Non-Provisional Utility Patent Application

A Non-Provisional Utility Patent Application is the way in which an inventor applies to be granted a patent from the United State Patent and Trademark Office (USPTO).

What is a Provisional Patent?

The term provisional means temporary.  A provisional patent is a temporary one.  It lasts for one year and allows the applications seeker to do research and make progress without fear that someone will swoop in and steal the idea (at least for a year).  The goal is to finish the research, complete the invention and file for a non-provisional patent.

What is a Non-Provisional Patent?

Obviously, non-provisional means not temporary.  As in permanent.  An inventor in the United states must fulfill many requirements in order to have a non-provisional patent issued.  Loss of patent rights result when formal requirements are not completed, and a filing date is not received.  This is why provisional (temporary) patent applications are easy, informal and simple while non-provisional (permanent) patent applications are complex, involved and difficult. 

There are many rules and many parts to a non-provisional patent application. The U.S. Patent and Trademark Office accepts properly filed patent applications and then places them in a queue.  A Patent Examiner then looks over the application.  If the examiner determines that the non-provisional patent application as having met the legal criteria then a U.S. patent may be issued.

Provisional + Non-Provisional within 1yr Route

The process to having a patent issued has two stages. The patent seeker first files a provisional (temporary) patent application.  The second stage is to seek a non-provisional patent by applying for it. Some go directly to the non-provisional application.

The Provisional Route Takes Longer

Obviously if a patent seeker takes the process in two stages it takes longer than going directly to the second stage (the non-provisional application).  In addition, provisional applications are never examined by the patent office, only the applications for a non-provisional patent have this scrutiny.

Filing for a Non-Provisional Patent

The cost of a patent application (in this case non-provisional) varies greatly depending on a few factors:

  • Experience of the Practitioner (i.e. the patent attorney)
  • Application Quality
  • Invention Complexity
  • Amount of Services provided

The less complex (ten-page application with fewer than 4 drawings) can be as low as $4,550.  As the complexity increases so does the cost and an estimate average is roughly $7,550 (this number does not include filing fees or drawing costs). Three independent claims and a total of twenty claims are covered by the basic filing fee.

The application includes a document which should include the following:

  • Detailed Invention Description
  • Specifications
  • Drawings
  • Graphs

The rule of thumb is that the application is so detailed that someone could use your application to make your invention. The patent claims must be drafted for the invention.  Specific features of the invention should be called out as warranting patent protection. A succinct statement of exactly what your invention does, what it is, and how it works is called an abstract.  This abstract should be less than 150 words.  All of these things (the abstract, the claims and the description) should be in digital form.

The United States Patent and Trademark Office has a website on which you can utilize the Electronic Filing System. Tracking the status of the application is available once registration is complete. The Application Transmittal form, which acts as a cover sheet for an application, requires the basics about the application and a mailing address.  The Fee Transmittal form is assists a patent seeker in calculating applicable non-provisional application fees.

The Declaration for Utility or Design Patent application form requires the following information:

  • Name of all Inventors
  • Contact Details for all Inventors
  • Citizenship Details of each Inventors
  • Foreign Patent Applications for this Invention

It should be declared that the inventors believe that this is new technology.

Submit all the above along with an Application Data Sheet and pay the application data.  The next step is to respond to any correspondence from the Patent Office.  Then, once the patent has been approved there is a patent issuance fee (hundreds of dollars). 

Contents of the Specification

An invention needs a title. It must be fewer than 500 characters. This title should explain what the invention does. It can be aimed at a both a process or a product or either.  An example would be “Granulated Substance for use on Concrete Paving and Method for Forming the same.” This title should be cross-referenced to related to previous application. The identity of the earlier application must be clear through the relationship, filing date, and application number. Appropriate cross-referencing example is, “This is a continuation of Application number____, filed.” This is important for ensuring the priority claim of the earlier application.  This cross-referencing is inadequate to claim priority to the earlier filed application.  Such claims must be in a declaration or an oath.

The invention background includes a description of the related drawings (art) and a field of the invention. These help the United States Patent and Trademark Office identify the subject matter of the application and also allows each application to be given to a suitable art unit, technical center, or examining group.  The USPTO finds it useful to direct the applications to an appropriate art unit, technical center, or examining group away from unrelated or different sorts of technology.  For example, an invention may be directed toward a particular art unit due to their knowledge and familiarity with the specific technology involved.  This allows the most sympathetic treatment of the claimed invention by an Examiner familiar with the invention’s environment. 

