Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Patent Law (3)
Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
To learn more:
‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a):
Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.
This can include adding specific percentages, compounds, or even omitting steps from a method that were present in the original disclosure.
To learn more:
Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so:
- These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts.
- A surcharge may be required for late submission.
- Failure to submit these items within the specified period may result in the application being abandoned.
The MPEP states: The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
It’s important to note that while these items can be submitted later, it’s generally best practice to include them with the initial filing to avoid potential issues or delays.
To learn more:
Patent Procedure (3)
Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
To learn more:
‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a):
Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.
This can include adding specific percentages, compounds, or even omitting steps from a method that were present in the original disclosure.
To learn more:
Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so:
- These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts.
- A surcharge may be required for late submission.
- Failure to submit these items within the specified period may result in the application being abandoned.
The MPEP states: The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
It’s important to note that while these items can be submitted later, it’s generally best practice to include them with the initial filing to avoid potential issues or delays.
To learn more: