of continuing
the prosecution of his/her application.
If the claimed invention is not directed to patentable subject matter,
the claims will be rejected. If the examiner finds that the claimed
invention lacks novelty or differs only in an obvious manner from what
is found in the prior art, the claims may also be rejected. It is not
uncommon for some or all of the claims to be rejected on the first
office action by the examiner, relatively few applications are allowed
as filed.
Applicant’s Response
The applicant must request reconsideration in writing, and must
distinctly and specifically point out the supposed errors in the
examiner’s action. The applicant must respond to every ground of
objection and rejection in the prior Office action (except that a
request may be made that objections or requirements as to form not
necessary to further consideration of the claims be held in abeyance
until allowable subject matter is indicated). The applicant’s action
must appear throughout to be a bona fide attempt to advance the case to
final action. The mere allegation that the examiner has erred will not
be received as a proper reason for such reconsideration.
In amending an application in response to a rejection, the applicant
must clearly point out why he/she thinks the amended claims are
patentable in view of the state of the art disclosed by the prior
references cited or the objections made. He/she must also show how the
claims as amended avoid such references or objections.
After response by the applicant the application will be reconsidered,
and the applicant will be notified as to the status of the claims, that
is, whether the claims are rejected, or objected to, or whether the
claims are allowed, in the same manner as after the first examination.
The second Office action usually will be made final.
Final Rejection
On the second or later consideration, the rejection or other action may
be made final. The applicant’s response is then limited to appeal in the
case of rejection of any claim and further amendment is restricted.
Petition may be taken to the Commissioner in the case of objections or
requirements not involved in the rejection of any claim. Response to a
final rejection or action must include cancellation of, or appeal from
the rejection of, each claim so rejected and, if any claim stands
allowed, compliance with any requirement or objection as to form.
In making such final rejection, the examiner repeats or states all
grounds of rejection then considered applicable to the claims in the
application.
Interviews with examiners may be arranged, but an interview does not
remove the necessity for response to Office actions within the required
time, and the action of the Office is based solely on the written
record.
Restrictions
If two or more inventions are claimed in a single application, and are
regarded by the Office to be of such a nature that a single patent
should not be issued for both of them, the applicant will be required to
limit the application to one of the inventions. The other invention may
be made the subject of a separate application which, if filed while the
first application is still pending, will be entitled to the benefit of
the filing date of the first application. A requirement to restrict the
application to one invention may be made before further action by the
examiner.
Amendments to Application
Following are some details concerning amendments to the application:
The applicant may amend before or after the first examination and action
as specified in the rules, or when and as specifically required by the
examiner.
After final rejection or action, amendments may be made canceling claims
or complying with any requirement of form which has been made but the
admission of any such amendment or its refusal, and any proceedings
relative thereto, shall not operate to relieve the application from its
condition as subject to appeal or to save it from abandonment.
If amendments touching the merits of the application are presented after
final rejection, or after appeal has been taken, or when such amendment
might not otherwise be proper, they may be admitted upon a showing of
good and sufficient reasons why they are necessary and were not earlier
presented.
No amendment can be made as a matter of right in appealed cases. After
decision on appeal, amendments can only be made as provided in the
rules.
The specifications, claims, and drawing must be amended and revised when
required, to correct inaccuracies of description and definition or
unnecessary words, and to secure correspondence between the claims, the
description, and the drawing.
All amendments of the drawings or specifications, and all additions
thereto must not include new matter beyond the original disclosure.
Matter not found in either, involving a departure from or an addition to
the original disclosure, cannot be added to the application even though
supported by a supplemental oath or declaration, and can be shown or
claimed only in a separate application.
The claims may be amended by canceling particular claims, by presenting
new claims, or by amending the language of particular claims (such
amended claims being in effect new claims). In presenting new or amended
claims, the applicant must point out how they avoid any reference or
ground rejection of record which may be pertinent.
Erasures, additions, insertions, or alterations of the papers and
records must not be made by the applicant. Amendments are made by filing
a paper, directing or requesting that specified changes or additions be
made. The exact word or words to be stricken out or inserted in the
application must be specified and the precise point indicated where the
deletion or insertion is to be made.
Amendments are “entered” by the Office by making the proposed deletions
by drawing a line in red ink through the word or words canceled and by
making the proposed substitutions or insertions in red ink. Small
insertions are written in at the designated place and larger insertions
are indicated by reference.
No change in the drawing may be made except by permission of the Office.
