Patent Law FAQ

When dealing with a nonsigning inventor under pre-AIA 37 CFR 1.47, the following steps should be taken to present application papers:

1. Send a copy of the application papers to the last known address of the nonsigning inventor.
2. If the inventor is represented by counsel, send the papers to the inventor’s attorney’s address.
3. Ensure that the inventor is given the opportunity to review the complete application, unless they have assigned their interest and the assignee has requested otherwise.

The MPEP emphasizes:

‘It is reasonable to require that the inventor be presented with the application papers before a petition under pre-AIA 37 CFR 1.47 is granted since such a procedure ensures that the inventor is apprised of the application to which the oath or declaration is directed.’

This process is crucial to establish that a bona fide attempt was made to present the application papers to the nonsigning inventor.

To learn more:

• pre-AIA 37 CFR 1.47
• application papers
• nonsigning inventor
• presentation process

To learn more:

• pre-AIA 37 CFR 1.47

Determining refusal to join an application under pre-AIA 37 CFR 1.47 involves several considerations:

1. The inventor must be presented with the application papers.
2. The inventor must understand what they are being asked to sign.
3. The inventor must expressly refuse to accept the application papers.

The MPEP states:

‘A refusal by an inventor to sign an oath or declaration when the inventor has not been presented with the application papers does not itself suggest that the inventor is refusing to join the application unless it is clear that the inventor understands exactly what he or she is being asked to sign and refuses to accept the application papers.’

It’s important to document the circumstances of the presentation and refusal, including time, place, and any written evidence of refusal.

To learn more:

• pre-AIA 37 CFR 1.47
• refusal to join
• application papers
• inventor refusal

To learn more:

• pre-AIA 37 CFR 1.47

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

What are the consequences of submitting color drawings in a utility patent application?

Submitting color drawings in a utility patent application has specific consequences and requirements:

• Color drawings are not ordinarily permitted in utility patent applications.
• As stated in MPEP 507: “Color drawings are permitted in design applications. For utility patent applications, color drawings are not permitted without a grantable petition.”
• If color drawings are submitted without an approved petition, OPAP will send a Notice to File Corrected Application Papers.
• The applicant must either:
• Replace the color drawings with black and white drawings, or
• File a grantable petition under 37 CFR 1.84(a)(2) to accept the color drawings.
• The petition must explain why color drawings are necessary and be accompanied by the fee set forth in 37 CFR 1.17(h).

It’s important to consider whether color drawings are truly necessary for your utility patent application, as they require additional steps and fees in the application process.

For more information on application papers, visit: application papers.

For more information on color drawings, visit: color drawings.

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

What are the consequences of submitting color drawings in a utility patent application?

Submitting color drawings in a utility patent application has specific consequences and requirements:

• Color drawings are not ordinarily permitted in utility patent applications.
• As stated in MPEP 507: “Color drawings are permitted in design applications. For utility patent applications, color drawings are not permitted without a grantable petition.”
• If color drawings are submitted without an approved petition, OPAP will send a Notice to File Corrected Application Papers.
• The applicant must either:
• Replace the color drawings with black and white drawings, or
• File a grantable petition under 37 CFR 1.84(a)(2) to accept the color drawings.
• The petition must explain why color drawings are necessary and be accompanied by the fee set forth in 37 CFR 1.17(h).

It’s important to consider whether color drawings are truly necessary for your utility patent application, as they require additional steps and fees in the application process.

For more information on application papers, visit: application papers.

For more information on color drawings, visit: color drawings.

When dealing with a nonsigning inventor under pre-AIA 37 CFR 1.47, the following steps should be taken to present application papers:

1. Send a copy of the application papers to the last known address of the nonsigning inventor.
2. If the inventor is represented by counsel, send the papers to the inventor’s attorney’s address.
3. Ensure that the inventor is given the opportunity to review the complete application, unless they have assigned their interest and the assignee has requested otherwise.

The MPEP emphasizes:

‘It is reasonable to require that the inventor be presented with the application papers before a petition under pre-AIA 37 CFR 1.47 is granted since such a procedure ensures that the inventor is apprised of the application to which the oath or declaration is directed.’

This process is crucial to establish that a bona fide attempt was made to present the application papers to the nonsigning inventor.

