HOW TO GET
TABLE OF CONTENTS
Functions of the Patent and Trademark Office 3
Purpose of this Manual 3
What is a Patent? 3
Patent Laws 5
What Can Be Patented 5
Novelty & Other Conditions For Obtaining A Patent 6
The United States Patent And Trademark Office 7
Publications of the Patent and Trademark Office 8
General Information and Correspondence 9
Depository Library, Search Room Searches 11
Attorneys and Agents 16
Disclosure Document 18
Who May Apply For A Patent 18
Application For Patent 19
Oath or Declaration, Signature 20
Filing Fees 20
Specification (description and claims) 21
Models, Exhibits, Specimens 26
Examination of Applications & Proceedings In The Patent
Trademark Office 27
Amendments to Application 28
Time for Response and Abandonment 30
Appeal to the Board of Patent Appeals and
Interference to the Courts 30
Allowances & Issue of Patent 31
Nature of Patent & Patent Rights 32
Maintenance Fees 33
Correction of Patents 33
Assignments & Licenses 34
Infringement of Patents 36
Patent Marking and Patent Pending 36
Design Patents 37
Plant Patents 37
Treaties and Foreign Patents 39
Foreign Applicants for United States Patents 40
Fees And Payment 42
FUNCTIONS OF THE PATENT AND TRADEMARK OFFICE
The Patent and Trademark Office is an agency of the U.S.
Department of Commerce. The role of the Patent and Trademark Office is to
provide patent protection for inventions and to register trademarks. It serves
the interest of inventors and businesses with respect to their inventions and
corporate, product, 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
In discharging its 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
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 MANUAL
The purpose of this booklet is to give the reader 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 lawyer. Consequently, many
details are omitted and complications have been avoided as much as possible.
It is hoped that this booklet 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.
WHAT IS A PATENT?
A patent for an invention is a grant of a property right by
the Government to the inventor (or his heirs or assigns), acting through the
Patent and Trademark Office. The term of the patent is 17 years from the date
the patent is granted, subject to the payment of maintenance fees.
The right conferred by the patent grant extends 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, or selling" the invention. What is granted is not the
right to make, use, or sell, but the right to exclude others from making,
using, or selling 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
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 goes to 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 202/479-0700)
A trademark relates to any word, name, symbol or device
which is used in trade with goods to indicate the source or origin of the
goods and to distinguish them from the goods 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 pamphlet called
Basic Facts About Trademarks.
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 for administering the law relating
to the granting of patents, and contains various other provisions relating to
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
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 improvements thereof, may
obtain a patent" subject to the conditions and requirements of the law.
The word "process" is defined as process or method, and new
processes, primarily industrial or technical processes that may be patented.
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 process for making them.
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 may be
operative, 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
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 methods of doing business and printed matter cannot be
In the case of mixtures of ingredients, such as medicines,
a patent cannot be granted unless there is more to the mixture than the effect
of its components. (So called patent medicines are ordinarily not patented,
the phrase "patent medicine" in this connection does not have the
meaning that the medicine is patented.)A patent cannot be obtained upon a mere
idea or suggestion. The patent is granted upon the new machine, manufacture,
and not upon the idea or suggestion of the new machine. A complete description
of the actual machine or other subject matter sought to be patented is
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
(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
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 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 valid 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 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 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 so that it
may be said to be indistinct 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 allowed a patent.
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
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 and
Commissioner of Patents and Trademarks and his staff includes the Deputy
Assistant Secretary and Deputy Commissioner, several assistant commissioners,
and other officials. As head of the Office, the Commissioner superintends or
performs all duties with respect to 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;
administers judgment of 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 a number of 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 Interference 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 interference, 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 4,400
employees, of whom about half are examiners and others with technical and
legal training. Patent applications are received at the rate of over 170,000
per year. The Patent and Trademark Office receives over five million pieces of
mail each year.
PUBLICATIONS OF THE PATENT AND TRADEMARK OFFICE
Patents--The specification and accompanying drawings of
all patents are published on the same day they are granted and printed copies
are sold to the public by the Patent and Trademark Office. Over 5,000,000
patents have been issued.
Printed copies of any patent, identified by its patent
number, may be purchased from the Patent and Trademark Office.
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 suits; indexes of patents and patentees, list of patents available
for license or sale; 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 field. Street addresses of patentees and a geographical index of
residents of inventors are included. Copies of the Official Gazette may be
found in public libraries of larger cities.
Index of Patents.--This annual index to the Official
Gazette is currently in two volumes, one an index of patentees and the other
an index by subject matter of the patents. Sold by Superintendent of
Index of Trademarks.--An annual index of registrants of
trademarks. Sold by Superintendent of Documents.
Manual of Classification.--A loose-leaf book 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 classification. Substitute pages are issued from time
to time. Annual subscription includes the basic manual and substitute pages.
Sold by Superintendent of Documents.
Classification Definitions-Contains the changes in
classification of patents as well as definitions of new and revised classes
and subclasses. Sold by Patent and Trademark Office.
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. Copies may be purchased from Superintendent of
Directory of Registered Patent Attorneys and Agents
Arranged by States and Countries-An alphabetical and geographical listing
of patent attorneys and agents registered to practice before the U.S. Patent
and Trademark Office. Sold by Superintendent of Documents.
Manual of Patent Examining Procedure-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.
Subscriptions service includes basic manual, quarterly revisions, and change
notices. Sold by Superintendent of Documents.
The Story of the United States Patent Office.--A
chronological account of the development of the U.S. Patent and Trademark
Office and patent system and of inventions which had unusual impact on the
American economy and society. Sold by Superintendent of Documents.
GENERAL INFORMATION AND CORRESPONDENCE
All business with the Patent and Trademark Office should be
transacted by writing to "COMMISSIONER OF PATENTS AND TRADEMARKS,
WASHINGTON, D. C. 20231." Correspondents should be sure to include their
full return addresses, including Zip Codes.
The principal location of the office is Crystal Plaza 3,
2021 Jefferson Davis Highway, Arlington, Virginia. The personal attendance of
applicants at the Office 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 in relation to each distinct subject of inquiry,
such as assignments, payments, orders for printed copies of patents, orders
for copies of records, requests for other services, etc. None of these should
be included with letters responding to Office actions in applications.
When a letter concerns a patent application, the
correspondent must include the serial 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 assignee, or his attorney, or when necessary to the conduct of
the business of the Office. 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
LIBRARY, SEARCH ROOM SEARCHES AND PATENT AND TRADEMARK
The Scientific and Technical Information Center of the
Patent and Trademark Office at Crystal Plaza 3, 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 12 million foreign
A Search Room is provided where the public may search and
examine United States patents granted since 1836. Patents are arranged
according to the Patent and Trademark Office classification system of over 400
classes and over 120,000 subclasses. By searching in these classified 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 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
Applicants, their attorneys or agents, and the general
public are not entitled to use the records and files in the examiners' rooms.
The 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 investigation before applying
for a patent. This may be done in the Search Room of the Patent and Trademark
Office, and libraries, located throughout the U.S., which have been designated
as Patent and Trademark Depository Libraries (PTDL). Patent attorneys or
agents may be employed to make a so-called preliminary search through the
prior United States patents to discover if the particular device or one
similar to it has been shown in some prior patent. 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 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 Patent and Trademark Depository Libraries, in addition, offers the
publications of the U.S. Patent Classification System (e. g. The Manual of
Classification, Index to the U.S. Patent Classification, 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 Classification And Search
Support Information System (CASSIS), computer data base. With various modes,
it permits the effective identification of appropriate classifications to
search, provides numbers of patents assigned to a classification to permit
finding the patents in a numerical file of patents, provides the current
classification(s) of all patents, permits word searching on classification
titles, abstracts, the Index provides certain bibliographic information on
more recently issued patents. Facilities for making paper copies from either
microfilm in reader printers or from the bound volumes in paper-to-paper
copies are generally provided for a fee.
Due to variations in the scope of patent collections among
the Patent and Trademark Depository Libraries 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
and hours, so as to avert possible inconvenience.
State Name of Library
Alabama Auburn University Libraries
Birmingham Public Library
Alaska Anchorage: Z. J. Loussac Public Library
Arizona Tempe:Noble Library, Arizona State University
Arkansas Little Rock: Arkansas State University
California Los Angeles City Library
Sacramento: California State Library
San Diego Public Library
Sunnyvale Patent Clearinghouse
Colorado Denver Public Library
Connecticut New Haven: Science Park Library
Delaware Newark: University of Delaware Library
District of Columbia Washington: Howard University
Florida Fort Lauderdale: Broward County Main Library
Miami- Dade Public Library
Orlando: University of Central Florida Libraries
Tampa: Tampa Campus Library University of
Georgia Atlanta: Price Gilbert Memorial Library,
Georgia Institute of Technology
Hawaii Honolulu: Hawaii State Public Library System
Idaho Moscow: Library University of Idaho
Illinois Chicago Public Library
Springfield: Illinois State Library
Indiana Indianapolis-Marion County Public Library
West Lafayette: Siegesmund Engineering
Laboratory, Purdue University
Iowa Des Moines: State Library of Iowa
Kansas Wichita: Ablah Library, Wichita State
Kentucky Louisville Free Public Library
Louisiana Baton Rouge: Troy H. Middleton Library,
Maryland College Park: Engineering and Physical
Sciences Library University of Maryland
Massachusetts Amherst: Physical Sciences Library,
University of Massachusetts
Boston Public Library
Michigan Am Arbor: Engineering Library,
University of Michigan Big Rapids:
Abigail S. Timme Library
Ferris State University
Detroit Public Library,
Minnesota Minneapolis Public Library and Information
Mississippi Jackson: Mississippi Library Commission
Missouri Kansas City: Linda Hall Library
St. Louis Public Library
Montana Butte: Montana College of Mineral Science
and Technology Library
Nebraska Lincoln: Engineering Library, University of
Nevada Reno: University of Nevada-Reno Library
New Hampshire Durham: University of New Hampshire
New Jersey Newark Public Library
Piscataway: Library of Science and
Medicine, Rutgers University
New Mexico Albuquerque: University of New Mexico
New York Albany: New York State Library
Buffalo and Erie County Public Library
New York Public Library (The Research
North Carolina Raleigh: D. H. Hill Library, North Carolina
North Dakota Grand Forks: Chester Fritz Library,
University of North Dakota
Ohio Cincinnati and Hamilton County,
Public Library of Cleveland
Public Library Columbus: Ohio State
University Toledo/Lucas County Public
Oklahoma Stillwater Oklahoma State University Center
for International Trade Development
Oregon Salem: Oregon State Library
Pennsylvania Philadelphia: The Free Library of Pittsburgh
Carnegie Library of University Park
Pattee Library, Pennsylvania State University
Rhode Island Providence Public Library
South Carolina Charleston: Medical University of South
Clemson University Libraries
Tennessee Memphis and Shelby County Public Library
and Information Center Nashville:
Stevenson Science Library, Vanderbilt
Texas Austin: McKinney Engineering Library,
University of Texas at Austin
College Station: Sterling C. Evans
Library, Texas A & M University
Dallas Public Library
Houston: The Fondren Library, Rice
Utah Salt Lake City: Marriott Library, University
Virginia Richmond: James Branch Cabell Library,
Virginia Commonwealth University
Washington Seattle: Engineering Library, University of
West Virginia Morgantown: Evansdale Library, West
Wisconsin Madison: Kurt F. Wendt Library, University
of Wisconsin Madison Milwaukee Public
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 Patent and
Trademark Office practice 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 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 resides considers drawing
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 must be purchased from the
Government Printing Office.
The telephone directories of most large cities have, in the
classified section, a heading for patent attorney's 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 has been appointed, the Office does not communicate
with the inventor directly but conducts the correspondence with the attorney
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 authorization.
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.
One of the services provided for inventors is the
acceptance and preservation for a two year period of papers disclosing an
invention. This disclosure is accepted as evidence of the dates of conception
of the invention.