Changes in the construction shown in any drawing may be made only by
submitting new drawings. A sketch in permanent ink showing proposed
changes, to become part of the record, must be filed for approval by the
Office before the new drawings are filed. The paper requesting
amendments to the drawing should be separate from other papers.
If the number or nature of the amendments render it difficult to
consider the case, or to arrange the papers for printing or copying, the
examiner may require the entire specification or claims, or any part
thereof, to be rewritten.
The original numbering of the claims must be preserved throughout the
prosecution. When claims are canceled, the remaining claims must not be
renumbered. When claims are added by amendment or substituted for
canceled claims, they must be numbered by the applicant consecutively
beginning with the number next following the highest numbered claim
previously presented. When the application is ready for allowance, the
examiner, if necessary, will renumber the claims consecutively in the
order in which they appear or in such order as may have been requested
by applicant.
Time for Response and Abandonment
The response of an applicant to an action by the Office must be made
within a prescribed time limit. The maximum period for response is set
at 6 months by the statute which also provides that the Commissioner may
shorten the time for reply to not less than 30 days. The usual period
for response to an Office action is 3 months. A shortened time for reply
may be extended up to the maximum 6–month period. An extension of time
fee is normally required to be paid if the response period is extended.
The amount of the fee is dependent upon the length of the extension. If
no reply is received within the time period, the application is
considered as abandoned and no longer pending. However, if it can be
shown that the failure to prosecute was unavoidable or unintentional,
the application may be revived by the Commissioner. The revival requires
a petition to the Commissioner, and a fee for the petition, which should
be filed without delay. The proper response must also accompany the
petition if it has not yet been filed.
Appeal to the Board of Patent Appeals and Interferences and to the
Courts
If the examiner persists in the rejection of any of the claims in an
application, or if the rejection has been made final, the applicant may
appeal to the Board of Patent Appeals and Interferences in the Patent
and Trademark Office. The Board of Patent Appeals and Interferences
consists of the Commissioner of Patents and Trademarks, the Deputy
Commissioner, the Assistant Commissioners, and the administrative patent
judges, but normally each appeal is heard by only three members. An
appeal fee is required and the applicant must file a brief to support
his/her position. An oral hearing will be held if requested upon payment
of the specified fee.
As an alternative to appeal, in situations where an applicant desires
consideration of different claims or further evidence, a new
continuation application is often filed. The new application requires a
filing fee and should submit the claims and evidence for which
consideration is desired. If it is filed before expiration of the period
for appeal and specific reference is made therein to the earlier
application, applicant will be entitled to the earlier filing date for
subject matter common to both applications.
If the decision of the Board of Patent Appeals and Interferences is
still adverse to the applicant, an appeal may be taken to the Court of
Appeals for the Federal Circuit or a civil action may be filed against
the Commissioner in the United States District Court for the District of
Columbia. The Court of Appeals for the Federal Circuit will review the
record made in the Office and may affirm or reverse the Office’s action.
In a civil action, the applicant may present testimony in the court, and
the court will make a decision.
Interferences
Occasionally two or more applications are filed by different inventors
claiming substantially the same patentable invention. The patent can
only be granted to one of them, and a proceeding known as an
“interference” is instituted by the Office to determine who is the first
inventor and entitled to the patent. About one percent of the
applications filed become involved in an interference proceeding.
Interference proceedings may also be instituted between an application
and a patent already issued, provided the patent has not been issued for
more than one year prior to the filing of the conflicting application,
and provided that the conflicting application is not barred from being
patentable for some other reason.
Each party to such a proceeding must submit evidence of facts proving
when the invention was made. In view of the necessity of proving the
various facts and circumstances concerning the making of the invention
during an interference, inventors must be able to produce evidence to do
this. If no evidence is submitted a party is restricted to the date of
filing the application as his/her earliest date. The priority question
is determined by a board of three administrative patent judges on the
evidence submitted. From the decision of the Board of Patent Appeals and
Interferences, the losing party may appeal to the Court of Appeals for
the Federal Circuit or file a civil action against the winning party in
the appropriate United States district court.
The terms “conception of the invention” and “reduction to practice” are
encountered in connection with priority questions. Conception of the
invention refers to the completion of the devising of the means for
accomplishing the result. Reduction to practice refers to the actual
construction of the invention in physical form: in the case of a machine
it includes the actual building of the machine, in the case of an
article or composition it includes the actual making of the article or
composition, in the case of a process it includes the actual carrying
out of the steps of the process. Actual operation, demonstration, or
testing for the intended use is also usually necessary. The filing of a
regular application for patent completely disclosing the invention is
treated as equivalent to reduction to practice. The inventor who proves
to be the first to conceive the invention and the first to reduce it to
practice will be held to be the prior inventor, but more complicated
situations cannot be stated this simply.
