PATENT APPLICATION PREPARATION AND SUBMITTAL -------------------------------------------- Rev 4/98 CONTENTS OF THIS FILE: I. PATENT APPLICATION PREPARATION INSTRUCTIONS II. ELEMENTS OF A PATENT APPLICATION, TEXT OUTLINE FOR SPECIFICATION and OTHER DETAILS. PETITION TO MAKE SPECIAL. (expedited handling, fastrack examination) III. APPLICATION INSTRUCTIONS AND MAILING CERTIFICATES, MAILING INSTRUCTIONS. This document is not to be construed as legal advice. Use it with the understanding that it may be erroneous and/or incomplete. Opinions differ on the best ways to communicate with the PTO. You are advised to seek competent advice. The Patent Office registers patent practitioners as Patent Attorneys and Patent Agents. They have equal standing with the patent office. The only prerequisite for registration is a degree in engineering or some similar natural science. Both Attorneys and Engineers must have a BS or equivalent. Patent Attorneys also are members of some State Bar. There is no requirement that an attorney or agent demonstrate technical experience or hands-on competence. Many agents are or have been practicing Engineers, and many have advanced degrees in Engineering. ======================================================================== PATENT APPLICATION PREPARATION INSTRUCTIONS AND OUTLINE JULY 19, 1993 By Bruce Ross, PE an engineer, not an attorney This document is not to be construed as legal advice. It is for your guidance to locate the underlying statues and regulations. Please employ competent assistance or read and understand the procedures yourself. Most patent examiners are patient with inventor-applicants, but do not count on it. These instructions are compiled from 37 CFR, July 1992 and Patent Office publication "General Information Concerning Patents", May, 1992 (GICP). Your personal reading of these references is recommended. Also, contact the Patent Office about current fees. They are available from the US Printing Office, Washington DC or the Government book store in the Federal Building downtown Seattle. 37CFR is about $17 and GICP is $2.25. Many excellent books on patents and inventor prepared applications are available. Also, the primary "rule book", the "Manual Of Patent Examining Practice" (MPEP) is available from the Government Printing Office. It is big, expensive, $78, but is definitive. It includes 37CFR and 35USC and regular revision is included in the price. Many of these are available at the UW Engineering Library or Seattle Public Libraries. The patent office does not supply application forms (see GICP, page 14). However, having denied that they provide forms, the GICP does have a set of application forms. An application has the following and in the indicated order: (37CFR 1.51, 1.71 to 1.77, MPEP 601, MPEP 608.01) 1. Optional personal letter of transmittal, special instructions, information, table of contents, acceptance of informal drawings, set up deposit account, etc. May substitute for Patent Application Transmittal Letter form below if all relevant information is supplied. 2. Specification Letter of Transmittal (form in GICP, "Patent Application Transmittal Letter") Cross Reference to related applications, Provisional application, and/or Disclosure Document. Background of Invention 1. Field of Invention 2. Related Art. Description of related art including information disclosed under 37CFR 1.97, 1.98 Summary of Invention Description, function, purpose, how to use, etc. Objects (goals) of the Invention (may be set in background section) Description of figures Detailed description of preferred embodiment to the invention Claims Abstract (50 to 250 words in one paragraph and on a separate page) Oath -- Title, Name of Inventor(s), Citizenship, Place of residence, Mailing address. 37CFR 1.63, 1.68 (form in GICP, "Declaration for Patent Application") Drawings 37CFR 1.81 to 1.88 4. The Fee $385 minimum, VERIFY amount, including surcharge for excess claims! 5. Small Entity declaration, if applicable. 37CFR 1.9, 1.27 (Form in GICP. "Verified Statement ....") 6. Information Disclosure Statement 37CFR 1.97, 1.98 7. Mail to "Assistant Commissioner for Patents " Box Patent Application Washington DC, 20231. Recommend U.S. Post Office Express Mail with Certificate of Mailing. PTO does not recommend FEDX, UPS, etc, There are specifications pertaining to the paper size, borders, page numbering etc. The details are found in the GICP, CFR, and MPEP cited. The MPEP also has some guidance on editorial practices for claims and abstract preparation and other matters of form and style. Use existing patents as models. Copy paragraphs and phrases from them when applicable. This is NOT plagiarism. Patents are public documents and not copyrighted. The PTO recommends that the text be typed 1-1/2 spacing (4/inch) or double spaced (3/inch), and that lines be numbered by 5's on every fifth line. All papers printed one side only, of quality to be xeroxed. Drawings may be submitted as "informal", ie. not totally conforming to the required forms, but containing ALL the essential information. Informal drawings may be hand sketched if technically adequate and clear. Formal drawings will be required just prior to issue of the patents. Note: if the application is rejected and does not result in a