It will be retained for two years at which time it will be
destroyed unless it is referred to in a separate letter in a related patent
A fee must accompany the disclosure. See current fee
schedule. The disclosure is limited to written matter or drawings on paper or
other thin, flexible material, such as linen or plastic drafting material,
having dimensions or being folded to dimensions not to exceed 8-1/2 x 13
inches (21.6 by 33.0 cm). Photographs are acceptable. Each page should be
numbered. Text and drawings should be of such quality as to permit
The disclosure must be accompanied by a stamped,
self-addressed envelope and a duplicate copy also signed by the inventor. The
papers will be stamped with an identifying number and returned with the
reminder that the Disclosure Document may be relied upon only as evidence of
the date of conception and that an application must be filed in order to
provide patent protection.
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 missing 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 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
An application for a patent is made to the Commissioner of
Patents and Trademarks 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
(3) The filing fee.
The specification and oath or declaration must be legibly
written or printed in permanent ink on one side of the paper. The Office
prefers typewriting on letter or legal size 8 to 8 1/2 by 10 1/2 to 13 inches,
(20.3 to 21.6 by 26.7 to 33.0 cm) 1 1/2 or double spaced with margins of 1
inch (2.54 cm) on the left-hand side and at the top, if the papers filed are
not correctly, legibly, and clearly written, the Patent and Trademark Office
may require typewritten or printed papers.
The application for patent is not forwarded for examination
until all its required parts, complying with the rules relating thereto, are
received. If the papers and parts are incomplete, or so defective that they
cannot be accepted as a complete application for examination, the applicant
will be notified about the deficiencies and be given a time period in which to
remedy them. A surcharge may be required. If the applicant does not respond
within the prescribed time period. The application will be returned or
otherwise disposed of. The filing fee may be refunded when an application is
refused acceptance as incomplete; however, a handling fee will be charged.
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 are numbered in serial order, and the
applicant is informed of the serial number and filing date of the application
by a filing receipt. The filing date of the application is the date on which
the names of the inventors, a specification (including claims) and any
required drawings are received in the Patent and Trademark Office; or the date
on which the last part completing the application are received in the case of
a previously incomplete or defective application.
OATH OR DECLARATION, SIGNATURE
The oath or declaration of the applicant is required by
law. 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 application, 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 or middle name of each inventor without
abbreviation and a middle or first initial, if any, is required. The post
office address of the inventor is also required.
Blank forms for applications or certain other papers are
not supplied by the Patent and Trademark Office.
The papers in a complete application will not be returned
for any purpose whatever, nor will the filing fee be returned. If applicants
have not preserved copies of the papers, the Office will furnish copies for a
The filing fee of an application, except in design and
plant cases, consists of a basic fee and additional fees. The basic fee
entitles 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. Copies of sample verification statements are enclosed.
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.
Please Note: The fees are current as of the revision date.
Fees are subject to change in October each year therefore
they should be verified before submission to the PTO. A fee schedule may be
obtained by writing 16 Commissioner of Patents, Washington, D. C. 20231 --
Attention Public Service Branch.
SPECIFICATION (DESCRIPTION AND CLAIMS)
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 of carrying
out his 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
A brief abstract of the technical disclosure in the
specification must be set forth in a separate page immediately following the
claims in a separate paragraph 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,
commensurate with the invention as claimed and any object recited should
precede the detailed description. Such summary should be that of the invention
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 one or more claims
particularly pointing out and distinctly claiming the subject matter which the
applicant regards as the invention.
The claims are brief descriptions of the subject matter of
the invention, eliminating unnecessary details and reciting all essential
features necessary to distinguish the invention from what is old. The claims
are the operative part of the patent. Novelty and patentability are judged by
the claims, and, when a patent is granted, questions of infringement are
judged by the courts on the basis of the claims.
When more than one claim is presented, they may be placed
in dependent form in which a claim may refer back to and further restrict one
or more preceding claims.
A claim in multiple dependent form shall contain a
reference, in the alternative only, to more than one claim previously set
forth and then specify a further limitation of the subject matter claimed. A
multiple dependent claim shall not serve as a basis for any other multiple
dependent claim. A multiple dependent claim shall be construed to incorporate
by reference all the limitations of the particular claim 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.
The following order of arrangement should be observed in
framing the specification:
(a) Title of the invention.
(b) Cross-references to related applications, if any.
(c) Brief summary of the invention.