Allowance and Issue of Patent
If, on examination of the application, or at a later stage during the
reconsideration of the application, the patent application is found to
be allowable, a notice of allowance will be sent to the applicant, or to
applicant’s attorney or agent of record, if any, and a fee for issuing
the patent is due within three months from the date of the notice. If
timely payment of the issue fee is not made, the application will be
regarded as abandoned. See current fee schedule.
A provision is made in the statute whereby the Commissioner may accept
the fee late, when the delay is shown to be unavoidable. When the issue
fee is paid, the patent issues as soon as possible after the date of
payment, dependent upon the volume of printing on hand. The patent grant
then is delivered or mailed on the day of its grant, or as soon
thereafter as possible, to the inventor’s attorney or agent if there is
one of record, otherwise directly to the inventor. On the date of the
grant, the patent file becomes open to the public. Printed copies of the
specification and drawing are available on the same date.
In case the publication of an invention by the granting of a patent
would be detrimental to the national defense, the patent law gives the
Commissioner the power to withhold the grant of the patent and to order
the invention kept secret for such period of time as the national
interest requires.
Nature of Patent and Patent Rights
The patent is issued in the name of the United States under the seal of
the Patent and Trademark Office, and is either signed by the
Commissioner of Patents and Trademarks or has his name written thereon
and attested by an Office official. The patent contains a grant to the
patentee, and a printed copy of the specification and drawing is annexed
to the patent and forms a part of it. The grant confers “the right to
exclude others from making, using, offering for sale or selling the
invention throughout the United States or importing the invention into
the United States” and its territories and possessions for which the
term of the patent shall be 20 years from the date on which the
application for the patent was filed in the United States or, if the
application contains a specific reference to an earlier filed
application under 35 U.S.C. 120, 121 or 365(c), from the date of the
earliest such application was filed, and subject to the payment of
maintenance fees as provided by law.
The exact nature of the right conferred must be carefully distinguished,
and the key is in the words “right to exclude” in the phrase just
quoted. The patent does not grant the right to make, use, offer for sale
or sell or import the invention but only grants the exclusive nature of
the right. Any person is ordinarily free to make, use, offer for sale or
sell or import anything he/she pleases, and a grant from the Government
is not necessary. The patent only grants the right to exclude others
from making, using, offering for sale or selling or importing the
invention. Since the patent does not grant the right to make, use, offer
for sale, or sell, or import the invention, the patentee’s own right to
do so is dependent upon the rights of others and whatever general laws
might be applicable. A patentee, merely because he/she has received a
patent for an invention, is not thereby authorized to make, use, offer
for sale, or sell, or import the invention if doing so would violate any
law. An inventor of a new automobile who has obtained a patent thereon
would not be entitled to use the patented automobile in violation of the
laws of a State requiring a license, nor may a patentee sell an article,
the sale of which may be forbidden by a law, merely because a patent has
been obtained.
Neither may a patentee make, use, offer for sale, or sell, or import
his/her own invention if doing so would infringe the prior rights of
others. A patentee may not violate the Federal antitrust laws, such as
by resale price agreements or entering into combination in restraints of
trade, or the pure food and drug laws, by virtue of having a patent.
Ordinarily there is nothing which prohibits a patentee from making,
using, offering for sale, or selling, or importing his/her own
invention, unless he/she thereby infringes another’s patent which is
still in force.
The term of the patent shall be 20 years from the date on which the
application for the patent was filed in the United States or, if the
application contains a specific reference to an earlier filed
application under 35 U.S.C. 120, 121 or 365(c), from the date of the
earliest such application was filed, and subject to the payment of
maintenance fees as provided by law. A maintenance fee is due 3½, 7½ and
11½ years after the original grant for all patents issuing from the
applications filed on and after December 12, 1980. The maintenance fee
must be paid at the stipulated times to maintain the patent in force.
After the patent has expired anyone may make, use, offer for sale or
sell or import the invention without permission of the patentee,
provided that matter covered by other unexpired patents is not used. The
terms may be extended for certain Pharmaceuticals and for certain
circumstances as provided by law.
Maintenance Fees
All utility patents which issue from applications filed on and after
December 12, 1980 are subject to the payment of maintenance fees which
must be paid to maintain the patent in force. These fees are due at 3½,
7½ and 11½ years from the date the patent is granted and can be paid
without a surcharge during the “window-period” which is the six month
period preceding each due date, e.g., 3 years to 3 years and six months.
