Patent Law FAQ

Patent applications are generally published 18 months after the earliest filing date, with some exceptions. According to 35 U.S.C. 122(b)(1)(A):

“Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.”

Exceptions to publication include applications that are no longer pending, subject to a secrecy order, provisional applications, or design patent applications.

Patent applications are generally kept confidential by the USPTO until they are published or granted. As stated in 35 U.S.C. 122(a):

“Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.”

This confidentiality requirement applies to all USPTO employees handling patent applications.

The USPTO can disclose limited information about patent applications to the public, as outlined in 37 CFR 1.14(a)(2):

• Whether the application is pending, abandoned, or patented
• Whether the application has been published
• The application’s numerical identifier
• Whether another application claims benefit of the application

This information can only be disclosed if the application is identified in a published patent document or in another application as specified in 37 CFR 1.14(a)(1)(i) through (a)(1)(vi).

Unauthorized disclosure of patent application information can result in severe penalties for USPTO employees. According to the MPEP:

“Suspension, removal, and even criminal penalties may be imposed for violations of these statutes.”

The relevant statutes include 35 U.S.C. 122 and 18 U.S.C. 2071. Additionally, 18 U.S.C. 2071 states that individuals who willfully and unlawfully conceal, remove, mutilate, or destroy official documents may be:

• Fined under this title
• Imprisoned for up to three years
• Disqualified from holding any office under the United States

These penalties underscore the critical importance of maintaining confidentiality in patent application handling.

The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:

1. Obtain the caller’s full name, application number, and telephone number
2. Verify the caller’s identity and authority to receive information
3. Check Patent Data Portal or the application file to verify releasable information
4. Return the call using a verified telephone number

Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.

A patent application file becomes available to the public in the following situations:

1. When the application has issued as a patent or published as a statutory invention registration
2. When the application has been published and subsequently abandoned
3. When the application has been published and is still pending
4. When an unpublished, abandoned application is identified or relied upon in certain public documents
5. When the benefit of an unpublished pending application is claimed in certain public documents

These conditions are outlined in 37 CFR 1.14(a)(1). In most cases, a fee is required to access the application file contents.

Status information of an application includes:

• Whether the application is pending, abandoned, or patented
• Whether the application has been published
• The application number or the serial number plus any one of the filing date of the national application, the international filing date, or the date of entry into the national stage
• Whether another application claims the benefit of the application, and if so, status information for those applications

This is defined in 37 CFR 1.14(a)(2) and further elaborated in MPEP 102.

To obtain status information for a patent application, you can:

1. Check Patent Center or Private Patent Application Information Retrieval (PAIR) on the USPTO website at www.uspto.gov
2. Contact the Application Assistance Unit (AAU) for applications in pre-examination or post-examination processing via email at HelpAAU@uspto.gov, phone at 571-272-4000 or toll-free at 888-786-0101, or visit their website

If the application has not been published but is pending or abandoned, the AAU will determine if the requester is authorized to receive status information based on their relationship to the application.

According to 37 CFR 1.11(a), the following patent application files are open to public inspection:

• Published applications
• Patents
• Statutory invention registrations

The public can obtain copies of these files upon payment of the fee set forth in 37 CFR 1.19(b)(2). However, if an application was published in redacted form, the complete file may not be available if certain requirements are met and the application is still pending.

For applications filed on or after September 16, 2012, the following parties can provide written authority to grant access to inspect a pending or abandoned application kept in confidence under 35 U.S.C. 122(a), except as provided in 37 CFR 1.11, 1.14, 41.6, or 42.412:

1. The applicant
2. A patent practitioner of record
3. The assignee or an assignee of an undivided part interest
4. The inventor or a joint inventor

Partial assignees have limited rights regarding the inspection of patent applications. According to MPEP 106.01, an assignee of a part interest in a patent application is not entitled to inspect the application without written authority from the inventor or the other assignee(s). This restriction is in place to protect the interests of all parties involved in the patent application process.

The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:

‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’

This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.

For more detailed information on how the AIA affects assignee rights, refer to MPEP § 325 for applications filed on or after September 16, 2012.

Yes, an assignee of the entire interest in a patent application can grant inspection rights to others. According to MPEP 106.01, the assignee of the entire interest has the same rights as the inventor and may authorize anyone to inspect the application. This authority stems from the assignee’s complete ownership of the patent application.

No, an assignee of a part interest in a patent application cannot inspect the application without the consent of the inventor or other assignees. According to MPEP 106.01, the assignee of a part interest may not have access to the application file wrapper or be granted access to the subject matter of the application without the applicant’s consent. This restriction is in place to protect the interests of all parties involved in the patent application process.

Yes, the applicant or assignee of record of the entire interest in an application can make a specific request to prevent the inventor from obtaining access to the application file. This request should be filed as a separate paper under 37 CFR 1.4(c) and directed to the Office of Petitions. If granted, the inventor will only be permitted to inspect the application upon sufficient showing of why it is necessary to preserve their rights.

Any request to prevent the inventor from obtaining access to the file should be filed as a separate paper, 37 CFR 1.4(c), and should be directed to the Office of Petitions. If the request is granted, the inventor will be informed that he or she will only be permitted to inspect the application on sufficient showing why such inspection is necessary to conserve his or her rights.

Third parties cannot access an international patent application until the earliest of:

• The international publication date
• Date of receipt of the communication of the application under PCT Article 20
• Date of receipt of a copy of the application under PCT Article 22

This is specified in PCT Article 30(2)(a):

“No national Office shall allow access to the international application by third parties, unless requested or authorized by the applicant, before the earliest of the following dates: (i) date of the international publication of the international application, (ii) date of receipt of the communication of the international application under Article 20, (iii) date of receipt of a copy of the international application under Article 22.”

International patent applications are kept confidential before their international publication, as specified in MPEP 110. According to PCT Article 30, the International Bureau and the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of that application, unless requested or authorized by the applicant. This confidentiality ensures that inventors’ rights are protected during the early stages of the patent process.

For more information on international patent applications, visit: international patent applications.

International patent applications filed under the PCT are generally kept confidential and not made publicly available before international publication, which occurs soon after the expiration of 18 months from the priority date, according to PCT Article 21(2)(a). The International Bureau and International Searching Authorities are not allowed to give access to the application to any person or authority before publication unless requested or authorized by the applicant, with some exceptions.

As stated in MPEP 110:

“Although most international applications are published soon after the expiration of 18 months from the priority date, PCT Article 21(2)(a), such publication does not open up the Home Copy or Search Copy to the public for inspection, except as provided in 37 CFR 1.14(g).”

While national offices are generally restricted from allowing access to international patent applications, they can disclose limited information. According to MPEP 110, which cites PCT Article 30(2)(b), national offices may inform third parties that they have been designated and publish this fact. However, such information or publication is limited to:

• Identification of the receiving Office
• Name of the applicant
• International filing date
• International application number
• Title of the invention

This provision allows for some transparency in the patent process while still maintaining the confidentiality of the application’s details.

For more information on international patent applications, visit: international patent applications.

A national patent office may inform third parties that it has been designated in an international application and publish that fact. However, the publication can only contain limited bibliographic data, as specified in PCT Article 30(2)(b):

“Such information or publication may, however, contain only the following data: identification of the receiving Office, name of the applicant, international filing date, international application number, and title of the invention.”

The national office still cannot allow third parties to access the full application until the conditions outlined in PCT Article 30(2)(a) are met.

A Secrecy Order is an order issued by the Commissioner for Patents that prevents disclosure or publication of an invention in a patent application when the publication or disclosure would be detrimental to national security. The order requires that the invention be kept secret and may restrict filing of foreign patent applications. (MPEP 120)

Applications subject to a Secrecy Order will be:

• Deleted from any image file system within the USPTO
• Converted to paper
• Held with Licensing and Review
• Transferred to a designated examiner for examination

For applications filed with apparent national security markings, the USPTO will:

1. Notify the applicant via Licensing and Review
2. Ask the applicant to either:
   • Explain the markings
   • Remove improper markings
   • Obtain a Secrecy Order if necessary
3. Potentially refer the application to a defense agency for review under 35 U.S.C. 181 second paragraph if improper markings are found and removed

When a Secrecy Order is imposed on a patent application, it is examined in a secure location by examiners with national security clearances under the control of Licensing and Review. If the Secrecy Order is imposed after the application is already docketed in another Technology Center, it will be transferred to a designated examiner in Licensing and Review.

As stated in MPEP 130, “Secrecy Order cases are examined for patentability as in other cases, but will not be passed to issue; nor will an interference or derivation be instituted where one or more of the conflicting cases is classified or under Secrecy Order.”

The Paris Convention plays a crucial role in international patent applications. As stated in MPEP 213.01:

The right of priority under the Paris Convention for the Protection of Industrial Property (Paris Convention) is recognized in the United States.

This means that applicants can claim priority based on an earlier filing in any Paris Convention member country. The Paris Convention facilitates patent protection across multiple countries by allowing a grace period for filing in other member nations while maintaining the priority date of the first filing.

To learn more:

• Paris Convention
• priority rights
• international patent applications

What is the significance of the ‘right of priority’ in international patent applications?

The ‘right of priority’ is a crucial concept in international patent applications. According to MPEP 211.01(c), ‘The right of priority is defined in 35 U.S.C. 119(a).’ This right allows applicants to claim priority from an earlier filed application, which can be beneficial in establishing the novelty and non-obviousness of an invention. Specifically, the MPEP states:

‘Under certain circumstances, the right of priority may be restored even if the filing is made after the 12-month priority period. See 37 CFR 1.55(c).’

This provision offers flexibility to applicants who may have missed the standard priority deadline, potentially preserving their patent rights in certain situations.

To learn more:

• right of priority
• international patent applications
• 35 U.S.C. 119(a)
• 37 CFR 1.55(c)

To learn more:

• 35 U.S.C. 119(a)
• 37 CFR 1.55(c)

The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

How does the Paris Convention affect priority claims in US patent applications?

The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:

‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’

The Paris Convention affects US patent applications in the following ways:

• It allows applicants to claim priority from foreign applications filed in member countries
• It establishes a 12-month priority period for utility patents and a 6-month period for design patents
• It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries

The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.

For more information on foreign priority, visit: foreign priority.

For more information on international patent applications, visit: international patent applications.

For more information on Paris Convention, visit: Paris Convention.

How does the Paris Convention affect international patent applications designating the United States?

The Paris Convention plays a significant role in international patent applications designating the United States. According to MPEP 211.01(c):

‘International applications, which designate the United States, that are filed on or after November 29, 2000, are subject to the provisions of the Patent Cooperation Treaty (PCT). International applications, which designate the United States, that are filed before November 29, 2000, are subject to the provisions of both the PCT and the Paris Convention for the Protection of Industrial Property.’

This means that for applications filed on or after November 29, 2000, the PCT rules govern, while earlier applications must comply with both PCT and Paris Convention provisions. The Paris Convention ensures certain rights, such as a 12-month priority period, for patent applicants across member countries, facilitating the international protection of inventions.

To learn more:

• Paris Convention
• international patent applications
• PCT
• Patent Cooperation Treaty

Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:

An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.

Key points to consider:

• The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
• The provisional application must be the first filing of the invention in any country.
• The U.S. application must be filed within 12 months of the foreign provisional filing date.
• The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.

It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.

According to 37 CFR 1.55(g)(2), the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances:

1. When the application is involved in an interference or derivation proceeding;
2. When necessary to overcome the date of a reference relied upon by the examiner; or
3. When deemed necessary by the examiner.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

Priority in patent applications refers to the ability of a later-filed application to claim the benefit of, or priority to, an earlier-filed application. This allows the later application to effectively have the filing date of the earlier application for certain purposes.

According to the MPEP, “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”

Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:

• The application must contain a priority or benefit claim to a prior-filed application
• The omitted material must be completely contained in that prior-filed application
• The omission must have been inadvertent

This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is (are) inadvertently omitted from an application, such as through a clerical error.”

An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.

A utility patent application is filed under 35 U.S.C. 101 for “a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”. Utility patent applications are sometimes referred to as “utility” patent applications when being contrasted with plant or design patent applications.

The MPEP states: “The first type of patent application is sometimes referred to as a ‘utility’ patent application when being contrasted with a plant or design patent application.”

A plant patent application is filed under 35 U.S.C. 161 for whoever “invents or discovers and asexually reproduces 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”.

The MPEP cites 35 U.S.C. 161: “Whoever invents or discovers and asexually reproduces 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, may obtain a patent therefor, subject to the conditions and requirements of this title.”

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:

“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”

In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.

According to the MPEP, patent applications can be directed to three broad types of subject matter:

• Utility patent applications under 35 U.S.C. 101 for “a new and useful process, machine, manufacture, or composition of matter”
• Plant patent applications under 35 U.S.C. 161
• Design patent applications under 35 U.S.C. 171

The Patent Law Treaties Implementation Act of 2012 (PLTIA) amended the filing date requirements for nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013. The key changes are:

• Nonprovisional applications (except for design patent applications) no longer require at least one claim or any drawings to receive a filing date.
• For design patent applications, the filing date is the date on which the USPTO receives the specification including at least one claim and any required drawings.
• As provided in 35 U.S.C. 111(c), a nonprovisional application may be filed by reference to a previously filed application (foreign, international, provisional, or nonprovisional).

These changes simplified the filing process for most nonprovisional applications while maintaining specific requirements for design patent applications.

There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):

1. The application must have been filed on or after September 21, 2004
2. Material must have been inadvertently omitted from the application
3. A priority or benefit claim to a prior-filed application must have been present on the filing date
4. The omitted material must be completely contained in the prior-filed application
5. An amendment to add the omitted material must be filed within the time period set by the USPTO
6. Other requirements like supplying copies of prior applications may apply

As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).

When filing an interim copy via the USPTO patent electronic filing system:

1. The main parts of the foreign priority application (Abstract, Drawings, Specification, Claims, etc.) along with the cover sheet may be filed as a single PDF image file.
2. Select the document description ‘Interim Copy of the Foreign Priority Application’ when indexing.
3. For plain text files (e.g., Sequence Listings), file as a .txt file and select ‘Interim Copy of the Foreign Priority (text file)’ as the document description.
4. XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc as part of the ‘Interim Copy of Foreign Priority.’

See MPEP § 502.05 for more information on filing documents electronically.

The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.

To claim foreign priority in a U.S. patent application, you must:

1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.

For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.

A patent application can become formally abandoned through an explicit action by the applicant or their representative. MPEP 203.05 states that an abandoned application includes one that is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record. This means the applicant or their legal representative can submit a formal request to abandon the application, effectively ending its prosecution.

No, the inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP 2136.03 and MPEP 2154.01(b) for additional information.

Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:

• It is only effective for the United States
• It does not affect the international filing date
• It cannot be used to accord an international filing date
• Requests to add omitted material will not be acted upon before national stage entry

The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”

No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.” The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.

A utility patent application is filed under 35 U.S.C. 101 for “a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”. Utility patent applications are sometimes referred to as “utility” patent applications when being contrasted with plant or design patent applications.

The MPEP states: “The first type of patent application is sometimes referred to as a ‘utility’ patent application when being contrasted with a plant or design patent application.”

A plant patent application is filed under 35 U.S.C. 161 for whoever “invents or discovers and asexually reproduces 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”.

The MPEP cites 35 U.S.C. 161: “Whoever invents or discovers and asexually reproduces 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, may obtain a patent therefor, subject to the conditions and requirements of this title.”

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

According to the MPEP, patent applications can be directed to three broad types of subject matter:

• Utility patent applications under 35 U.S.C. 101 for “a new and useful process, machine, manufacture, or composition of matter”
• Plant patent applications under 35 U.S.C. 161
• Design patent applications under 35 U.S.C. 171

The Patent Law Treaties Implementation Act of 2012 (PLTIA) amended the filing date requirements for nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013. The key changes are:

• Nonprovisional applications (except for design patent applications) no longer require at least one claim or any drawings to receive a filing date.
• For design patent applications, the filing date is the date on which the USPTO receives the specification including at least one claim and any required drawings.
• As provided in 35 U.S.C. 111(c), a nonprovisional application may be filed by reference to a previously filed application (foreign, international, provisional, or nonprovisional).

