What's in a Patent Application?

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Are you considering filing for a utility patent? Are you curious about what’s contained in the application? If you opened a typical utility patent application package at the U.S. Patent and Trademark Office (USPTO) mailroom, it would contain the following:

Transmittal Form. The Transmittal Form serves as a cover letter for the application. It describes what is being filed, the names of the inventors, the number of pages, the fee, and other information used by the USPTO to categorize the filing. All of the inventors must sign the transmittal form. (All of the USPTO forms required for an application are downloadable from the USPTO website, at www.uspto.gov.)

Fee Transmittal Form. This form provides information about your fee, including whether you are claiming Small Entity Status. (Most inventors claim this reduced-fee status unless they have transferred their invention rights to a for-profit business with more than 500 employees.)

Credit Card Transmittal Form. You must complete this additional form if you are paying by credit card.

Fee. You can pay by personal check, money order, or credit card. Currently, the basic filing fee is $165 for small entities. (There is also an issue fee of $755 as well as a search fee of $270 and an examination fee of $110.) The fee depends on several variables, including the number of independent and dependent claims, whether the applicant qualifies for Small Entity Status, and whether an assignment is being filed (transferring rights from the inventor to another entity). You can review current filing fees at the USPTO website.

Patent Application Declaration (PAD). The PAD certifies the accuracy of the statements in the application—in other words, that you are telling the truth.

Drawings. Patent drawings (also known as “drawing sheets”) are visual representations of the invention that must be included with the application, if necessary to explain the invention. The drawings must show every feature recited in the claims. There are strict standards for patent drawings as to materials, size, form, symbols, and shading. For help in preparing drawings, consult How to Make Patent Drawings, by Jack Lo and David Pressman (Nolo). If you’d prefer to have a patent draftsperson prepare the drawings, you can expect to pay between $75 to $150 per drawing sheet.

The Specification. This document will make up the bulk of your application. It describes the invention so that someone knowledgeable in the field of the invention can make and use it without any further experimenting. It also discloses the “best mode” of creating and using the invention. In other words, the specification is a statement that explains the best way to make and use an invention. If the inventor knew of a better way (or “best mode”) and failed to disclose it, that failure could result in the loss of patent rights. The specification consists of several sections including:

  • title
  • background of the invention—this usually includes cross-references to any related applications, references to a microfiche appendix, a statement regarding federally sponsored research or development, the field of the invention, and a discussion of prior art
  • summary of the invention—this usually includes the objects (what the invention accomplishes) and advantages (why the invention is superior to the prior art) of the invention
  • description of the drawings
  • detailed description of the invention and how it works
  • abstract—a concise, one-paragraph summary of the structure, nature, and purpose of the invention, and
  • claims.

Claims. Of all the elements, claims are often the hardest to draft (and hardest to decipher). One reason is that claims follow strict grammatical requirements: They are sentence fragments, always start with an initial capital letter, and contain one period and no quotation marks or parentheses (except in mathematical or chemical formulas). Claims are usually comprised of independent and dependent claims. One claim is stated as broadly as possible (the “independent claim”) and then followed by successively -narrower claims designed to specifically recite possible variations on the invention (“dependent claims”). The independent claim stands by itself, while a dependent claim always refers back and incorporates the language of another independent or dependent claim.

What Else?

In addition to these documents, the following documents might also be included in the utility patent application:

Information Disclosure Statement. This should be included if you know of any relevant prior art. You don’t have to include it with the application; you can file it within three months after you file the application.

Petition to Make Special. Include this if you want to accelerate the examination process by a few months. You can request it only if you meet one of the requirements in the patent law—for example, your invention relates to HIV/AIDS or cancer research, counters terrorism, or results in significant energy savings, or if the applicant’s health is poor.

Assignment and Cover Sheet. Include this if you are transferring ownership of the patent. You don’t have to provide it with the application; you can file it any time.

Disclosure Document Reference Letter. Include this if a Disclosure Document was filed previously.

Return Receipt Postcard. This is optional, but it provides proof that the application was received by the USPTO.

Who Files the Utility Application?

A patent application must be filed in the name of the true inventor or inventors. If there is more than one inventor, each becomes an applicant for the patent, and each automatically owns equal shares of the invention and any resulting patents.

Inventorship can be different from legal ownership. Often, all or part of the ownership rights to the invention and the patent application must be transferred to someone else, either an individual or a legal entity. For example, some inventors are hired to invent for companies; they may be required to transfer ownership of any inventions they create as a condition of employment. To make the transfer, the inventor must legally transfer the interest by filing an assignment, either with the patent application or at any time afterward. Some inventors prefer to wait until they have a received a serial number for the application before filing the assignment.

If an assignment has been recorded and the applicant refers to it in the issue fee transmittal form, the USPTO will print the patent with the assignee’s interest indicated.

Even if the patent doesn’t indicate the assignment, the assignment will still be effective if the USPTO has recorded it.

Should You Do Your Own Utility Patent Application or Hire a Professional?

Many inventors have obtained patents on their own, often using the method David Pressman explains in detail in his book, Patent It Yourself (Nolo). Doing your own patent requires considerable diligence. If you have sufficient funds but don’t have the time or writing skills to do it on your own, you may be better off hiring a professional.

Of course, you can do some of the work yourself and hire a professional to do the rest. You can, for example, draft your application then have an attorney review it, or hire an attorney only if your application runs into problems with a USPTO examiner. Or you can familiarize yourself with the patent drafting rules so that you can save time explaining your invention and preparing your patent.

Interested in Filing a Provisional Patent Application?

For the purpose of obtaining an early filing date, the inventor may file what is known as a Provisional Patent Application (PPA). The only requirement for a PPA is that it must adequately describe how to make and use the invention. However, to obtain a patent, the inventor must file a formal patent application (within one year of the PPA date if one is filed). If you are interested in preparing a PPA, Nolo offers two resources. You can prepare and file the PPA yourself using the book Patent Pending in 24 Hours, or you can file your PPA directly on the web using Nolo’s interactive online PPA filing procedures (www.nolo.com).

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