(See fee schedule for a list of maintenance fees.)
Failure to pay the current maintenance fee on time may result in
expiration of the patent. A 6–month grace period is provided when the
maintenance fee may be paid with a surcharge. The grace period is the
6–month period immediately following the due date. The Patent and
Trademark Office does not mail notices to patent owners that maintenance
fees are due. If, however, the maintenance fee is not paid on time,
efforts are made to remind the responsible party that the maintenance
fee may be paid during the grace period with a surcharge.
Patents relating to some pharmaceutical inventions may be extended by
the Commissioner for up to five years to compensate for marketing delays
due to Federal premarketing regulatory procedures. Patents relating to
all other types of inventions may be extended for certain circumstances
as provided by law.
Correction of Patents
Once the patent is granted, it is outside the jurisdiction of the Patent
and Trademark Office except in a few respects. The Office may issue
without charge a certificate correcting a clerical error it has made in
the patent when the printed patent does not correspond to the record in
the Office. These are mostly corrections of typographical errors made in
printing. Some minor errors of a typographical nature made by the
applicant may be corrected by a certificate of correction for which a
fee is required. The patentee may disclaim one or more claims of his/her
patent by filing in the Office a disclaimer as provided by the statute.
When the patent is defective in certain respects, the law provides that
the patentee may apply for a reissue patent. This is a patent granted to
replace the original and is granted only for the balance of the
unexpired term. However, the nature of the changes that can be made by
means of the reissue are rather limited; new matter cannot be added.
Any person may file a request for reexamination of a patent, along with
the required fee, on the basis of prior art consisting of patents or
printed publications. At the conclusion of the reexamination
proceedings, a certificate setting forth the results of the
reexamination proceeding is issued.
Assignments and Licenses
A patent is personal property and may be sold to others or mortgaged; it
may be bequeathed by a will, and it may pass to the heirs of a deceased
patentee. The patent law provides for the transfer or sale of a patent,
or of an application for patent, by an instrument in writing. Such an
instrument is referred to as an assignment and may transfer the entire
interest in the patent. The assignee, when the patent is assigned to him
or her, becomes the owner of the patent and has the same rights that the
original patentee had.
The statute also provides for the assignment of a part interest, that
is, a half interest, a fourth interest, etc., in a patent. There may
also be a grant which conveys the same character of interest as an
assignment but only for a particularly specified part of the United
States.
A mortgage of patent property passes ownership thereof to the mortgagee
or lender until the mortgage has been satisfied and a retransfer from
the mortgagee back to the mortgagor, the borrower, is made. A
conditional assignment also passes ownership of the patent and is
regarded as absolute until canceled by the parties or by the decree of a
competent court.
An assignment, grant, or conveyance of any patent or application for
patent should be acknowledged before a notary public or officer
authorized to administer oaths or perform notarial acts. The certificate
of such acknowledgment constitutes prima facie evidence of the execution
of the assignment, grant, or conveyance.
Recording of Assignments
The Office records assignments, grants, and similar instruments sent to
it for recording, and the recording serves as notice. If an assignment,
grant, or conveyance of a patent or an interest in a patent (or an
application for patent) is not recorded in the Office within three
months from its date, it is void against a subsequent purchaser for a
valuable consideration without notice, unless it is recorded prior to
the subsequent purchase.
An instrument relating to a patent should identify the patent by number
and date (the name of the inventor and title of the invention as stated
in the patent should also be given). An instrument relating to an
application should identify the application by its application number
and date of filing, the name of the inventor, and title of the invention
as stated in the application should also be given. Sometimes an
assignment of an application is executed at the same time that the
application is prepared and before it has been filed in the Office. Such
assignment should adequately identify the application, as by its date of
execution and name of the inventor and title of the invention, so that
there can be no mistake as to the application intended.
If an application has been assigned and the assignment is recorded, on
or before the date the issue fee is paid, the patent will be issued to
the assignee as owner. If the assignment is of a part interest only, the
patent will be issued to the inventor and assignee as joint owners.