patent, use of informal drawings saves considerable money. A search of old patents is not required by regulations, but is recommended. The Patent Office will make a search, but your own search will find many old patents before the Examiner does, and you will already have answered some of his probable objections. A search can save considerable money and time. Several good self-help books are available at the Library. --- end ---- ====================================================================== -=-=-=-=- ELEMENTS OF A PATENT APPLICATION and OUTLINE FOR DRAFTING THE SPECIFICATION By Bruce Ross, PE. (an Engineer, not an attorney) 5/97 Rev 4/98 DISCLAIMER: This document is not to be construed as legal advice. It is for your guidance to locate the underlying statues, regulations, and resources. Please employ competent assistance or read and understand the procedures yourself from a competent source. Most patent examiners are patient with inventor-applicants, but do not count on it. Many excellent books on patents and inventor prepared applications are available. Also, the primary "rule book", the "Manual Of Patent Examining Practice" (MPEP) is available from the Government Printing Office. It is big, expensive, $78, but is a lot less expensive than attorney fees. The MPEP also contains the code of ethics for Patent Attorneys 37cfr10.xx . A good read. The MPEP is available for download on the PTO website uspto.gov . The file version is complete but hard to use as the file is cluttered with typesetting codes and the indexes are hard to locate. FORWARD: This outline is derived from analysis of many issued US patents and comprises an outline for preparation of new application. Other organizations are usable. Some of the sections are required by statute and some are editorial devices. See MPEP 601, 35 USC 111, 35 USC 112. A great deal of helpful information is to be found on the Patent Office's website uspto.gov . As of 1998, the application forms are also there on the PTO site. Many good books on preparing a patent application are available from the US government and from bookstores. Most of the best are also in many public libraries. Download "General Information Concerning Patents" and/or "Basic Facts Concerning Patents" from the PTO, or get it from the library or Government Bookstores $2.25. One excellent and readily available book is "Patent it Yourself", by David Pressman, Nolo Press, $50. A lot less expensive than an attorney, and it can be used to check on your attorney's work and/or divide tasks between those you can easily do yourself and such as search, specification and those where experience counts such as a constructive review and/or the claims.. This outline may also be used as a guide for preparing your disclosure under the Patent Office Disclosure Program. Disclosure document format is not proscribed, but thoroughness about the invention is advised. Failure to adequately disclose your invention in a disclosure document reduces its value as a reference for proving the date of conception of your idea. This outline may also be used as a guide for preparing a Provisional Patent application. A Provisional Patent Application is similar to a disclosure document but is more formal and bestows certain privileges. It comes with an official "Filing Date" and is adequate to preserve foreign filing rights. It permits the use of "Patent Pending" marking on your product. A Provisional Patent Application must be complete per 35 USC 112 (including Figures) and describe both how to MAKE and how to USE the invention just as in regular patent application. While only the description of the preferred embodiment (best mode) is required, more can be included. Especially useful is the brief description of the invention and a set of possible "claims". All three being re-statements of the invention. Failure to adequately disclose your invention in a Provisional Patent Application may render it useless for filing date purposes, which is its primary usage. Statute is silent, but it can be assumed that an inadequate (or expired) PPA reverts to the equivalent of a Disclosure Document. Useful, for establishing invention date as long as the US remains a "first to invent" country. However, there are "traitors" in the US government who want to adopt the European/Japanese system of "first to file", which is a fascist concept designed to shut the common person out of governmental process. These traitors falsely claim the GATT treaty requires the change to US Patent Law. The general term used for the changes to Patent, Trademark, and Copyright law are generally described as "Harmonization" and its requirements are greatly exaggerated to hoodwink the somnambulists who populate Congress. The subject has been introduced at least twice and passed the House. Fortunately, some of the worst traitors (or ignoramuses if you prefer a gentler adjective) have retired from the House.) =================================================== REGULAR PATENT APPLICATION: General description, contents -- I. The Application Forms The various affidavits and forms required to register the application with the Patent Office. Application forms are available from several sources including some commercial publications on preparing patent applications. Forms