To learn more:

• pre-AIA 37 CFR 1.47
• application papers
• nonsigning inventor
• presentation process

To learn more:

• pre-AIA 37 CFR 1.47

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

What are the consequences of submitting color drawings in a utility patent application?

Submitting color drawings in a utility patent application has specific consequences and requirements:

• Color drawings are not ordinarily permitted in utility patent applications.
• As stated in MPEP 507: “Color drawings are permitted in design applications. For utility patent applications, color drawings are not permitted without a grantable petition.”
• If color drawings are submitted without an approved petition, OPAP will send a Notice to File Corrected Application Papers.
• The applicant must either:
• Replace the color drawings with black and white drawings, or
• File a grantable petition under 37 CFR 1.84(a)(2) to accept the color drawings.
• The petition must explain why color drawings are necessary and be accompanied by the fee set forth in 37 CFR 1.17(h).

It’s important to consider whether color drawings are truly necessary for your utility patent application, as they require additional steps and fees in the application process.

For more information on application papers, visit: application papers.

For more information on color drawings, visit: color drawings.

Determining refusal to join an application under pre-AIA 37 CFR 1.47 involves several considerations:

1. The inventor must be presented with the application papers.
2. The inventor must understand what they are being asked to sign.
3. The inventor must expressly refuse to accept the application papers.

The MPEP states:

‘A refusal by an inventor to sign an oath or declaration when the inventor has not been presented with the application papers does not itself suggest that the inventor is refusing to join the application unless it is clear that the inventor understands exactly what he or she is being asked to sign and refuses to accept the application papers.’

It’s important to document the circumstances of the presentation and refusal, including time, place, and any written evidence of refusal.

To learn more:

• pre-AIA 37 CFR 1.47
• refusal to join
• application papers
• inventor refusal

To learn more:

• pre-AIA 37 CFR 1.47

When dealing with a nonsigning inventor under pre-AIA 37 CFR 1.47, the following steps should be taken to present application papers:

1. Send a copy of the application papers to the last known address of the nonsigning inventor.
2. If the inventor is represented by counsel, send the papers to the inventor’s attorney’s address.
3. Ensure that the inventor is given the opportunity to review the complete application, unless they have assigned their interest and the assignee has requested otherwise.

The MPEP emphasizes:

‘It is reasonable to require that the inventor be presented with the application papers before a petition under pre-AIA 37 CFR 1.47 is granted since such a procedure ensures that the inventor is apprised of the application to which the oath or declaration is directed.’

This process is crucial to establish that a bona fide attempt was made to present the application papers to the nonsigning inventor.

To learn more:

• pre-AIA 37 CFR 1.47
• application papers
• nonsigning inventor
• presentation process

To learn more:

• pre-AIA 37 CFR 1.47

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

What are the consequences of submitting color drawings in a utility patent application?

Submitting color drawings in a utility patent application has specific consequences and requirements:

• Color drawings are not ordinarily permitted in utility patent applications.
• As stated in MPEP 507: “Color drawings are permitted in design applications. For utility patent applications, color drawings are not permitted without a grantable petition.”
• If color drawings are submitted without an approved petition, OPAP will send a Notice to File Corrected Application Papers.
• The applicant must either:
• Replace the color drawings with black and white drawings, or
• File a grantable petition under 37 CFR 1.84(a)(2) to accept the color drawings.
• The petition must explain why color drawings are necessary and be accompanied by the fee set forth in 37 CFR 1.17(h).

It’s important to consider whether color drawings are truly necessary for your utility patent application, as they require additional steps and fees in the application process.

For more information on application papers, visit: application papers.

For more information on color drawings, visit: color drawings.

Determining refusal to join an application under pre-AIA 37 CFR 1.47 involves several considerations:

1. The inventor must be presented with the application papers.
2. The inventor must understand what they are being asked to sign.
3. The inventor must expressly refuse to accept the application papers.

The MPEP states:

‘A refusal by an inventor to sign an oath or declaration when the inventor has not been presented with the application papers does not itself suggest that the inventor is refusing to join the application unless it is clear that the inventor understands exactly what he or she is being asked to sign and refuses to accept the application papers.’

It’s important to document the circumstances of the presentation and refusal, including time, place, and any written evidence of refusal.

To learn more:

• pre-AIA 37 CFR 1.47
• refusal to join
• application papers
• inventor refusal

To learn more:

• pre-AIA 37 CFR 1.47