Joint Ownership
Patents may be owned jointly by two or more persons as in the case of a
patent granted to joint inventors, or in the case of the assignment of a
part interest in a patent. Any joint owner of a patent, no matter how
small the part interest, may make, use, offer for sale and sell and
import the invention for his or her own profit provided they do not
infringe another’s patent rights, without regard to the other owners,
and may sell the interest or any part of it, or grant licenses to
others, without regard to the other joint owner, unless the joint owners
have made a contract governing their relation to each other. It is
accordingly dangerous to assign a part interest without a definite
agreement between the parties as to the extent of their respective
rights and their obligations to each other if the above result is to be
avoided. The owner of a patent may grant licenses to others. Since the
patentee has the right to exclude others from making, using, offering
for sale or selling or importing the invention, no one else may do any
of these things without his/her permission. A patent license agreement
is in essence nothing more than a promise by the licensor not to sue the
licensee. No particular form of license is required; a license is a
contract and may include whatever provisions the parties agree upon,
including the payment of royalties, etc.
The drawing up of a license agreement (as well as assignments) is within
the field of an attorney at law. Such attorney should be familiar with
patent matters as well. A few States have prescribed certain formalities
to be observed in connection with the sale of patent rights.
Infringement of Patents
Infringement of a patent consists of the unauthorized making, using,
offering for sale or selling any patented invention within the United
States or United States Territories, or importing into the United States
of any patented invention during the term of the patent. If a patent is
infringed, the patentee may sue for relief in the appropriate Federal
court. The patentee may ask the court for an injunction to prevent the
continuation of the infringement and may also ask the court for an award
of damages because of the infringement. In such an infringement suit,
the defendant may raise the question of the validity of the patent,
which is then decided by the court. The defendant may also aver that
what is being done does not constitute infringement. Infringement is
determined primarily by the language of the claims of the patent and, if
what the defendant is making does not fall within the language of any of
the claims of the patent, there is no literal infringement.
Suits for infringement of patents follow the rules of procedure of the
Federal courts. From the decision of the district court, there is an
appeal to the Court of Appeals for the Federal Circuit. The Supreme
Court may thereafter take a case by writ of certiorari. If the United
States Government infringes a patent, the patentee has a remedy for
damages in the United States Court of Federal Claims. The Government may
use any patented invention without permission of the patentee, but the
patentee is entitled to obtain compensation for the use by or for the
Government.
The Office has no jurisdiction over questions relating to infringement
of patents. In examining applications for patent, no determination is
made as to whether the invention sought to be patented infringes any
prior patent. An improvement invention may be patentable, but it might
infringe a prior unexpired patent for the invention improved upon, if
there is one.
Patent Marking and “Patent Pending”
A patentee who makes or sells patented articles, or a person who does so
for or under the patentee is required to mark the articles with the word
“Patent” and the number of the patent. The penalty for failure to mark
is that the patentee may not recover damages from an infringer unless
the infringer was duly notified of the infringement and continued to
infringe after the notice.
The marking of an article as patented when it is not in fact patented is
against the law and subjects the offender to a penalty. Some persons
mark articles sold with the terms “Patent Applied For” or “Patent
Pending.” These phrases have no legal effect, but only give information
that an application for patent has been filed in the Patent and
Trademark Office. The protection afforded by a patent does not start
until the actual grant of the patent. False use of these phrases or
their equivalent is prohibited.
Design Patents
The patent laws provide for the granting of design patents to any person
who has invented any new, original and ornamental design for an article
of manufacture. The design patent protects only the appearance of an
article, and not its structure or utilitarian features. The proceedings
relating to granting of design patents are the same as those relating to
other patents with a few differences.
See current fee schedule for the filing fee for a design application. A
design patent has a term of 14 years from grant, and no fees are
necessary to maintain a design patent in force. If on examination it is
determined that an applicant is entitled to a design patent under the
law, a notice of allowance will be sent to the applicant or applicant’s
attorney, or agent, calling for the payment of an issue fee.
The drawing of the design patent conforms to the same rules as other
drawings, but no reference characters are required.
The specification of a design application is short and ordinarily
follows a set form. Only one claim is permitted, following a set form.
Plant Patents
The law also provides for the granting of a patent to anyone who has
invented or discovered and asexually reproduced any distinct and new
variety of plant, including cultivated sports, mutants, hybrids, and
newly found seedlings, other than a tuber-propagated plant or a plant
found in an uncultivated state.
Asexually propagated plants are those that are reproduced by means other
than from seeds, such as by the rooting of cuttings, by layering,
budding, grafting, inarching, etc.
With reference to tuber-propagated plants, for which a plant patent
cannot be obtained, the term “tuber” is used in its narrow horticultural
sense as meaning a short, thickened portion of an underground branch.
Such plants covered by the term “tuber-propagated” are the Irish potato
and the Jerusalem artichoke.