These changes simplified the filing process for most nonprovisional applications while maintaining specific requirements for design patent applications.

No, the inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP 2136.03 and MPEP 2154.01(b) for additional information.

A patent application can become formally abandoned through an explicit action by the applicant or their representative. MPEP 203.05 states that an abandoned application includes one that is removed from the Office docket of pending applications: (A) through formal abandonment by the applicant or by the attorney or agent of record. This means the applicant or their legal representative can submit a formal request to abandon the application, effectively ending its prosecution.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

To claim foreign priority in a U.S. patent application, you must:

1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.

For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.

Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:

An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.

Key points to consider:

• The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
• The provisional application must be the first filing of the invention in any country.
• The U.S. application must be filed within 12 months of the foreign provisional filing date.
• The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.

It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.

According to 37 CFR 1.55(g)(2), the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances:

1. When the application is involved in an interference or derivation proceeding;
2. When necessary to overcome the date of a reference relied upon by the examiner; or
3. When deemed necessary by the examiner.

An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.

When filing an interim copy via the USPTO patent electronic filing system:

1. The main parts of the foreign priority application (Abstract, Drawings, Specification, Claims, etc.) along with the cover sheet may be filed as a single PDF image file.
2. Select the document description ‘Interim Copy of the Foreign Priority Application’ when indexing.
3. For plain text files (e.g., Sequence Listings), file as a .txt file and select ‘Interim Copy of the Foreign Priority (text file)’ as the document description.
4. XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc as part of the ‘Interim Copy of Foreign Priority.’

See MPEP § 502.05 for more information on filing documents electronically.

The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.

No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.” The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.

How does the Paris Convention affect priority claims in US patent applications?

The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:

‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’

The Paris Convention affects US patent applications in the following ways:

• It allows applicants to claim priority from foreign applications filed in member countries
• It establishes a 12-month priority period for utility patents and a 6-month period for design patents
• It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries

The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.

For more information on foreign priority, visit: foreign priority.

For more information on international patent applications, visit: international patent applications.

For more information on Paris Convention, visit: Paris Convention.

Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:

• The application must contain a priority or benefit claim to a prior-filed application
• The omitted material must be completely contained in that prior-filed application
• The omission must have been inadvertent

This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is (are) inadvertently omitted from an application, such as through a clerical error.”

If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:

“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”

In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.

There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):

1. The application must have been filed on or after September 21, 2004
2. Material must have been inadvertently omitted from the application
3. A priority or benefit claim to a prior-filed application must have been present on the filing date
4. The omitted material must be completely contained in the prior-filed application
5. An amendment to add the omitted material must be filed within the time period set by the USPTO
6. Other requirements like supplying copies of prior applications may apply

As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).

Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:

• It is only effective for the United States
• It does not affect the international filing date
• It cannot be used to accord an international filing date
• Requests to add omitted material will not be acted upon before national stage entry

The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”

According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:

1. A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
2. All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.

The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”

According to 35 U.S.C. 118, the following parties can file a patent application:

• A person to whom the inventor has assigned the invention
• A person to whom the inventor is under an obligation to assign the invention
• A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor

The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.

The placement of the government license rights statement in a patent application depends on whether there are references to related applications:

• If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
• If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.

This placement is specified in 37 CFR 1.77(b)(1)-(3).

An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:

1. The fee set forth in § 1.17(g)
2. A showing that the person has sufficient proprietary interest in the matter
3. A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties

This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.

The purpose of including the government license rights statement in patent applications is to:

• Acknowledge the government’s support in the development of the invention
• Inform the public and potential licensees of the government’s rights in the invention
• Ensure compliance with federal regulations regarding inventions made with government support
• Facilitate the government’s ability to exercise its rights in the invention if necessary

This requirement, mandated by 35 U.S.C. 202(c)(6), helps maintain transparency in federally funded research and development while protecting the government’s interests in the resulting inventions.

The government license rights statement required for contractor-owned inventions made under federally sponsored research and development is:

‘This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.’

This statement is mandated by 35 U.S.C. 202(c)(6) and must be included at the beginning of the patent application and any issued patents.

When an application is filed by someone other than the inventor under 35 U.S.C. 111, it must contain specific information as outlined in 37 CFR 1.46(b):

• An application data sheet under § 1.76
• In the applicant information section (§ 1.76(b)(7)), specify:
  • The assignee
  • Person to whom the inventor is under an obligation to assign the invention
  • Person who otherwise shows sufficient proprietary interest in the matter

The regulation states: If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter.

MPEP 303 states that certified copies of patent applications as filed do not include an indication of assignment documents. The section specifically notes:

“Certified copies of patent applications as filed do not include an indication of assignment documents.” (MPEP 303)

This means that if an applicant wants to have proof of assignment documents, they need to request this separately.

Former USPTO employees face restrictions on priority dates for patents they file after leaving the office. According to 35 U.S.C. 4:

‘In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.’

This means that for any patent application filed by a former USPTO employee, the earliest priority date they can claim is one year after their employment at the USPTO ended. This rule prevents former employees from using insider knowledge to gain an unfair advantage in the patent application process.

According to MPEP 310, a Government contractor who retains U.S. domestic patent rights has the following obligations:

1. Include the government license rights statement at the beginning of the patent application and any issued patents.
2. Specify the contract under which the invention was made.
3. Identify the Federal agency that awarded the contract.
4. Acknowledge that the government has certain rights in the invention.

These obligations stem from 35 U.S.C. 202(c)(6), which mandates the inclusion of this information in the patent application and any resulting patents.

MPEP 303 mentions conflicting claims as a situation where assignment information becomes crucial:

“When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims…” (MPEP 303)

Conflicting claims occur when two or more patent applications claim the same or overlapping subject matter. This is significant because:

• It may indicate potential ownership disputes
• It can affect the novelty or non-obviousness of the claimed inventions
• It might require the USPTO to initiate an interference or derivation proceeding

In such cases, examiners need to verify assignment information to determine the proper course of action.

MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:

• The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
• It requires contractors to disclose these inventions and include a statement in patent applications about government support.
• MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
• The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.

In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.

To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must:

1. File a request to change the applicant under 37 CFR 1.46(c)(2)
2. File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
3. Submit a statement under 37 CFR 3.73(c) establishing ownership

The 37 CFR 3.73(c) statement must contain either:

• Documentary evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence was submitted for recordation, or
• A statement specifying where such evidence is recorded in the Office (e.g., reel and frame number)

The MPEP states: “The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.”

According to MPEP 303, applicants who want information about assignment documents must take specific steps:

1. Request separately certified copies of assignment documents
2. Submit the fees required by 37 CFR 1.19

The MPEP states:

“Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.” (MPEP 303)

No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent…’

This restriction extends for one year after their employment at the USPTO ends.

No, attorney’s liens against patents or patent applications are not accepted for recording at the USPTO. This is explicitly stated in the MPEP:

“Documents that are not accepted for recording include attorney’s liens against patents or patent applications. See In re Refusal of Assignment Branch to Record Attorney’s Lien, 8 USPQ2d 1446 (Comm’r Pat. 1988).” (MPEP 313)

This decision reflects the USPTO’s policy on recordable documents and helps maintain clarity in the patent ownership records.

MPEP 303 states that certified copies of patent applications as filed do not include an indication of assignment documents. The section specifically notes:

“Certified copies of patent applications as filed do not include an indication of assignment documents.” (MPEP 303)

This means that if an applicant wants to have proof of assignment documents, they need to request this separately.

MPEP 303 mentions conflicting claims as a situation where assignment information becomes crucial:

“When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims…” (MPEP 303)

Conflicting claims occur when two or more patent applications claim the same or overlapping subject matter. This is significant because:

• It may indicate potential ownership disputes
• It can affect the novelty or non-obviousness of the claimed inventions
• It might require the USPTO to initiate an interference or derivation proceeding

In such cases, examiners need to verify assignment information to determine the proper course of action.

According to MPEP 303, applicants who want information about assignment documents must take specific steps:

1. Request separately certified copies of assignment documents
2. Submit the fees required by 37 CFR 1.19

The MPEP states:

“Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.” (MPEP 303)

According to 35 U.S.C. 118, the following parties can file a patent application:

• A person to whom the inventor has assigned the invention
• A person to whom the inventor is under an obligation to assign the invention
• A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor

The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.