(d) Brief description of the several views of the drawing,
if there are drawings.
(e) Detailed Description.
(f) Claim or claims.
(g) Abstract of the disclosure.
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 :
Standards for drawings
( a ) Paper and ink. Drawings must be made upon
paper which is flexible, strong, white, smooth, non-shiny and durable. India
ink, or its equivalent in quality, is preferred for pen drawings to secure
perfectly black solid lines. The use of white pigment to cover lines is not
( b ) Size of sheet and margins. The size of the
sheets on which
drawings are made may either be exactly 81/2 by 14 inches
(21.6 by 35.6 cm.) or exactly 21.0 by 29.7 cm. (DIN size A4). All drawing
sheets in a particular application must be the same size. One of the shorter
sides of the sheet is regarded as its top.
(1) On 81/2 by 14 inch drawing sheets, the drawings must
include a top margin of2 inches (5.1 cm.) and bottom and side margins of '/4
inch (6.4 mm.) from the edges, thereby leaving a "sight" precisely 8
by 113/4 inches (20.3 by 29.8 cm.). Margin border lines are not permitted. All
work must be included within the "sight". The sheets may be provided
with two '/4 inch (6.4 mm.) diameter holes having their centerlines spaced
11/16 inch (17.5 mm.) below the top edge and 23/4 inches (7.0 cm.) apart, said
holes being equally spaced from the respective side edges.
(2) On 21.0 by 29.7 cm. drawing sheets, the drawing must
include a top margin of at least 2.5 cm., a left side margin of 2.5 cm., a
right side margin of 1.5 cm., and a bottom margin of 1.0 cm. Margin border
lines are not permitted. All work must be contained within a sight size not to
exceed 17 by 26.2 cm.
( c ) Character of lines. All drawings must be made
with drafting instruments or by a process which will give them satisfactory
reproduction characteristics. Every line and letter must be durable, black,
sufficiently dense and dark, uniformly thick and well defined; the weight of
all lines and letters must be heavy enough to permit adequate reproduction.
This direction applies to all lines however fine, to shading, and to lines
representing cut surfaces in sectional views. All lines must be clean, sharp,
and solid. Fine or crowded lines should be avoided. Solid black should not be
used for sectional or surface shading. Freehand work should be avoided
wherever it is possible to do so
( d ) Hatching and shading.
(1) Hatching should be made by oblique parallel lines
sufficiently apart to enable the lines to be distinguished
(2) Heavy lines on the shade side of objects should
preferably be used except where they tend to thicken the
work and obscure reference characters. The light should come from the upper
left-hand comer at an angle of 45 degrees. Surface delineation should
preferably be shown by proper shading, which should be open.
( e ) Scale. The scale to which a drawing is made
ought to be large enough to show the mechanism without crowding when the
drawing is reduced in size to two-thirds in reproduction, and views of
portions of the mechanism on a larger scale should be used when necessary to
show details clearly; two or more sheets should be used if one does not give
sufficient room to accomplish this end, but the number of sheets should not be
more than is necessary.
( f ) Reference characters. The different views
should be consecutively numbered figures. Reference numerals (and letters, but
numerals are preferred) must be plain, legible and carefully formed, and not
be encircled. They should, if possible, measure at least one-eighth of an inch
(3.2 mm.) in height so that they may bear reduction to one twenty-fourth of an
inch (1.1 mm.); and they may be slightly larger when there is sufficient room.
They should not be so placed in the close and complex parts of the drawing as
to interfere with a thorough comprehension of the same, and therefore should
rarely cross or mingle with the lines. When necessarily grouped around a
certain part, they should be placed at a little distance, at the closest point
where there is available space, and connected by lines with the parts to which
they refer. They should not be placed upon hatched or shaded surfaces but when
necessary, a blank space may be left in the hatching or shading where the
character occurs so that it shall appear perfectly distinct and separate from
the work. The same part of an invention appearing in more than one view of the
drawing must always be designated by the same character, and the same
character must never be used to designate different parts. Reference signs not
mentioned in the description shall not appear in the drawing, and vice versa.