An application for a plant patent consists of the same parts as other
applications with the addition of a plant color coding sheet. The term
of a plant patent shall be 20 years from the date on which the
application for the patent was filed in the United States or, if the
application contains a specific reference to an earlier filed
application under 35 U.S.C. 120, 121 or 365(c), from the date of the
earliest such application was filed.
The application papers for a plant patent and any responsive papers
pursuant to the prosecution must be filed in duplicate but only one need
be signed (in the case of the application papers the original should be
signed); the second copy may be a legible copy of the original. The
reason for providing an original and duplicate file is that the
duplicate file is sent to the Agricultural Research Service, Department
of Agriculture for an advisory report on the plant variety.
The specification should include a complete detailed description of the
plant and the characteristics thereof that distinguish the same over
related known varieties, and its antecedents, expressed in botanical
terms in the general form followed in standard botanical text books or
publications dealing with the varieties of the kind of plant involved
(evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather
than a mere broad non-botanical characterization such as commonly found
in nursery or seed catalogs. The specification should also include the
origin or parentage of the plant variety sought to be patented and must
particularly point out where and in what manner the variety of plant has
been asexually reproduced. Where color is a distinctive feature of the
plant, the color should be positively identified in the specification by
reference to a designated color as given by a recognized color
dictionary. Where the plant variety originated as a newly found
seedling, the specification must fully describe the conditions
(cultivation, environment, etc.) under which the seedling was found
growing to establish that it was not found in an uncultivated state.
A plant patent is granted on the entire plant. It therefore follows that
only one claim is necessary and only one is permitted.
The oath or declaration required of the applicant in addition to the
statements required for other applications must include the statement
that the applicant has asexually reproduced the new plant variety.
Plant patent drawings are not mechanical drawings and should be
artistically and competently executed. The drawing must disclose all the
distinctive characteristics of the plant capable of visual
representation. When color is a distinguishing characteristic of the new
variety, the drawing must be in color. Two duplicate copies of color
drawings must be submitted. All color drawings should be so mounted as
to provide a 2–inch margin at the top for office markings when the
patent is printed.
Specimens of the plant variety, its flower or fruit, should not be
submitted unless specifically called for by the examiner.
The filing fee on each plant application and the issue fee can be found
in the fee schedule. For a qualifying small entity filing and issue fees
are reduced by half.
All inquiries relating to plant patents and pending plant patent
applications should be directed to the Patent and Trademark Office and
not to the Department of Agriculture.
The Plant Variety Protection Act (Public Law 91–577), approved December
24, 1970, provides for a system of protection for sexually reproduced
varieties, for which protection was not previously provided, under the
administration of a Plant Variety Protection Office within the
Department of Agriculture. Requests for information regarding the
protection of sexually reproduced varieties should be addressed to
Commissioner, Plant Variety Protection Office, Agricultural Marketing
Service, National Agricultural Library Bldg., Room 500, 10301 Baltimore
Blvd., Beltsville, Md. 20705–2351.
Treaties and Foreign Patents
Since the rights granted by a United States patent extend only
throughout the territory of the United States and have no effect in a
foreign country, an inventor who wishes patent protection in other
countries must apply for a patent in each of the other countries or in
regional patent offices. Almost every country has its own patent law,
and a person desiring a patent in a particular country must make an
application for patent in that country, in accordance with the
requirements of that country.
The laws of many countries differ in various respects from the patent
law of the United States. In most foreign countries, publication of the
invention before the date of the application will bar the right to a
patent. In most foreign countries maintenance fees are required. Most
foreign countries require that the patented invention must be
manufactured in that country after a certain period, usually three
years. If there is no manufacture within this period, the patent may be
void in some countries, although in most countries the patent may be
subject to the grant of compulsory licenses to any person who may apply
for a license.
There is a treaty relating to patents which is adhered to by 140
countries, including the United States, and is known as the Paris
Convention for the Protection of Industrial Property. It provides that
each country guarantees to the citizens of the other countries the same
rights in patent and trademark matters that it gives to its own
citizens. The treaty also provides for the right of priority in the case
of patents, trademarks and industrial designs (design patents). This
right means that, on the basis of a regular first application filed in
one of the member countries, the applicant may, within a certain period
of time, apply for protection in all the other member countries. These
later applications will then be regarded as if they had been filed on
the same day as the first application. Thus, these later applicants will
have priority over applications for the same invention which may have
been filed during the same period of time by other persons. Moreover,
these later applications, being based on the first application, will not
be invalidated by any acts accomplished in the interval, such as, for
example, publication or exploitation of the invention, the sale of
copies of the design, or use of the trademark. The period of time
mentioned above, within which the subsequent applications may be filed
in the other countries, is 12 months in the case of first applications
for patent and six months in the case of industrial designs and
trademarks.