An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:

1. The fee set forth in § 1.17(g)
2. A showing that the person has sufficient proprietary interest in the matter
3. A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties

This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.

When an application is filed by someone other than the inventor under 35 U.S.C. 111, it must contain specific information as outlined in 37 CFR 1.46(b):

• An application data sheet under § 1.76
• In the applicant information section (§ 1.76(b)(7)), specify:
  • The assignee
  • Person to whom the inventor is under an obligation to assign the invention
  • Person who otherwise shows sufficient proprietary interest in the matter

The regulation states: If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter.

Former USPTO employees face restrictions on priority dates for patents they file after leaving the office. According to 35 U.S.C. 4:

‘In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.’

This means that for any patent application filed by a former USPTO employee, the earliest priority date they can claim is one year after their employment at the USPTO ended. This rule prevents former employees from using insider knowledge to gain an unfair advantage in the patent application process.

No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent…’

This restriction extends for one year after their employment at the USPTO ends.

The placement of the government license rights statement in a patent application depends on whether there are references to related applications:

• If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
• If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.

This placement is specified in 37 CFR 1.77(b)(1)-(3).

The purpose of including the government license rights statement in patent applications is to:

• Acknowledge the government’s support in the development of the invention
• Inform the public and potential licensees of the government’s rights in the invention
• Ensure compliance with federal regulations regarding inventions made with government support
• Facilitate the government’s ability to exercise its rights in the invention if necessary

This requirement, mandated by 35 U.S.C. 202(c)(6), helps maintain transparency in federally funded research and development while protecting the government’s interests in the resulting inventions.

The government license rights statement required for contractor-owned inventions made under federally sponsored research and development is:

‘This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.’

This statement is mandated by 35 U.S.C. 202(c)(6) and must be included at the beginning of the patent application and any issued patents.

According to MPEP 310, a Government contractor who retains U.S. domestic patent rights has the following obligations:

1. Include the government license rights statement at the beginning of the patent application and any issued patents.
2. Specify the contract under which the invention was made.
3. Identify the Federal agency that awarded the contract.
4. Acknowledge that the government has certain rights in the invention.

These obligations stem from 35 U.S.C. 202(c)(6), which mandates the inclusion of this information in the patent application and any resulting patents.

MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:

• The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
• It requires contractors to disclose these inventions and include a statement in patent applications about government support.
• MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
• The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.

In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.

When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date:

For applications filed before September 16, 2012:

• All named applicants
• Assignee of record of an undivided part interest, along with named applicants retaining an interest
• Assignee of the entire interest
• A registered patent attorney or agent not of record acting under 37 CFR 1.34

For applications filed on or after September 16, 2012:

• A patent practitioner of record
• A patent practitioner not of record acting under 37 CFR 1.34
• The applicant (except for juristic entity applicants, which require a patent practitioner)

This information is provided in Form Paragraph 4.07 of MPEP § 407.

According to MPEP 402.09, applicants in international patent applications can be represented by:

• Attorneys or agents registered to practice before the USPTO
• An applicant appointed as a common representative
• An attorney or agent with the right to practice before the national office where the international application is filed (for specific authorities)

As stated in 37 CFR 1.455(a): Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9).

To learn more:

• international patent applications
• patent representation
• PCT
• USPTO
• common representative

For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.

As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”

If an applicant’s patent attorney or agent is suspended, they should take the following steps:

1. File a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
2. Ensure all future papers are signed by authorized parties (see MPEP § 407, Form Paragraph 4.07 for details on who can sign).
3. If necessary, find a new registered patent attorney or agent using USPTO resources.
4. Update the correspondence address for the application if it was previously associated with the suspended practitioner.

It’s important to act promptly to ensure continued proper representation and communication with the USPTO.

The Customer Number practice allows applicants to:

• Designate the correspondence address of a patent application or patent
• Designate the fee address of a patent
• Submit a list of practitioners who have power of attorney

Using a Customer Number allows applicants to easily change the correspondence address, fee address, or list of practitioners for multiple applications or patents by simply changing the information associated with the Customer Number.

According to MPEP 403: “A Customer Number (previously a ‘Payor Number’) may be used to: (A) designate the correspondence address of a patent application or patent such that the correspondence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(i)); (B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(ii)); and (C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(5)(iii)).”

For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:

1. A copy of the power of attorney from the prior application is filed in the continuing application
2. The power of attorney was not granted by the inventor
3. The continuing application does not name an inventor who was not named in the prior application

MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”

If these conditions are not met, a new power of attorney will need to be filed in the continuing application.

If a patent application is filed without a correspondence address:

• The USPTO needs a correspondence address to notify the applicant of any missing parts or requirements.
• If no address is provided, the Office may use the mailing address of the first named inventor as the correspondence address.
• Without a correspondence address, the applicant is considered to have constructive notice of application requirements as of the filing date.
• The applicant has 2 months from the filing date to complete the application before it is abandoned.

According to MPEP 403: “If a patent application as filed has been accorded a filing date but is not complete, the applicant is notified and given a period of time within which to file the missing parts to complete the application and pay the applicable surcharge. … If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.”

The USPTO provides several forms for Customer Number practice:

• PTO/SB/125 – Request for Customer Number
• PTO/SB/124 – Request for Customer Number Data Change
• PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
• PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent

According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”

Pro se applicants make important certifications when filing patent applications. According to MPEP 401:

“In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).”

These certifications include statements about the truthfulness of the application, that it is not being presented for improper purposes, and that claims are warranted by existing law or a good faith argument for changing the law.

No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:

‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’

This is supported by several court cases cited in the MPEP, including:

• Nordberg, Inc. v. Telsmith, Inc.
• FMC Corp. v. Hennessy Indus., Inc.
• American Hoist & Derrick Co. v. Sowa & Sons, Inc.

The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.

The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:

• The Office will not correspond with both an applicant and their attorney/agent.
• The Office will not correspond with more than one attorney/agent.
• If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.

According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”

Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”

When two patent practitioners are appointed for the same application:

• If appointed simultaneously, the applicant should specify which address to use for correspondence.
• If a second practitioner is added later, correspondence will be sent to the most recently provided correspondence address.
• A new power of attorney appointing only the second practitioner effectively revokes the power of the first practitioner.

According to MPEP 403.02: “If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address. … If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record. … Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”

In international patent applications, a common representative can be appointed in several ways. According to MPEP 402.09 and 37 CFR 1.455(b):

Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.

If no specific appointment is made and there are multiple applicants, the first named applicant who is entitled to file with the U.S. Receiving Office is considered the common representative by default, as stated in 37 CFR 1.455(a).

To learn more:

• common representative
• international patent applications
• PCT
• power of attorney
• USPTO

When an attorney or agent is suspended, the USPTO does not communicate with them. Instead:

• For sole practitioners: The Office action is mailed to the address of the first named applicant in the application.
• For multiple practitioners: The Office action is mailed to the first named unsuspended registered practitioner of record and to the first named applicant.

This is outlined in Form Paragraphs 4.07 and 4.08 of MPEP § 407.

Limited recognition in international patent applications is addressed in 37 CFR 11.9(c), which states:

An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.

This means that unregistered individuals may represent applicants in certain phases of international patent applications under specific conditions. For more detailed information:

• See MPEP § 1807 for representation in international applications (PCT)
• See MPEP § 2911 for representation in international design applications

To learn more:

• limited recognition
• international patent applications
• PCT
• international design applications

A registered patent attorney or agent who has been given a power of attorney may withdraw as attorney or agent of record by submitting a request to the USPTO. The process involves:

1. Filing a request for withdrawal with the USPTO
2. Obtaining approval from the Director of the USPTO
3. Notifying the applicant or patent owner of the withdrawal

MPEP 402.06 states: “When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the reason(s) for which he or she is withdrawing so that the Office can determine whether to grant the request.”

The practitioner must also take steps to protect the client’s interests, such as giving reasonable notice and allowing time for the client to find new representation.