are found in "General Information Concerning Patents" by the Department of Commerce (Pt. Office). Available from the US Gvt Book store, Federal Bld, Seattle, or the Government Printing Office, or the Patent Office for about $2.25. The Seattle Public Library has a notebook with most forms, but may be out of date. II. Side Documents 1. Abstract 2. Information Disclosure Document (Index and relevance of References cited in the application or having some relevance, but not used. No harm in too many, but can cost you money if you should have sent some in and did not. 3. Copies of reverences cited in Information Disclosure Document. III. Drawings Drawings depicting whatever information needed to clarify the description, use, operation, and construction of the invention. Note: Figure titles, and in general, text material, are not allowed as part of the figures (USPtO regulations), block diagram box labels seem to be an exception. The PtO permits informal drawings to be submitted with the filing of the application, but must eventually be prepared to standard. This delay is to allow revisions to be made on the figures during the examination process, and it is ideal to save money by not having the finished drawings made professionally at the start.. Note: save the Atty markup by contracting directly with the draftsman if you cannot draw them yourself. There is no registration or licensing requirement to do patent drawings. The drawing criteria are in the MPEP, section 608. While the PTO will tolerate many non- standard practices in drawings submitted as "informal", they cannot and will not accept drawings that do not clearly and completely depict the inventive details and how the novelty relates to the complete operating device. Incomplete drawings will not be supportive of the textual description. In short, the specification including the drawings must be adequate to disclose the invention as claimed. Disclosure document drawings may use titles and word-identification of components. They must be removed if the drawings are re-used in the patent application. Photographs ok in the Disclosure Document, but should be mounted and identified. All parts of a DD should be in permanent form (inked). Xerox copies of pencil sketches OK. PPA drawings may be informal like DD drawings, but all of the detail identifiers must be included. The drawing set must be complete and in permanent form (inked), Good quality, dark, Xerox ok. Otherwise same rules as for a regular patent application. Completeness counts !!! The subsequent Regular application can have new matter, but whatever is new is not covered by the PPA application date. Extra stuff subsequently can be edited out, but not put in and get the prior date. ----------------------------------------------------------------------- [the following is the patent application text] IV. SPECIFICATION ------------- See MPEP 601, MPEP 601.01, MPEP 608.01, 35 usc 112 [] = added notes --------------------------------------- ---- OUTLINE FOR DRAFTING A PATENT APPLICATION ---- It is not considered plagiarism or bad taste to adapt phrases, style, or information from other patents in drafting your patent disclosure. Note though, that if your invention seems to be described by someone else's CLAIM (even liberally interpreted), then consult a competent attorney immediately.!.!.! TITLE OF INVENTION (dd, ppa, regular) CROSS REFERENCES TO RELATED APPLICATIONS, if any. [ie, Provisional App, Disclosure Document, Continued from, etc] Model usable forms: The present application claims benefit of filing date of co-pending Provisional Application # _________ titled____________, filed on__________ . Disclosure Document # _________ titled __________________ and dated _________ and the above Provisional Application are made part of this application by reference. Statement as to right to inventions made under federally sponsored R&D, if any. BACKGROUND OF THE INVENTION [Provides historical information, present methods.] 1. Field of Invention 2. Description of prior art Delineation of how this invention differs from prior art (usually one or more patents singly or in combination), and is thus believed to be patentable as a unique concept. [3.] Delineation of how this invention differs from prior art (usually one or more patents singly or in combination), and is thus believed to be patentable as a unique concept. [4.] Objects of the invention [optional here, objects can be either a summary of the background or part of the summary description below] [The numbers 1 and 2 above are to be included in the text. 3 and 4 optional. "Objects" may be a paragraph heading. ] SUMMARY OF THE INVENTION [Provides short description of the invention.] 1. What the invention is to do and how it does it. 2. Objects of the Invention (often set forth in the background) What existing problems you intend the invention to resolve. Use the form "The (An) object of the invention is ----." BRIEF DESCRIPTION OF THE DRAWINGS [This section gives the "Title of the Figures" and one or two sentences of additional descriptive material for each Figure.] DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENT(s). (dd, ppa, regular) [The preferred embodiment is called the "best mode"] [Description of the invention. See 35USC 112.] Detailed description of the preferred embodiment, 1. how it works and how to make it referencing the drawings, charts, tables, etc as appropriate. 