Another treaty, known as the Patent Cooperation Treaty, was negotiated
at a diplomatic conference in Washington, D.C., in June of 1970. The
treaty came into force on January 24, 1978, and is presently adhered to
by over 90 countries, including the United States. The treaty
facilitates the filing of applications for patent on the same invention
in member countries by providing, among other things, for centralized
filing procedures and a standardized application format.
The timely filing of an international application affords applicants an
international filing date in each country which is designated in the
international application and provides (1) a search of the invention and
(2) a later time period within which the national applications for
patent must be filed.
A number of patent attorneys specialize in obtaining patents in foreign
countries. In general, an inventor should be satisfied that he/she could
make some profit from foreign patents or that there is some particular
reason for obtaining them, before he/she attempts to apply for foreign
patents.
Under United States law it is necessary, in the case of inventions made
in the United States, to obtain a license from the Commissioner of
Patents and Trademarks before applying for a patent in a foreign
country. Such a license is required if the foreign application is to be
filed before an application is filed in the United States or before the
expiration of six months from the filing of an application in the United
States. The filing of an application for patent constitutes the request
for a license and the granting or denial of such request is indicated in
the filing receipt mailed to each applicant. After six months from the
United States filing, a license is not required unless the invention has
been ordered to be kept secret. If the invention has been ordered to be
kept secret, the consent to the filing abroad must be obtained from the
Commissioner of Patents and Trademarks during the period the order of
secrecy is in effect.
Foreign Applicants for United States Patents
The patent laws of the United States make no discrimination with respect
to the citizenship of the inventor. Any inventor, regardless of his/her
citizenship, may apply for a patent on the same basis as a U.S. citizen.
There are, however, a number of particular points of special interest to
applicants located in foreign countries.
The application for patent in the United States must be made by the
inventor and the inventor must sign the oath or declaration (with
certain exceptions), differing from the law in many countries where the
signature of the inventor and an oath of inventorship are not necessary.
If the inventor is dead, the application may be made by his/her executor
or administrator, or equivalent, and in the case of mental disability it
may be made by his/her legal representative (guardian).
No United States patent can be obtained if the invention was patented
abroad before applying in the United States by the inventor or his/her
legal representatives or assigns on an application filed more than 12
months before filing in the United States. Six months are allowed in the
case of a design patent.
An application for a patent filed in the United States by any person who
has previously regularly filed an application for a patent for the same
invention in a foreign country which affords similar privileges to
citizens of the United States shall have the same force and effect for
the purpose of overcoming intervening acts of others as if filed in the
United States on the date on which the application for a patent for the
same invention was first filed in such foreign country. This is the
case, provided the application in the United States is filed within 12
months (six months in the case of a design patent) from the earliest
date on which any such foreign application was filed. A copy of the
foreign application certified by the patent office of the country in
which it was filed is required to secure this right of priority.
If any application for patent has been filed in any foreign country by
the applicant or by his/her legal representatives or assigns prior to
his/her application in the United States, the applicant must, in the
oath or declaration accompanying the application, state the country in
which the earliest such application has been filed, giving the date of
filing the application. All applications filed more than a year before
the filing in the United States must also be recited in the oath or
declaration.
An oath or declaration must be made with respect to every application.
When the applicant is in a foreign country the oath or affirmation may
be before any diplomatic or consular officer of the United States, or
before any officer having an official seal and authorized to administer
oaths in the foreign country, whose authority shall be proved by a
certificate of a diplomatic or consular officer of the United States.
The oath is attested in all cases by the proper official seal of the
officer before whom the oath is made.
When the oath is taken before an officer in the country foreign to the
United States, all the application papers (except the drawing) must be
attached together and a ribbon passed one or more times through all the
sheets of the application, and the ends of the ribbons brought together
under the seal before the latter is affixed and impressed, or each sheet
must be impressed with the official seal of the officer before whom the
oath was taken.
If the application is filed by the legal representative (executor,
administrator, etc.) of a deceased inventor, the legal representative
must make the oath or declaration.
When a declaration is used, the ribboning procedure is not necessary,
nor is it necessary to appear before an official in connection with the
making of a declaration.
A foreign applicant may be represented by any patent attorney or agent
who is registered to practice before the United States Patent and
Trademark Office.