Yes, in most cases. According to MPEP 401, “An applicant for patent, other than a juristic entity (e.g., organizational assignee), may file and prosecute their own application, and thus act as their own representative (pro se) before the Office.” However, there are important considerations:

• Juristic entities (e.g., companies) must be represented by a patent practitioner
• Pro se applicants are subject to the same rules and potential sanctions as represented applicants
• Lack of familiarity with patent procedures may result in missed opportunities for optimal protection

Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions:

1. For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause.
2. For appointment: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.183 and fee, demonstrating an extraordinary situation where justice requires waiver of the requirement.

MPEP 402.10 states: “The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted.”

Pro se applicants make important certifications when filing patent applications. According to MPEP 401:

“In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).”

These certifications include statements about the truthfulness of the application, that it is not being presented for improper purposes, and that claims are warranted by existing law or a good faith argument for changing the law.

Yes, in most cases. According to MPEP 401, “An applicant for patent, other than a juristic entity (e.g., organizational assignee), may file and prosecute their own application, and thus act as their own representative (pro se) before the Office.” However, there are important considerations:

• Juristic entities (e.g., companies) must be represented by a patent practitioner
• Pro se applicants are subject to the same rules and potential sanctions as represented applicants
• Lack of familiarity with patent procedures may result in missed opportunities for optimal protection

For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.

As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”

For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:

1. A copy of the power of attorney from the prior application is filed in the continuing application
2. The power of attorney was not granted by the inventor
3. The continuing application does not name an inventor who was not named in the prior application

MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”

If these conditions are not met, a new power of attorney will need to be filed in the continuing application.

A registered patent attorney or agent who has been given a power of attorney may withdraw as attorney or agent of record by submitting a request to the USPTO. The process involves:

1. Filing a request for withdrawal with the USPTO
2. Obtaining approval from the Director of the USPTO
3. Notifying the applicant or patent owner of the withdrawal

MPEP 402.06 states: “When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the reason(s) for which he or she is withdrawing so that the Office can determine whether to grant the request.”

The practitioner must also take steps to protect the client’s interests, such as giving reasonable notice and allowing time for the client to find new representation.

Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions:

1. For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause.
2. For appointment: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.183 and fee, demonstrating an extraordinary situation where justice requires waiver of the requirement.

MPEP 402.10 states: “The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted.”

The Customer Number practice allows applicants to:

• Designate the correspondence address of a patent application or patent
• Designate the fee address of a patent
• Submit a list of practitioners who have power of attorney

Using a Customer Number allows applicants to easily change the correspondence address, fee address, or list of practitioners for multiple applications or patents by simply changing the information associated with the Customer Number.

According to MPEP 403: “A Customer Number (previously a ‘Payor Number’) may be used to: (A) designate the correspondence address of a patent application or patent such that the correspondence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(i)); (B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(ii)); and (C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(5)(iii)).”

If a patent application is filed without a correspondence address:

• The USPTO needs a correspondence address to notify the applicant of any missing parts or requirements.
• If no address is provided, the Office may use the mailing address of the first named inventor as the correspondence address.
• Without a correspondence address, the applicant is considered to have constructive notice of application requirements as of the filing date.
• The applicant has 2 months from the filing date to complete the application before it is abandoned.

According to MPEP 403: “If a patent application as filed has been accorded a filing date but is not complete, the applicant is notified and given a period of time within which to file the missing parts to complete the application and pay the applicable surcharge. … If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.”

The USPTO provides several forms for Customer Number practice:

• PTO/SB/125 – Request for Customer Number
• PTO/SB/124 – Request for Customer Number Data Change
• PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
• PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent

According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”

The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:

• The Office will not correspond with both an applicant and their attorney/agent.
• The Office will not correspond with more than one attorney/agent.
• If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.

According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”

Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”

When two patent practitioners are appointed for the same application:

• If appointed simultaneously, the applicant should specify which address to use for correspondence.
• If a second practitioner is added later, correspondence will be sent to the most recently provided correspondence address.
• A new power of attorney appointing only the second practitioner effectively revokes the power of the first practitioner.

According to MPEP 403.02: “If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address. … If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record. … Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”

When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date:

For applications filed before September 16, 2012:

• All named applicants
• Assignee of record of an undivided part interest, along with named applicants retaining an interest
• Assignee of the entire interest
• A registered patent attorney or agent not of record acting under 37 CFR 1.34

For applications filed on or after September 16, 2012:

• A patent practitioner of record
• A patent practitioner not of record acting under 37 CFR 1.34
• The applicant (except for juristic entity applicants, which require a patent practitioner)

This information is provided in Form Paragraph 4.07 of MPEP § 407.

If an applicant’s patent attorney or agent is suspended, they should take the following steps:

1. File a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
2. Ensure all future papers are signed by authorized parties (see MPEP § 407, Form Paragraph 4.07 for details on who can sign).
3. If necessary, find a new registered patent attorney or agent using USPTO resources.
4. Update the correspondence address for the application if it was previously associated with the suspended practitioner.

It’s important to act promptly to ensure continued proper representation and communication with the USPTO.

When an attorney or agent is suspended, the USPTO does not communicate with them. Instead:

• For sole practitioners: The Office action is mailed to the address of the first named applicant in the application.
• For multiple practitioners: The Office action is mailed to the first named unsuspended registered practitioner of record and to the first named applicant.

This is outlined in Form Paragraphs 4.07 and 4.08 of MPEP § 407.

No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:

‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’

This is supported by several court cases cited in the MPEP, including:

• Nordberg, Inc. v. Telsmith, Inc.
• FMC Corp. v. Hennessy Indus., Inc.
• American Hoist & Derrick Co. v. Sowa & Sons, Inc.

The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.

The following types of patent applications and documents can be filed via EFS-Web:

• Provisional patent applications under 35 U.S.C. 111(b)
• Nonprovisional utility patent applications under 35 U.S.C. 111(a)
• Nonprovisional design patent applications under 35 U.S.C. 111(a)
• International applications filed under the PCT in the United States Receiving Office
• National stage submissions under 35 U.S.C. 371
• International design applications filed under the Hague Agreement
• Requests for ex parte reexamination for utility or design patents
• Requests for supplemental examination for utility, design, or plant patents
• Third-party preissuance submissions under 35 U.S.C. 122(e)
• Citation of prior art and written statements in patent files under 37 CFR 1.501

Follow-on documents can also be filed via EFS-Web for existing applications by registered users.

If you cannot file your patent application electronically or by Priority Mail Express® due to an emergency, consider the following options:

1. Use first-class mail with a Certificate of Mailing under 37 CFR 1.8
2. Hand-deliver the application to the USPTO, if possible
3. If the emergency is a designated postal service interruption, follow the specific instructions provided by the USPTO on their website or in the Official Gazette

Remember that the provisions for postal emergencies only apply to actual USPS service interruptions, not other circumstances like computer failures or office inaccessibility.

As stated in MPEP 511: “Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”

The general mailing address for patent applications and patent-related papers is:

Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.

As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”

For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:

For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

If there’s a discrepancy between the USPTO’s date stamp and the date on the correspondence, the USPTO’s date stamp is generally considered the official receipt date. However, if an applicant can provide clear evidence that the correspondence was received earlier than the date indicated by the USPTO’s stamp, the earlier date may be recognized as the official receipt date. This situation might occur due to clerical errors or delays in processing incoming mail.

If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.

If a drawing is not included with the application but is required for a complete disclosure of the invention, the Office of Patent Application Processing (OPAP) will send a Notice to File Missing Parts giving the applicant a time period of two months from the mailing date of the Notice to file the missing drawing(s). The time period may be extended under 37 CFR 1.136(a).

The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:

If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’

This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

The USPTO strongly recommends the following methods for filing new patent applications:

1. Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
2. Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
3. Hand-delivery to the USPTO office.

Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.

As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”

Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”

Micro entity status, once properly established, generally remains in effect until:

• A fee is paid in the small entity or undiscounted amount
• A notification of loss of entitlement to micro entity status is filed
• The issue fee or a maintenance fee is due

However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’

The application filing limit for micro entity status works as follows:

• An applicant must not have been named as an inventor on more than 4 previously filed patent applications
• This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
• Applications filed as a result of previous employment where rights were assigned don’t count towards the limit

MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’

When an application is filed with informal drawings, the Office of Patent Application Processing (OPAP) will review the drawings to determine if they can be used for publication purposes. If the drawings are not acceptable for publication purposes, OPAP will object to the drawings and require corrected drawings within a set time period, usually two months. This objection does not affect the filing date of the application, and applicants can correct the drawings later in the examination process if needed.