Problems with previous technology may be solved by this claimed invention, this should be described in the description of related art. Applicants may feel that they need to make unfavorable admission in this part.  That is not required because it could lead to legally damaging admissions. Instead, the obligation of the applicant is to supply the USPTO with relevant data, in the form of published patent applications or prior art patents. The relevance of this information does not require comment or embellishment.

Existing technology renderings (prior art) may be referred to in the descriptions of art. The patent Examiner only needs to look in the prior art for commonality, which when combined with the applicant’s prior art, can help with decision making.  The description of the related art should be kept concise by the applicant.

The broadest independent claims should be made in the summary of the invention, required for the patent application. Once typical was the reciting of advantages and objectives, touting advantages and objective may have an adverse effect on the extent of the claims.  Therefore, the invention should be described in the summary of the invention in a limited and brief way.

One part of the application which should not be brief is the detailed description. It should include all of the claims being made in a detailed way and can commence on a separate page. Note that each claim must include the following:

  • Preamble (recites the inventions name and intended use)
  • Transition (connects the preamble and the body)
  • Body (elements of the claimed invention)

Independent and dependent are the two kinds of claims. Claims that do not refer to or depend on any other claims are considered independent. Claims that depend on another claim, whether independent or independent, are considered dependent claims. Dependent claims are generally lumped together with the claim or claims on which they are dependent.

An abstract concludes the specification.  This is a single paragraph of less than 150 words which provides a narrative. Drawings must be provided by the applicant and are absolutely necessary to make the invention understandable. Drawings should refer to references by number and figure, with lines directing the eye to component parts or method steps in the drawings.

The patent application should reference the numerals of a feature of the invention in the detailed description.  This is so any reader can identify clearly and comprehend the features of the invention.  All numerals that appear in the drawings must be explained in the detailed description with reference to the same feature, element, or component in the drawings. It is quite rare for color drawings to be filed but for an additional fee the United States Patent and Trademark Office will accept them.  Also acceptable, if the only practical means for portraying the claimed invention, are photographs.

The declaration must include all of the declarant’s or inventor’s names, mailing addresses, residences, citizenship details.  In addition, the declarants or inventors as the first and original inventors of the invention which is claimed. There is also a duty imposed upon the declarant to disclose information about any priority claims to foreign patent applications and any material information regarding patentability.

Filing fees for a non-provisional patent application includes examination fees, search fees and filing fees. The application fees change every October.  Please note that an additional (and not insubstantial) fee must be paid if the application is not filed electronically through EFS-Web.  Excess application pages and excess claims will also be assessed additional fees. Small entities are able to pay a reduced fee, roughly half of the standard fee. It is incumbent upon the applicant to research and determine if the small entity status is applicable.  This must be done before any assertion of the small entity status is asserted.

Non-Provisional Utility Patent Application Requirements

An official application for a patent (a non-provisional application) begins the process of examining and determining if the claimed invention can receive a patent.  Here is what they must generally include:

  • Claim and Description of the Invention
  • Drawings
  • Declarations or Oaths by the inventor(s)
  • Fees (examination, search and filing)

The application must be made in English.  If it is not in English then a translation to English must be provided along with a certification that the translation is 100% accurate (a fee will be assessed also). In addition a complete application for a non-provisional utility patent will include the following in the order in which they appear here:

  • Patent Application Transmittal Letter
  • Patent Application Fee Form and the Required Fees
  • Patent Application Data Sheet
  • A Specification, including one claim
  • Patent Application Drawings
  • A Declaration or Oath by the Inventor(s)
  • If necessary, an Amino Acid Sequence Listing

Types of Patents

Plant, design and utility are the three types of patents.  Plant and Utility patents may be either non-provisional (permanent) or provisional (temporary).  By far the most common patent granted are non-provisional utility patents.

Non-provisional Utility Patent

Title 35 of the United States Code (U.S.C.), and Title 37 of the Code of Federal Regulations provides the format for patent applications in the United States. This is legal reference material, and is not required reading in order to file a patent application.  The United States Patent and Trademark Office relies on the Application Transmittal Form to inform them about what type of patent application is being filed and  the type and amount of filing fees being paid. The number of claims made determine how much the initial fee will be. A Data Sheet is sometimes included with a patent application.  The Data Sheet contains bibliographic information in the way that the United States Patent and Trademark Office has designed.

Utility Patent Musts

It is very important that the non-provisional utility patent application be provided in the correct format.  It must contain the following:

  • Claim and Description of the Invention
  • Drawings
  • Declarations or Oaths by the inventor(s)
  • Fees (examination, search and filing)

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