2. how to use the invention. (VVVery important, even if it seem obvious or redundant.) (SEE "HOW TO USE TH INVENTION" described later.) (The application as a whole must show how to MAKE and how to USE the invention. If BOTH of these are not clearly expressed, the PTO may reject the application.) Examiners can be very dense and hard-head about whether MAKE and USE the invention has been adequately described even you may think it is obvious, especially how to use it is inherently obvious from the invention itself or the rest of the specification. [The best mode description often is redundant to the SUMMARY. This is OK, as each section should stand alone for the purpose for which they are written.] OTHER EMBODIMENTS AND VARIATIONS Other methods of constructing and various alternatives for details. This section is to broaden the scope and further explain your invention. A patent is worth only what it can protect. Whether an embodiment is protected or not is always arguable. If it is not described, its inclusion by inference or equivalence is much more difficult to defend. What is not described in both the text and the claims is not patented. Often, what is thought to be the best mode at the time of filing is discovered to be inferior to one of the other embodiments. If it is in the application, the claims can be adjusted as needed. Otherwise, a new application, with FEES, is required. Whatever you describe in your application cannot subsequently be patented by another (your competitor), but often you can. Inclusion of an idea in the application is a publication, and reserves it for you for 1 year, but eventually, it becomes public domain. That is the price for whatever you gain. HOW TO USE THE INVENTION 35 USC 112 requires the patent application to describe how to MAKE and how to USE the invention. Very often, how to use is obvious from the invention's description. However, many examiners seem to act thick-headed and always obstinate about everything. It is best to clearly and distinctly add language pertaining to how, when, where your invention is to be used. Redundancy is not held against you. Brevity may be. Especially when brevity is reduced to unwritten understandings and implications. Many application authors repeat the USE in a separate paragraph. BOILER PLATE . These are "standard" clauses inserted at appropriate places within the above sections to notify others that the inventor is aware of, and is protecting extensions and applications of his invention. The protection clause is usually placed just prior to the Claims. Use wording found in recent patents as examples. Wordings from various sources may be combined as long as they do not conflict. XAMPLES -- these together with other objects of the invention, along with the various features of novelty which characterize the invention, are pointed out with particularity in the claims annexed to and forming a part of this disclosure. For a better understanding of the invention, is operating advantages and the specific objects attained by its uses, reference should be made to the accompanying drawings and descriptive matter in which there is illustrated preferred embodiments of the invention. It is recognized that one skilled in the art will perceive other embodiments and variants in the spirit and nature of the invention. It is intended that such embodiments and variants be included within the monopoly extended by patent. XAMPLE The foregoing is considered as illustrative only of the principles of the invention. Further, since numerous modifications and changes will readily occur to those skilled in the art, it is not desired to limit the invention to the exact construction and operation shown and described, and accordingly, all suitable modifications and equivalents may be resorted to falling within the scope of the invention as defined by the claims which follow. The embodiments of the invention in which an exclusive property right or privilege is claimed are defined as follows: CLAIMS Claims. [ start claims on a new sheet with the words "I claim:] These are most critical. They are the actual concepts to be protected and are the heart of the protection available through the patent. Infringement actions will center on the claims. Claim drafting is too intricate to detail here. Get a good book, or write them down as clearly as you can then have a qualified patent professional put them into proper language. Each claim is ONE sentence. One capital letter and one period, no matter how long or how awkward. Your old English Teacher would cringe at that, but it is the way it is done in patents. Note: Ideas included in the body of the patent but not claimed are protected from future patenting, but are not in themselves protected from use by others. They are also useful for explaining claims and demonstrating that a claim covers a particular situation under a broad description. ABSTRACT. [put Abstract on a new sheet] form: TITLE OF INVENTION Abstract text (see below for instructions) In addition to the body of the patent, the application requires an ABSTRACT, which is a single paragraph of 50 to 250 words, 25 lines