To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:

• Form PTO/SB/15A for certifying under the gross income basis
• Form PTO/SB/15B for certifying under the institution of higher education basis

The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.

Priority Mail Express® submissions to the USPTO are treated differently in terms of dating. According to 37 CFR 1.6(a)(2):

Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.

This means that new patent applications filed using Priority Mail Express® will be stamped with the date they were deposited with USPS, even if that date is a Saturday, Sunday, or federal holiday. The MPEP provides an example:

For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

Patent applications are initially processed by the USPTO through electronic scanning and loading into the Image File Wrapper (IFW) system. According to MPEP 508, “All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.”

Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:

For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.

However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.

Can I use my USPTO deposit account for international patent applications?

Yes, you can use your USPTO deposit account for certain fees associated with international patent applications. The MPEP states: “Deposit accounts can be used for payment of any patent process fee except for international phase fees paid to the International Bureau.” (MPEP 509.01)

This means you can use your deposit account for:

• PCT fees payable to the USPTO as a Receiving Office
• National stage entry fees for U.S. national applications
• Other USPTO-related fees for international applications

However, it’s important to note that fees payable directly to the International Bureau of WIPO cannot be charged to your USPTO deposit account. For those fees, you’ll need to use alternative payment methods specified by WIPO.

To learn more:

• USPTO deposit account
• international patent applications
• PCT fees
• WIPO fees

The use of a Certificate of Mailing or Transmission for international patent applications is limited and depends on the specific type of correspondence. According to the MPEP and 37 CFR 1.8(a)(2)(i)(D)-(F), the certificate procedure does not apply to:

• The filing of an international application for patent
• The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority
• The filing of a copy of the international application and the basic national fee necessary to enter the national stage

However, the Certificate of Transmission procedure can be used for some correspondence related to international applications if it’s being transmitted to the USPTO and is not otherwise prohibited. The MPEP states:

The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.

It’s crucial to carefully review the specific requirements and limitations for international application correspondence to ensure proper and timely filing.

The general mailing address for patent applications and patent-related papers is:

Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.

As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”

The following types of patent applications and documents can be filed via EFS-Web:

• Provisional patent applications under 35 U.S.C. 111(b)
• Nonprovisional utility patent applications under 35 U.S.C. 111(a)
• Nonprovisional design patent applications under 35 U.S.C. 111(a)
• International applications filed under the PCT in the United States Receiving Office
• National stage submissions under 35 U.S.C. 371
• International design applications filed under the Hague Agreement
• Requests for ex parte reexamination for utility or design patents
• Requests for supplemental examination for utility, design, or plant patents
• Third-party preissuance submissions under 35 U.S.C. 122(e)
• Citation of prior art and written statements in patent files under 37 CFR 1.501

Follow-on documents can also be filed via EFS-Web for existing applications by registered users.

If there’s a discrepancy between the USPTO’s date stamp and the date on the correspondence, the USPTO’s date stamp is generally considered the official receipt date. However, if an applicant can provide clear evidence that the correspondence was received earlier than the date indicated by the USPTO’s stamp, the earlier date may be recognized as the official receipt date. This situation might occur due to clerical errors or delays in processing incoming mail.

The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:

If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’

This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.

Priority Mail Express® submissions to the USPTO are treated differently in terms of dating. According to 37 CFR 1.6(a)(2):

Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.

This means that new patent applications filed using Priority Mail Express® will be stamped with the date they were deposited with USPS, even if that date is a Saturday, Sunday, or federal holiday. The MPEP provides an example:

For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:

For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.

Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:

For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.

However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.

If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.

If a drawing is not included with the application but is required for a complete disclosure of the invention, the Office of Patent Application Processing (OPAP) will send a Notice to File Missing Parts giving the applicant a time period of two months from the mailing date of the Notice to file the missing drawing(s). The time period may be extended under 37 CFR 1.136(a).

When an application is filed with informal drawings, the Office of Patent Application Processing (OPAP) will review the drawings to determine if they can be used for publication purposes. If the drawings are not acceptable for publication purposes, OPAP will object to the drawings and require corrected drawings within a set time period, usually two months. This objection does not affect the filing date of the application, and applicants can correct the drawings later in the examination process if needed.

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

Patent applications are initially processed by the USPTO through electronic scanning and loading into the Image File Wrapper (IFW) system. According to MPEP 508, “All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.”

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

Micro entity status, once properly established, generally remains in effect until:

• A fee is paid in the small entity or undiscounted amount
• A notification of loss of entitlement to micro entity status is filed
• The issue fee or a maintenance fee is due

However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’

The application filing limit for micro entity status works as follows:

• An applicant must not have been named as an inventor on more than 4 previously filed patent applications
• This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
• Applications filed as a result of previous employment where rights were assigned don’t count towards the limit

MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’

To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:

• Form PTO/SB/15A for certifying under the gross income basis
• Form PTO/SB/15B for certifying under the institution of higher education basis

The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.

If you cannot file your patent application electronically or by Priority Mail Express® due to an emergency, consider the following options:

1. Use first-class mail with a Certificate of Mailing under 37 CFR 1.8
2. Hand-deliver the application to the USPTO, if possible
3. If the emergency is a designated postal service interruption, follow the specific instructions provided by the USPTO on their website or in the Official Gazette

Remember that the provisions for postal emergencies only apply to actual USPS service interruptions, not other circumstances like computer failures or office inaccessibility.

As stated in MPEP 511: “Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

The USPTO strongly recommends the following methods for filing new patent applications:

1. Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
2. Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
3. Hand-delivery to the USPTO office.

Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.

As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”

Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”

The use of a Certificate of Mailing or Transmission for international patent applications is limited and depends on the specific type of correspondence. According to the MPEP and 37 CFR 1.8(a)(2)(i)(D)-(F), the certificate procedure does not apply to:

• The filing of an international application for patent
• The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority
• The filing of a copy of the international application and the basic national fee necessary to enter the national stage

However, the Certificate of Transmission procedure can be used for some correspondence related to international applications if it’s being transmitted to the USPTO and is not otherwise prohibited. The MPEP states:

The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.

It’s crucial to carefully review the specific requirements and limitations for international application correspondence to ensure proper and timely filing.

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:

1. A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
2. All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.

The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”

When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date:

For applications filed before September 16, 2012:

• All named applicants
• Assignee of record of an undivided part interest, along with named applicants retaining an interest
• Assignee of the entire interest
• A registered patent attorney or agent not of record acting under 37 CFR 1.34

For applications filed on or after September 16, 2012:

• A patent practitioner of record
• A patent practitioner not of record acting under 37 CFR 1.34
• The applicant (except for juristic entity applicants, which require a patent practitioner)

This information is provided in Form Paragraph 4.07 of MPEP § 407.

According to MPEP 402.09, applicants in international patent applications can be represented by:

• Attorneys or agents registered to practice before the USPTO
• An applicant appointed as a common representative
• An attorney or agent with the right to practice before the national office where the international application is filed (for specific authorities)

As stated in 37 CFR 1.455(a): Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9).

To learn more:

• international patent applications
• patent representation
• PCT
• USPTO
• common representative

For applications filed on or after September 16, 2012, the following parties can provide written authority to grant access to inspect a pending or abandoned application kept in confidence under 35 U.S.C. 122(a), except as provided in 37 CFR 1.11, 1.14, 41.6, or 42.412:

1. The applicant
2. A patent practitioner of record
3. The assignee or an assignee of an undivided part interest
4. The inventor or a joint inventor

According to 35 U.S.C. 118, the following parties can file a patent application:

• A person to whom the inventor has assigned the invention
• A person to whom the inventor is under an obligation to assign the invention
• A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor

The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.

For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.

As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”

The placement of the government license rights statement in a patent application depends on whether there are references to related applications:

• If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
• If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.

This placement is specified in 37 CFR 1.77(b)(1)-(3).

According to 37 CFR 1.55(g)(2), the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances:

1. When the application is involved in an interference or derivation proceeding;
2. When necessary to overcome the date of a reference relied upon by the examiner; or
3. When deemed necessary by the examiner.

