Non Provisional Patent Application Example

Filing a non provisional patent application example can be complicated. In filing the patent application, you will require a variety of documents, writings, and fees. You will also need to determine your strategy in how you file your application.

Filing Requirements

In order to file the non-provisional patent, the application needs to have a declaration/oath, the fee, specification documentation that describes the patent, and sketches.

Contents of the Specification

The “specification” has to have:

  • The invention’s title
  • References to similar applications.
  • Description of the research’s federal sponsorship
  • Invention’s history and summary
  • Sketching summary
  • Precise detailing about the invention
  • Claims
  • Disclosure abstract

For the application to be finished, it has to have the following documents:

  • Data Sheet (37 CFR 1.76)
  • Needed sketchings
  • Claims
  • Declaration that has been executed
  • Transmittal utility document
  • Amino or Nucleotide sequencing list if needed
  • Computer lists and tables if needed

Title

The invention’s name should precise and not long (needs to be less than 500 characters).  The name ought to be oriented towards the kind of invention, and be towards either a procedure and/or a product.

Cross-Reference to Related Applications

Cross-references means whether prior or similar applications have been filed. Cross-references need to cite the prior application using their date of filing, application code, and the kind of relationship. Cross-references are vital for prioritizing an application over a previously filed application.

Priority over foreign applications are not claimable using cross-references. Instead, an oath/declaration needs to be used. However, if priority is being claimed for a US patent application then the application’s data sheet can be used instead of declarations or cross-references.

Also, the application has to claim priority either at filing or while the prior application is still in pendency. The priority claim also needs to be made not later than four months after filing, or 16 months after the application being claimed, whenever is the later date.

Background of the Invention

The patent application for a non-provisional utility will be processed and examined by the United States Patent & Trademark Office, also called the USPTO.

The invention’s history needs to state the invention’s sector as well as a summary of the included drawings. Identifying the invention’s sector allows the USPTO to quickly determine the application’s classification and therefore assign it to the proper drawings division (termed “examining group”, “technical center”).

Furthermore, the sector description allows the applicant to push the application to be reviewed by a hoped-for proper division and away from improper divisions. The USPTO’s classification system is helpful in determining the invention’s sector. 

Description of the Related Art

The way similar drawings are described needs to be about how the current technologies are as well as what kinds of issues are being fixed by the invention. This is called the “problem and solution” method.

Furthermore, the summaries of the included drawings are used by the USPTO to initially determine whether the invention is patentable or not. USPTO Examiners and potential infringing persons use the summaries to question patents’ plausibility and extent.

You do not have to include negative confessions in the drawings’ summary. You only are required to provide pertinent information to the USPTO without any further disclosure requirement. This usually includes just previous patent drawings or applications. When applying, you should not discuss whether the information is relevant.

  • In writing the summary, you should avoid admitting things that could later be negative legally. These may include when current technologies are mentioned frequently in the summary, and the USPTO looks for the drawings of those current inventions. Upon finding similar drawings, the USPTO may reject the patent application at this initial stage. The USPTO will not have to themselves find similar technologies if the applicant has already informed them of its existence.

Therefore when applying, you should keep your summary of similar inventions quick and short. Try to only make a general summary of prior and similar drawings and inventions. You do not have to talk about specific previous patents or applications. Instead, in a separate statement of information disclosure you can cite prior drawings.

As for the invention’s summary itself, it ought to outline the most striking individual patent claims. It ought to be quick and just about the invention itself.

The specific summary is perhaps the application’s most vital aspect. The applicant outlines in it how they ideally hope to use their invention, called the “best mode.” It does not need to include how the invention is produced. The applicant is required to outline the most advanced version of the invention rather than only detailing a less-complex and useful version.

Claims

Claims that are made need to specifically and clearly state the area that the inventor believes the invention falls in. Usually how broad the claim is, determines if the patent will be approved or not.

  • You will write out the claims after the specific description on a later form.
  • The claim has to be one sentence that starts with a capital and has a period at the end.
  • A line indent can separate the various parts of the claim.
  • To see how claims are done, look up MPEP’s Section 608.01(m).
  • The claims need to include the body, transition, and a preamble.

Normally a preamble gives a broad summary of the invention’s known steps and aspects.

A transition will follow the preamble and connects the body to the preamble. It usually uses a colon for punctuation. The body is separate from it and follows it.

Below are some useful phrases for use in the application:

  • Similar to the word “comprising” include the phrases “containing”, “characterized by”, and “including.” These phrases are all inclusive enough that they do not restrict unstated claims and parts of the invention.
  • “Consisting essentially of” as a term is limiting in that it includes the listed steps and only otherwise those which do not significantly change the assumed aspects of the invention.
  • “Consisting of” is exclusive and in that only the listed steps are part of the claim. It therefore limits the scope.