( g ) Symbols, legends. Graphical drawing symbols
and other labeled and labeled representation are used must be adequately
identified in the specification. While descriptive matter on drawings is not
permitted, suitable legends may be used, or may be required in proper cases,
as in diagrammatic views and flow sheets or to show materials or where labeled
representations are employed to illustrate conventional elements. Arrows may
be required, in proper cases, to show direction of movement. The lettering
should be as large as, or larger than, the reference characters.
( h ) [Reserved]
( i ) Views. The drawing must contain as many
figures as may be necessary to show the invention; the figures should be
consecutively numbered if possible in the order in which they appear. The
figures may be plain, elevation, section, or perspective views, and detail
views of portions of elements, on a larger scale if necessary, may also be
used. Exploded views, with the separated parts of the same figure embraced by
a bracket, to show the relationship or order of assembly of various parts are
permissible. When necessary, a view of a large machine or device in its
entirety, may be broken and extended over several sheets if there is no loss
in facility of understanding the view. Where figures on two or more sheets
form in effect a single complete figure, the figures on the several sheets
should be so arranged that the complete figure can be understood by laying the
drawing sheets adjacent to one another. The arrangement should be such that no
part of any of the figures appearing on the various sheets are concealed and
that the complete figure can be understood even though spaces will occur in
the complete figure because of the margins on the drawing sheets. The plane
upon which a sectional view is taken should be indicated on the general view
by a broken line, the ends of which should be designated by numerals
corresponding to the figure number of the sectional view and have arrows
applied to indicate the direction in which the view is taken. A moved position
may be shown by a broken line superimposed upon a suitable figure if this can
be done without crowding, otherwise a separate figure must be used for this
purpose. Modified forms of construction can only be shown in separate figures.
Views should not be connected by projection lines nor
should center lines be used.
( j ) Arrangement of views. 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 longer than
the width of the sheet are necessary for the dearest illustration of the
invention, the sheet may be turned on its side so that the top of the sheet
with the appropriate top margin is on the right-hand side. One figure must not
be placed upon another or within the outline of another.
( k ) Figure for Official Gazette. The drawing
should, as far as possible, be so planned that one of the views will be
suitable for publication in the Official Gazette as the illustration of the
( 1 ) Extraneous matter. Identifying indicia (such
as the attorney's docket number, inventor's name, number of sheets, etc.) not
to exceed 2 3/4 inches (7.0 cm.) in width may be placed in a centered location
between the side edges within three-fourths inch (l9.1 mm.) of the top edge.
Authorized security markings may be placed on the drawings provided they are
outside the illustrations and are removed when the material is declassified.
Other extraneous matter will not be permitted upon the face of a drawing.
( m ) Transmission of drawings. Drawings transmitted
to the Office should be sent flat, protected by a sheet of heavy binder's
board, or may be rolled for transmission in a suitable mailing tube; but must
never be folded. If received creased or mutilated, new drawings will be
required. (See 1.152 for design drawing, 1.165 for plant drawings, and 1.174
for reissue drawings.)
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
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 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 micro-biological invention, a deposit of the micro-organism involved is
EXAMINATION OF APPLICATIONS AND PROCEEDINGS IN THE PATENT
AND TRADEMARK OFFICE
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
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, prior foreign patent documents which are
available in the Patent and Trademark Office, and available literature, to see
if the claimed invention is new and unobvious. A decision is reached by the
examiner in the light of the study and the result of the search.
The applicant is notified in writing of the examiner's
decision by an "action" which is normally mailed to the attorney or
agent. 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 application.
If the invention is not considered patentable subject
matter, the claims will be rejected. If the examiner finds that the invention
is not new, the claims will be rejected, but the claims may also be rejected
if they differ only in an obvious manner from what is found. It is not
uncommon for some or all of the claims to be rejected on the first action by
the examiner; relatively few applications are allowed as filed.
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), and 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
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 applicant the application will be
reconsidered, and the applicant will be notified if claims are rejected, or
objections or requirements made, in the same manner as after the first
examination. The second Office action usually will be made final.
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
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
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
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.