maximum, and is a separate document for the Gazette. See 37CFR 1.72 and MPEP 608.01 . Abstract and title should sufficiently describe the invention in words likely to be used by a searcher so that the patent may be found. An Obtuse abstract and title in effect hides the patent from both new inventors and from others who might pay royalties if they were aware of it. Drawing Key Index and Claim tree: [ optional] Put on new sheet. An index of figure detail-identification numbers, and a Claim Tree, ie claim index identifying the relationships of dependent clauses, and short description of each concept claimed, is appreciated. These are not necessarily a part of the body of the application, although some patent attorneys do include a drawing key index in the patent text. The logical place is between the "Brief Description of the Figures" and the "Detailed Description". The indexes are not a requirement. --- END of OUTLINE --- Make Special: [part of letter of transmittal or separate] There are several conditions where an application may be put on a fast track. For most inventors, the common conditions are that one of the inventors is over 65 years old or is ill (MPEP 708.02, 37CFR 1.02). There is no fee for the over 65 or ill-health conditions. A medical certificate may be required for health condition. A document showing Inventor's age is recommended. A copy of a Driver's Licence seems to work. Sample Petition: IN THE UNITED STATES PATENT OFFICE Re Application: Title: ____________________________________________________ Inventors: ______________________________________________ Filing Date: __________________ [known only if filed by Express mail. Otherwise use month and year.] Application #_________________ [this is unknown at filing time] PETITION TO MAKE SPECIAL Commissioner of Patents and Trademarks Sir: The inventor(s) of the above named application for patent respectfully petition(s) that the application receive advancement of examination per MPEP 708.02 (IV) and 37CFR 1.102(c) by reason of the applicant's age, namely, applicant ______________________ being __ years of age. I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statement were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under section 1001 of Title 18 of the United States Code, and that such willful false statements may jeopardize the validity of the application, any patent issuing thereon, or any patent to which this verified statement is directed. Name: _____________________________ Address:_____________________________ _____________________________ _____________________________ Sign: _____________________________ Date: _____________________________ =============== end of patent application outline =============== Search: A search is not required, but highly recommended. The search that you did is described in a side document called The Information Disclosure Statement (IDS). What art(s) were searched, what interesting patent titles found, rejected, examined, and a short summary describing each similar device found. Trade publications, handbooks, catalogs, text books, and other possible sources that might disclose prior use or conception should also be examined and listed. In general, the more thorough the search, made prior to application, the less likely the examiner is to come up with a surprise. Also, a comprehensive search builds credibility toward the application. Keep notes on the progress of the search, what was examined, what was found, even if nothing, relationship to invention, etc. ------------------------------------------------------------------ APPLICATION INSTRUCTIONS AND MAILING CERTIFICATES ------------------------------------------------- CONTENTS: I. How to fill out the application forms II. Sample Cover Letter with request for constructive assistance. III. Mail certification forms and how to use for: a. Express mail for Applications V. Instructions for Express mail certificate ============================================================== FILLING OUT THE APPLICATION FORMS AND ASSEMBLING THE DOCUMENTS * It is not necessary to use the Official forms. * It is necessary to provide the required information. * The forms have blanks that are seldom used. * The "official" forms are available from several Government sources. They vary in appearance, but not in content. FORM -- PATENT APPLICATION TRANSMITTAL LETTER Fill out the applicable lines and boxes. In most cases, this is box 1, 2, 4, 7, and 8. Small Entities are individual(s) and companies with less than 500 employees. See 37 CFR 1.9 for details. Few Inventions have more than 3 independent claims. Few Inventions have more than 20 claims total. Multiple Dependent claims are to be avoided. They cost more than simply duplicating ordinary dependent claims. Most inventors can ignore the bottom 5 boxes. SIGN it and attach the check. FORM -- DECLARATION FOR PATENT APPLICATION * This is in effect, the contract between you and the United States that sets the entire patent process going. * Unless you have foreign or other US patents which relate and pre-date the present application, most of this page is moot. * Read and understand the specification and all the papers. * Read the applicable laws, 37CFR 1.56 in particular. * If the specification, claims, and drawings