A patent application file becomes available to the public in the following situations:

1. When the application has issued as a patent or published as a statutory invention registration
2. When the application has been published and subsequently abandoned
3. When the application has been published and is still pending
4. When an unpublished, abandoned application is identified or relied upon in certain public documents
5. When the benefit of an unpublished pending application is claimed in certain public documents

These conditions are outlined in 37 CFR 1.14(a)(1). In most cases, a fee is required to access the application file contents.

Third parties cannot access an international patent application until the earliest of:

• The international publication date
• Date of receipt of the communication of the application under PCT Article 20
• Date of receipt of a copy of the application under PCT Article 22

This is specified in PCT Article 30(2)(a):

“No national Office shall allow access to the international application by third parties, unless requested or authorized by the applicant, before the earliest of the following dates: (i) date of the international publication of the international application, (ii) date of receipt of the communication of the international application under Article 20, (iii) date of receipt of a copy of the international application under Article 22.”

Patent applications are generally published 18 months after the earliest filing date, with some exceptions. According to 35 U.S.C. 122(b)(1)(A):

“Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.”

Exceptions to publication include applications that are no longer pending, subject to a secrecy order, provisional applications, or design patent applications.

The following types of patent applications and documents can be filed via EFS-Web:

• Provisional patent applications under 35 U.S.C. 111(b)
• Nonprovisional utility patent applications under 35 U.S.C. 111(a)
• Nonprovisional design patent applications under 35 U.S.C. 111(a)
• International applications filed under the PCT in the United States Receiving Office
• National stage submissions under 35 U.S.C. 371
• International design applications filed under the Hague Agreement
• Requests for ex parte reexamination for utility or design patents
• Requests for supplemental examination for utility, design, or plant patents
• Third-party preissuance submissions under 35 U.S.C. 122(e)
• Citation of prior art and written statements in patent files under 37 CFR 1.501

Follow-on documents can also be filed via EFS-Web for existing applications by registered users.

If you cannot file your patent application electronically or by Priority Mail Express® due to an emergency, consider the following options:

1. Use first-class mail with a Certificate of Mailing under 37 CFR 1.8
2. Hand-deliver the application to the USPTO, if possible
3. If the emergency is a designated postal service interruption, follow the specific instructions provided by the USPTO on their website or in the Official Gazette

Remember that the provisions for postal emergencies only apply to actual USPS service interruptions, not other circumstances like computer failures or office inaccessibility.

As stated in MPEP 511: “Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”

If an applicant’s patent attorney or agent is suspended, they should take the following steps:

1. File a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
2. Ensure all future papers are signed by authorized parties (see MPEP § 407, Form Paragraph 4.07 for details on who can sign).
3. If necessary, find a new registered patent attorney or agent using USPTO resources.
4. Update the correspondence address for the application if it was previously associated with the suspended practitioner.

It’s important to act promptly to ensure continued proper representation and communication with the USPTO.

Partial assignees have limited rights regarding the inspection of patent applications. According to MPEP 106.01, an assignee of a part interest in a patent application is not entitled to inspect the application without written authority from the inventor or the other assignee(s). This restriction is in place to protect the interests of all parties involved in the patent application process.

According to 37 CFR 1.11(a), the following patent application files are open to public inspection:

• Published applications
• Patents
• Statutory invention registrations

The public can obtain copies of these files upon payment of the fee set forth in 37 CFR 1.19(b)(2). However, if an application was published in redacted form, the complete file may not be available if certain requirements are met and the application is still pending.

An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:

1. The fee set forth in § 1.17(g)
2. A showing that the person has sufficient proprietary interest in the matter
3. A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties

This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

The Paris Convention plays a crucial role in international patent applications. As stated in MPEP 213.01:

The right of priority under the Paris Convention for the Protection of Industrial Property (Paris Convention) is recognized in the United States.

This means that applicants can claim priority based on an earlier filing in any Paris Convention member country. The Paris Convention facilitates patent protection across multiple countries by allowing a grace period for filing in other member nations while maintaining the priority date of the first filing.

To learn more:

• Paris Convention
• priority rights
• international patent applications

What is the significance of the ‘right of priority’ in international patent applications?

The ‘right of priority’ is a crucial concept in international patent applications. According to MPEP 211.01(c), ‘The right of priority is defined in 35 U.S.C. 119(a).’ This right allows applicants to claim priority from an earlier filed application, which can be beneficial in establishing the novelty and non-obviousness of an invention. Specifically, the MPEP states:

‘Under certain circumstances, the right of priority may be restored even if the filing is made after the 12-month priority period. See 37 CFR 1.55(c).’

This provision offers flexibility to applicants who may have missed the standard priority deadline, potentially preserving their patent rights in certain situations.

To learn more:

• right of priority
• international patent applications
• 35 U.S.C. 119(a)
• 37 CFR 1.55(c)

To learn more:

• 35 U.S.C. 119(a)
• 37 CFR 1.55(c)

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

The purpose of including the government license rights statement in patent applications is to:

• Acknowledge the government’s support in the development of the invention
• Inform the public and potential licensees of the government’s rights in the invention
• Ensure compliance with federal regulations regarding inventions made with government support
• Facilitate the government’s ability to exercise its rights in the invention if necessary

This requirement, mandated by 35 U.S.C. 202(c)(6), helps maintain transparency in federally funded research and development while protecting the government’s interests in the resulting inventions.

The government license rights statement required for contractor-owned inventions made under federally sponsored research and development is:

‘This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.’

This statement is mandated by 35 U.S.C. 202(c)(6) and must be included at the beginning of the patent application and any issued patents.

The general mailing address for patent applications and patent-related papers is:

Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.

As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”

For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:

For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.

If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.

The Customer Number practice allows applicants to:

• Designate the correspondence address of a patent application or patent
• Designate the fee address of a patent
• Submit a list of practitioners who have power of attorney

Using a Customer Number allows applicants to easily change the correspondence address, fee address, or list of practitioners for multiple applications or patents by simply changing the information associated with the Customer Number.

According to MPEP 403: “A Customer Number (previously a ‘Payor Number’) may be used to: (A) designate the correspondence address of a patent application or patent such that the correspondence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(i)); (B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(ii)); and (C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(5)(iii)).”

Patent applications are generally kept confidential by the USPTO until they are published or granted. As stated in 35 U.S.C. 122(a):

“Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.”

This confidentiality requirement applies to all USPTO employees handling patent applications.

International patent applications are kept confidential before their international publication, as specified in MPEP 110. According to PCT Article 30, the International Bureau and the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of that application, unless requested or authorized by the applicant. This confidentiality ensures that inventors’ rights are protected during the early stages of the patent process.

For more information on international patent applications, visit: international patent applications.

International patent applications filed under the PCT are generally kept confidential and not made publicly available before international publication, which occurs soon after the expiration of 18 months from the priority date, according to PCT Article 21(2)(a). The International Bureau and International Searching Authorities are not allowed to give access to the application to any person or authority before publication unless requested or authorized by the applicant, with some exceptions.

As stated in MPEP 110:

“Although most international applications are published soon after the expiration of 18 months from the priority date, PCT Article 21(2)(a), such publication does not open up the Home Copy or Search Copy to the public for inspection, except as provided in 37 CFR 1.14(g).”

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

Priority in patent applications refers to the ability of a later-filed application to claim the benefit of, or priority to, an earlier-filed application. This allows the later application to effectively have the filing date of the earlier application for certain purposes.

According to the MPEP, “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”

Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:

• The application must contain a priority or benefit claim to a prior-filed application
• The omitted material must be completely contained in that prior-filed application
• The omission must have been inadvertent

This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is (are) inadvertently omitted from an application, such as through a clerical error.”

An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.

A utility patent application is filed under 35 U.S.C. 101 for “a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”. Utility patent applications are sometimes referred to as “utility” patent applications when being contrasted with plant or design patent applications.

The MPEP states: “The first type of patent application is sometimes referred to as a ‘utility’ patent application when being contrasted with a plant or design patent application.”