AMENDMENTS TO APPLICATION
Following are some details concerning amendments to the
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 he 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
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 specifications, claims, and drawing must be amended and
revised when required, to correct inaccuracies of description and definition
of 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 conform to at least one of them as it was at the time
of the filing of the application. 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 being written in at the designated place and larger
insertions being 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 re-number 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 months 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 TO
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 Interference in the
Patent and Trademark Office. The Board of Patent Appeals and Interference
consists of the Commissioner of Patents and Trademarks, the Deputy
Commissioner, the Assistant Commissioners, and the examiners-in-chief, 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
If the decision of the Board of Patent Appeals and
Interference 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.
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 1 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 earliest date. The priority question is determined by a
board of three Examiners-in-Chief on the evidence submitted. From the decision
of the Board of Patent Appeals and Interference, 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; and 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
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, and a fee for issuing the patent is due within
three months from the date of the notice.
The issue fee is due within three months after a written
notice of allowance is mailed to the applicant. If timely payment is not made
the application will be regarded as abandoned.
A provision is made in the statute whereby the Commissioner
may accept the fee late, on a showing of unavoidable delay. 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
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 or selling the invention throughout the United States"
and its territories and possessions for the term of 17 years 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, or sell
the invention but only grants the exclusive nature of the right. Any person is
ordinarily free to make, use, or sell anything he pleases, and a grant from
the Government is not necessary. The patent only grants the right to exclude
others from making, using, or selling the invention. Since the patent does not
grant the right to make, use, or sell 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 or she has received a
patent for an invention, is not thereby authorized to make, use or sell 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 or sell
his/her own invention if doing so would infringe the prior rights of others. A
patentee may not violate the Federal anti-trust 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, or selling his/her own
invention, unless he/she thereby infringes another patent which is still in
Since the essence of the right granted by a patent is the
right to exclude others from commercial exploitation of the invention, the
patentee is the only one who may make, use, or sell the invention. Others may
not do so without authorization from the patentee. The patentee may
manufacture and sell the invention or may license, that is, give authorization
to others to do so.
The term of a patent is 17 years. A maintenance fee is due
3 1/2, 7 1/2 and 11 1/2 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, or sell the invention
without permission of the patentee, provided that matter covered by other
unexpired patents is not used. The terms may not be extended except by special
act of Congress except for certain pharmaceuticals.
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 3
1/2, 7 1/2 and 11 1/2 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,
etc. 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 six month grace period is provided when
the maintenance fee may be paid with a surcharge. The grace period is the six
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 pre-marketing regulatory procedures. Patents relating to
all other types of inventions can only be extended by enactment of special
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 charge
The patentee may disclaim one or more claims of this 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
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
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
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 serial number and date of
filing, and 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
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.
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, and sell the invention for
his or her own profit, without regard to the other owner, 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 or selling the
invention, no one else may do any of these things without his permission. A
license is the permission granted by the patent owner to another to make, use,
or sell the invention. 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, although 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
INFRINGEMENT OF PATENTS
Infringement of a patent consists in the unauthorized
making, using, or selling of the patented invention within the territory of
the United States, 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 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 Claims Court. 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.
If the patentee notifies anyone that is infringing the
patent or threatens suit, the one charged with infringement may start the suit
in a Federal court.
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.
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, 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
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. The only 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. A plant patent has term of 17 years.
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.
Color drawings may be made either in permanent water color or oil, or in lieu
thereof may be photographs made by color photography or properly colored on
sensitized paper. The paper in any case must correspond in size, weight, and
quality to the paper required for other drawings. Mounted photographs are
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 100 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
44 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 could make some profit from foreign patents or that there is some
particular reason for obtaining them, before he attempts to apply for foreign
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 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 executor or
administrator, or equivalent, and in the case of mental disability it may be
made by his 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 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, 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
If any application for patent has been filed in any foreign
country by the applicant or by his legal representatives or assigns prior to
his 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; and 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
being 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 (executive,
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.