The body of the claim has the invention’s specific elements.

  • Other countries usually limit the elements to the new aspects of the invention. In the United States this is not done however.
  • The steps are listed individually with an indent, and have a alphabet character preceding them as well as beginning with a verb’s ground state.
  • Each word used should be obviously backed when looking at the description’s details.
  • When using a term, it should be connected to the drawings by utilizing numerals for reference to show where the term is referring.

The two kinds of claims are:

  • Independent Claims: These depend or refer to any other claim.
  • Dependent Claims: These depend or refer to other claims. These should be grouped with the claims they depend on. See MPEP Section 608.01(n) for more information.

In numbering or grouping claims, use MPEP Section 608.01(j).

The application’s standard filing fee allows up to 3 independent claims and 20 total claims. More claims can be included for more fees. 

Abstract of the Disclosure

At the end of a specification is an abstract of one paragraph of no more than 150 words. It has to be put on an additional form after the claims. It should briefly make necessary disclosures.

If the patent is regarding programming, programs can be listed in the specifications (37 CFR 1.96(b)/(c)). The specification needs to have page numbering from 1 onwards and the lines ought to be spaced either double or 1.5. Each paragraph must be indented and numbered.

Drawings                 

You need to include drawings which help the USPTO understand the invention. The drawings ought to connect with a numeral reference figure and lines ought to connect the reference to aspects of the drawing.

The specific descriptions ought to state the numeral references when talking about the invention’s features. Therefore, the reader is able to easily find the feature and comprehend it. Every numeral reference that is part of the drawing ought to be clarified or utilized as part of the detailed description. This should have the identical part as in the drawing.

Normally only black and white drawings are used. Color drawings can be used for a fee. Photographs are also allowed when that is the only plausible way to show the invention. See MPEP Section 608.02 for further drawings information. 

If you omit a drawing, your application might be determined to be incomplete. No filing date, a very important aspect, will therefore be assigned.

Declaration

When writing the declaration, declarants must state the mailing address, citizenship, residence, and original inventor for each inventor. The declarant must also state that they understand their duty to provide any important information about the patent and disclose priority claims of other foreign patents.

The PTO-SB-01 is a fillable PDF used by the USPTO for declarations.

The inventors have to individually provide a declaration where they state they themselves think they are the earliest and first inventor of the application’s invention. Furthermore, they must sign various other declarations that both the law and the USPTO require.

Fees

There is a total USD $1250 fee to file a non-provision application for a patent. These fees include those for searching, filing, and examination. Another $400 fee is needed for those applications filed through a means besides electronically by EFS-Web. Further fees will be needed if you want to make more claims or have too many pages in the application.

If applying as a small organization, then you will be able to reduce your fees based on statute by 50%. Small entities only have to pay a total of USD $625 in filing fees.

Furthermore, if you file through EFS-Web electronically then you will be able to save the fee that otherwise is applied for small entities that file by paper. If you file by paper rather than through EFS-Web, then you will have to pay a further USD $200 fee.

If you are filing as a small entity, you must make sure beforehand that you qualify as a small entity per the USPTO’s guidelines. Do this before you pay the fee.

The fees for entities often change annually in October. Check the USPTO’s web site to stay updated on the fee schedule for various entities.

Cost

The most costly patent application type are non-provisional patent applications. The total cost for non-provision patents varies significantly, with factors include the legal services used, the application’s quality, the invention’s complexity, the amount of services and various other elements.

Normally the total costs for non-provision patent applications, not including the costs of the drawings and the filing fees, regarding basic mechanical inventions are at minimum USD $4500. On average, the costs total USD $7500.

Definition of a Utility Patent

Upon making an invention or discovery, the following kinds of patents are allowed:

  • Plant
  • Design
  • Utility

Design patents are able to patent the specific appearance or structure of an item that has been manufactured.

Plant patents are able to patent the creation and self-reproduction of new plants. ]

Utility patents are however the most common. These patents are for beneficial newly created procedures, mechanical inventions, products, or other matter composing methods. Utility patents can also be used for fresh and beneficial upgrades to currently used procedures and inventions too.

Were the USPTO, through its Examiners, to find that the non-provisional application for a patent is sufficient to be patented, then the application may be approved and converted into an official United States patent.

It is important to note that non-provisional patent applications demand that the inventions being applied for and claimed have the disclosures the USPTO and the law require.

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