adequately describe your invention, fill in the form. * If you do not put a name and address in the appointment field, the person first named in the signature fields at the bottom will be the person the PTO will consider to be the leader and will receive the mail. This is important when there are Joint inventors, as one should be appointed as the spokesman for the application. *** DO NOT SIGN THE DECLARATION until you are satisfied with the application. Once signed, the Specification cannot legally be changed. Changes (amendments) can be inked in directly on the specification PRIOR TO SIGNING, but they must be initialed and dated (37cfr1.52c)9 and the oath (declaration) must mention that the specification has been amended. FORM -- VERIFIED STATEMENT CLAIMING SMALL ENTITY STATUS. This is the one that gets the 50% discount. See 37 CFR 1.9 You qualify if you meet the criteria stated in 37 CFR 1.9. In essence, if you (or your company) plus its subsidiaries, holding companies, and their subsidiaries have less than total of 500 employees, you qualify. Except if you have contracted to sell or transfer an interest in your invention to some one like described above who has 500 or more employees. Your employment contract with your regular employer may count against you. In particular there if there is an assignment clause or a "shop rights" clause that may be held against your invention. If you make such a contract at any time, you lose your small entity status from then on. Make sure that you are adequately compensated. ================================================================= Example cover letter. A cover letter is optional May be used as a check list All documents the PTO should have a 1 inch top border for fastening into a folder "legal style" ------------------------------------------------- IN THE UNITED STATES PATENT OFFICE Re: Invention titled: ______________________________________ Inventors: _________________________________ The Hon. Assistant Commissioner of Patents. Dear Sir: Enclosed is my application for letters patent for a new invention titled _____________________________________________ Please enter the following documents comprising my application for patent of the above named invention. Patent Application Transmittal Letter Declaration for Patent Application Verified Statement claiming Small Entity Status Specification, drawings, claims, and abstract Information Disclosure Statement including copies of reference patents. Form 1449 Filing fee, small entity, $385 Request for Constructive Assistance, MPEP 707.07j : If the Examiner finds that patentable material is disclosed in this application, please amend or draft one or more claims for the invention disclosed. Applicant further requests that Examiner's communications and/or objections be sufficiently and specifically detailed that the applicant may readily comprehend the communication or objection. Yours truly, _________________________, applicant, inventor. Dated___________________. CERTIFICATE OF MAILING EXPRESS MAIL SERVICE I hereby certify that the attached application for patent is being deposited with the United States Postal Service as Express Mail, Post Office to Addressee, under CFR 1.10, in an envelope addressed to the Assistant Commissioner of Patents, Washington DC 20231, on ___________________, 1997. The Express Mail label number is # _____________. Signed:_______________________ Inventor ==================================================================== ------------ instructions for Filing by Express Mail ------------- Mail to: Assistant Commissioner of Patents Box -- Patent Application Washington, DC., 20231 How to use: * Make two copies of your application including the EXPRESS MAIL CERTIFICATE. * Do not seal the mailing envelope yet. * Take it to the U.S. Post Office and fill out the EXPRESS MAIL forms. * Put the EXPRESS MAIL number on both copies of the EXPRESS MAILING certificate (above). * Seal one envelope and hand over to the Postal Clerk. * Only one inventor needs to mail and sign the certificate of mailing. In fact, any one can do it for you, but it is best if it is an inventor. * Put away your copy of the application including the EXPRESS MAIL CERTIFICATE and the Post Office Express mailing receipt. ----> Valuable documents. <---- At this moment, your application is officially filed and you can, and should, use "Patent Pending" or "Patent Applied For " notation on your product and literature. Note: EXPRESS MAIL is a service of the U.S. Post Office. Federal Express, UPS, ETC are not equivalent in the eyes of the PTO, and have of no special advantage. Furthermore, with them, your application is NOT "filed" until it is actually received by the PTO. If the unusual happens, ie, the Post Office (or the PTO) loses your mailing, the PTO will accept evidence of its having been Express mailed to the PTO, but not if sent by the commercial express services. The provisional postcard should be returned in a few days. For both regular and provisional applications, in 4 to 6 weeks a receipt is sent from inside the PTO. This receipt also has the all-important application number and the license for foreign filing. ---------------------------------------------------------------- ----- end ----- of it all ......... 73 ._._.