FEES AND PAYMENT
Following is a list of patent related fees and charges which are payable to
the Patent and Trademark Office:
Filing Fees Fee Small Entity Fee
Basic filing fee – utility 710.00 355.00
Independent claims in excess
of three 74.00 37.00
Claims in excess of twenty 22.00 11.00
Multiple dependent claim 230.00 115.00
Surcharge--Late filing fee
or oath or declaration 130.00 65.00
Design filing fee 290.00 145.00
Plant filing fee 480.00 240.00
Reissue filing fee 710.00 355.00
Reissue independent claims 74.00 37.00
over original patent
Reissue claims in excess of 22.00 11.00
20 and over original patent
Non-English specification 130.00
Extension for response
within first month 110.00 55.00
Extension for response
within second month 360.00 180.00
Extension for response
within third month 840.00 420.00
Extension for response
within fourth month 1,320.00 660.00
Notice of appeal 270.00 135.00
Filing a brief in support
of an appeal 270.00 135.00
Request for oral hearing 230.00 115.00
Utility issue fee 1,170.00 410.00
Design issue fee 585.00 205.00
Plant issue fee 590.00 295.00
Extension of term patent 1,000.00
Requesting publication of
SIR -- Prior to examiner's
Requesting publication of
SIR -- After examiner's
Certificate of correction 100.00
For filing a request for
Statutory Disclaimer 110.00
Patent Petition Fees
Petitions to the Commissioner,
unless otherwise specified 130.00
Submission of an information
disclosure statement 200.00
Petition to institute a public
use proceeding 1,350.00
Petition to revive unavoidable
abandoned application 110.00 55.00
Petition to revive
application 1,170.00 585.00
Applications filed on or after December 12, 1980
Due at 3.5 years 930.00 465.00
Due at 7.5 years 1,870.00 935.00
Due at 11.5 years 2,280.00 1,410.00
within 6 months 130.00 65.00
Surcharge after expiration 620.00
*Reduced by Basic Filing Fee Paid
PCT Fees - National Stage
Surcharge- Late filing fee
or oath or declaration 130.00 65.00
English translation – after
twenty months 130.00
IPEA- U. S. 640.00 320.00
ISA- U. S. 710.00 355.00
PTO not ISA or IPEA 950.00 475.00
Claims meet PCT Article
33(1)-(4)-IPEA -- U. S. 90.00 45.00
(over three) 74.00 37.00
(over twenty) 22.00 11.00
Claims--multiple dependent 230.00 115.00
For filing with EPO or
JPO search report 830.00 415.00
PCT Fees--International Stage
Transmittal fee 200.00
PCT search fee--no
U. S. application 20.00**
Supplemental search per
additional invention 170.00**
U S. application 410.00*"
fee--ISA was the U .S 450.00**
fee--ISA not the U. S 670.00**
was the U. S 140.00**
not the U. S 320.00**
PCT Fees to WIPO
Basic fee (first thirty pages) 525.00**
Basic supplemental fee
(for each page over thirty) 10.00**
Handling fee 161.00**
Designation fee per country 127.00**
PCT Fees to EPO
International search 1,635.00
** Effective December 27, 1991.
* WIPO fees subject to periodic change due to fluctuations
in exchange rate. Refer to Patent Official Gazette for current
Patent Service Fees Fees
Printed copy of patent w/o color, regular service $3.00
Primed copy of patent w/o color expedited local
Printed copy of patent w/o color, ordered via EOS,
expedited service $25.00
Printed copy of plant patent, in color $12.00
Copy of utility patent or SIR, with color drawings $24.00
Certified or uncertified copy of patent application
as filed, regular service $12.00
Certified or uncertified copy of patent application,
expedited local service $24.00
Certified or uncertified copy of patent-related file
wrapper and content $150.00
Certified or uncertified copy of document,
unless otherwise provided $25.00
For assignment records, abstract of title and
certification, per patent $25.00
Library Service $50.00
List of U. S. patents and SIRs in subclass $3.00
Uncertified statement re status of maintenance
fee payments $10.00
Copy of non-U.S. document $25.00
Comparing and Certifying Copies, Per Document,
Per Copy $25.00
Additional filing receipt, duplicate or corrected
due to applicant error $25.00
Filing a Disclosure Document $10.00
Local delivery box rental, per annum $50.00
International type search report $40.00
Self-service copy charge, per page $0.25
Recording each patent assignment, agreement or
other paper, per property $40.00
Publication in Official Gazette $25.00
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