Answers to Questions Frequently Asked
1. Q. What do the terms “patent pending” and “patent applied for” mean?
A. They are used by a manufacturer or seller of an article to inform the
public that an application for patent on that article is on file in the
Patent and Trademark Office. The law imposes a fine on those who use
these terms falsely to deceive the public.
2. Q. Is there any danger that the Patent and Trademark Office will give
others information contained in my application while it is pending?
A. No. All patent applications are maintained in the strictest secrecy
until the patent is issued. After the patent is issued, however, the
Office file containing the application and all correspondence leading up
to issuance of the patent is made available in the Files Information
Room for inspection by anyone and copies of these files may be purchased
from the Office.
3. Q. May I write to the Patent and Trademark Office directly about my
application after it is filed?
A. The Office will answer an applicant’s inquiries as to the status of
the application, and inform you whether your application has been
rejected, allowed, or is awaiting action. However, if you have a patent
attorney or agent of record in the application file the Office will not
correspond with both you and the attorney/agent concerning the merits of
your application. All comments concerning your application should be
forwarded through your attorney or agent.
4. Q. Is it necessary to go to the Patent and Trademark Office to
transact business concerning patent matters?
A. No; most business with the Office is conducted by correspondence.
Interviews regarding pending applications can be arranged with examiners
if necessary, however, and are often helpful.
5. Q. If two or more persons work together to make an invention, to whom
will the patent be granted?
A. If each had a share in the ideas forming the invention, they are
joint inventors and a patent will be issued to them jointly on the basis
of a proper patent application. If, on the other hand, one of these
persons has provided all of the ideas of the invention, and the other
has only followed instructions in making it, the person who contributed
the ideas is the sole inventor and the patent application and patent
shall be in his/her name alone.
6. Q. If one person furnishes all of the ideas to make an invention and
another employs him or furnishes the money for building and testing the
invention, should the patent application be filed by them jointly?
A. No. The application must be signed by the true inventor, and filed in
the Patent and Trademark Office, in the inventors name. This is the
person who furnishes the ideas, not the employer or the person who
furnishes the money.
7. Q. Does the Patent and Trademark Office control the fees charged by
patent attorneys and agents for their services?
A. No. This is a matter between you and your patent attorney or agent in
which the Office takes no part. To avoid misunderstanding you may wish
to ask for estimate charges for: (a) the search, (b) preparation of the
patent application, (c) Patent and Trademark Office prosecution.
8. Q. Will the Patent and Trademark Office help me to select a patent
attorney or agent to make my patent search or to prepare and prosecute
my patent application?
A. No. The Office cannot make this choice for you. However, your own
friends or general attorney may help you in making a selection from
among those listed as registered practitioners on the Office roster.
Also, some bar associations operate lawyer referral services that
maintain lists of patent lawyers available to accept new clients.
9. Q. Will the Patent and Trademark Office advise me as to whether a
certain patent promotion organization is reliable and trustworthy?
A. No. The Office has no control over such organizations and does not
supply information about them. It is advisable, however, to check on the
reputation of invention promotion firms before making any commitments.
It is suggested that you obtain this information by inquiring of the
Better Business Bureau of the city in which the organization is located,
or of the bureau of commerce and industry or bureau of consumer affairs
of the state in which the organization has its place of business. You
may also undertake to make sure that you are dealing with reliable
people by asking your own patent attorney or agent or by inquiry of
others who may know them.
10. Q. Are there any organizations in my area which can tell me how and
where I may be able to obtain assistance in developing and marketing my
invention?
A. Yes. In your own or neighboring communities you may inquire of such
organizations as chambers of commerce, and banks. Many communities have
locally financed industrial development organizations which can help you
locate manufacturers and individuals who might be interested in
promoting your idea.
11. Q. Are there any state government agencies that can help me in
developing and marketing of my invention?
A. Yes. In nearly all states there are state planning and development
agencies or departments of commerce and industry which seek new product
and new process ideas to assist manufacturers and communities in the
state. If you do not know the names or addresses of your state
organizations you can obtain this information by writing to the governor
of your state.
12. Q. Can the Patent and Trademark Office assist me in the developing
and marketing of my patent?
A. The Office cannot act or advise concerning the business transactions
or arrangements that are involved in the development and marketing of an
invention. However, the Office will publish, at the request of a patent
owner, a notice in the Official Gazette that the patent is available for
licensing or sale. The fee for this is $25.
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TRANSCRIBER’S NOTES
1. Silently corrected typographical errors and variations in spelling.
2. Archaic, non-standard, and uncertain spellings retained as printed.
3. Enclosed italics font in _underscores_.
4. Enclosed bold font in =equals=.
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