A Secrecy Order is an order issued by the Commissioner for Patents that prevents disclosure or publication of an invention in a patent application when the publication or disclosure would be detrimental to national security. The order requires that the invention be kept secret and may restrict filing of foreign patent applications. (MPEP 120)

A plant patent application is filed under 35 U.S.C. 161 for whoever “invents or discovers and asexually reproduces 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”.

The MPEP cites 35 U.S.C. 161: “Whoever invents or discovers and asexually reproduces 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, may obtain a patent therefor, subject to the conditions and requirements of this title.”

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

When an application is filed by someone other than the inventor under 35 U.S.C. 111, it must contain specific information as outlined in 37 CFR 1.46(b):

• An application data sheet under § 1.76
• In the applicant information section (§ 1.76(b)(7)), specify:
  • The assignee
  • Person to whom the inventor is under an obligation to assign the invention
  • Person who otherwise shows sufficient proprietary interest in the matter

The regulation states: If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter.

Status information of an application includes:

• Whether the application is pending, abandoned, or patented
• Whether the application has been published
• The application number or the serial number plus any one of the filing date of the national application, the international filing date, or the date of entry into the national stage
• Whether another application claims the benefit of the application, and if so, status information for those applications

This is defined in 37 CFR 1.14(a)(2) and further elaborated in MPEP 102.

While national offices are generally restricted from allowing access to international patent applications, they can disclose limited information. According to MPEP 110, which cites PCT Article 30(2)(b), national offices may inform third parties that they have been designated and publish this fact. However, such information or publication is limited to:

• Identification of the receiving Office
• Name of the applicant
• International filing date
• International application number
• Title of the invention

This provision allows for some transparency in the patent process while still maintaining the confidentiality of the application’s details.

For more information on international patent applications, visit: international patent applications.

The USPTO can disclose limited information about patent applications to the public, as outlined in 37 CFR 1.14(a)(2):

• Whether the application is pending, abandoned, or patented
• Whether the application has been published
• The application’s numerical identifier
• Whether another application claims benefit of the application

This information can only be disclosed if the application is identified in a published patent document or in another application as specified in 37 CFR 1.14(a)(1)(i) through (a)(1)(vi).

Applications subject to a Secrecy Order will be:

• Deleted from any image file system within the USPTO
• Converted to paper
• Held with Licensing and Review
• Transferred to a designated examiner for examination

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:

1. A copy of the power of attorney from the prior application is filed in the continuing application
2. The power of attorney was not granted by the inventor
3. The continuing application does not name an inventor who was not named in the prior application

MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”

If these conditions are not met, a new power of attorney will need to be filed in the continuing application.

When a Secrecy Order is imposed on a patent application, it is examined in a secure location by examiners with national security clearances under the control of Licensing and Review. If the Secrecy Order is imposed after the application is already docketed in another Technology Center, it will be transferred to a designated examiner in Licensing and Review.

As stated in MPEP 130, “Secrecy Order cases are examined for patentability as in other cases, but will not be passed to issue; nor will an interference or derivation be instituted where one or more of the conflicting cases is classified or under Secrecy Order.”

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

If there’s a discrepancy between the USPTO’s date stamp and the date on the correspondence, the USPTO’s date stamp is generally considered the official receipt date. However, if an applicant can provide clear evidence that the correspondence was received earlier than the date indicated by the USPTO’s stamp, the earlier date may be recognized as the official receipt date. This situation might occur due to clerical errors or delays in processing incoming mail.

If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.

If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:

“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”

In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.

If a patent application is filed without a correspondence address:

• The USPTO needs a correspondence address to notify the applicant of any missing parts or requirements.
• If no address is provided, the Office may use the mailing address of the first named inventor as the correspondence address.
• Without a correspondence address, the applicant is considered to have constructive notice of application requirements as of the filing date.
• The applicant has 2 months from the filing date to complete the application before it is abandoned.

According to MPEP 403: “If a patent application as filed has been accorded a filing date but is not complete, the applicant is notified and given a period of time within which to file the missing parts to complete the application and pay the applicable surcharge. … If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.”

For applications filed with apparent national security markings, the USPTO will:

1. Notify the applicant via Licensing and Review
2. Ask the applicant to either:
   • Explain the markings
   • Remove improper markings
   • Obtain a Secrecy Order if necessary
3. Potentially refer the application to a defense agency for review under 35 U.S.C. 181 second paragraph if improper markings are found and removed

If a drawing is not included with the application but is required for a complete disclosure of the invention, the Office of Patent Application Processing (OPAP) will send a Notice to File Missing Parts giving the applicant a time period of two months from the mailing date of the Notice to file the missing drawing(s). The time period may be extended under 37 CFR 1.136(a).

The USPTO provides several forms for Customer Number practice:

• PTO/SB/125 – Request for Customer Number
• PTO/SB/124 – Request for Customer Number Data Change
• PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
• PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent

According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”

MPEP 303 states that certified copies of patent applications as filed do not include an indication of assignment documents. The section specifically notes:

“Certified copies of patent applications as filed do not include an indication of assignment documents.” (MPEP 303)

This means that if an applicant wants to have proof of assignment documents, they need to request this separately.

The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:

If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’

This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.

Pro se applicants make important certifications when filing patent applications. According to MPEP 401:

“In presenting (whether by signing, filing, submitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 11.18(b), and may be subject to sanctions under 37 CFR 11.18(c) for violations of 37 CFR 11.18(b)(2).”

These certifications include statements about the truthfulness of the application, that it is not being presented for improper purposes, and that claims are warranted by existing law or a good faith argument for changing the law.

According to the MPEP, patent applications can be directed to three broad types of subject matter:

• Utility patent applications under 35 U.S.C. 101 for “a new and useful process, machine, manufacture, or composition of matter”
• Plant patent applications under 35 U.S.C. 161
• Design patent applications under 35 U.S.C. 171

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

The USPTO strongly recommends the following methods for filing new patent applications:

1. Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
2. Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
3. Hand-delivery to the USPTO office.

Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.

As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”

Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”

Former USPTO employees face restrictions on priority dates for patents they file after leaving the office. According to 35 U.S.C. 4:

‘In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.’

This means that for any patent application filed by a former USPTO employee, the earliest priority date they can claim is one year after their employment at the USPTO ended. This rule prevents former employees from using insider knowledge to gain an unfair advantage in the patent application process.

Unauthorized disclosure of patent application information can result in severe penalties for USPTO employees. According to the MPEP:

“Suspension, removal, and even criminal penalties may be imposed for violations of these statutes.”

The relevant statutes include 35 U.S.C. 122 and 18 U.S.C. 2071. Additionally, 18 U.S.C. 2071 states that individuals who willfully and unlawfully conceal, remove, mutilate, or destroy official documents may be:

• Fined under this title
• Imprisoned for up to three years
• Disqualified from holding any office under the United States

These penalties underscore the critical importance of maintaining confidentiality in patent application handling.

The Patent Law Treaties Implementation Act of 2012 (PLTIA) amended the filing date requirements for nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013. The key changes are:

• Nonprovisional applications (except for design patent applications) no longer require at least one claim or any drawings to receive a filing date.
• For design patent applications, the filing date is the date on which the USPTO receives the specification including at least one claim and any required drawings.
• As provided in 35 U.S.C. 111(c), a nonprovisional application may be filed by reference to a previously filed application (foreign, international, provisional, or nonprovisional).

These changes simplified the filing process for most nonprovisional applications while maintaining specific requirements for design patent applications.

According to MPEP 310, a Government contractor who retains U.S. domestic patent rights has the following obligations:

1. Include the government license rights statement at the beginning of the patent application and any issued patents.
2. Specify the contract under which the invention was made.
3. Identify the Federal agency that awarded the contract.
4. Acknowledge that the government has certain rights in the invention.

These obligations stem from 35 U.S.C. 202(c)(6), which mandates the inclusion of this information in the patent application and any resulting patents.

There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):

1. The application must have been filed on or after September 21, 2004
2. Material must have been inadvertently omitted from the application
3. A priority or benefit claim to a prior-filed application must have been present on the filing date
4. The omitted material must be completely contained in the prior-filed application
5. An amendment to add the omitted material must be filed within the time period set by the USPTO
6. Other requirements like supplying copies of prior applications may apply

As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).

MPEP 303 mentions conflicting claims as a situation where assignment information becomes crucial:

“When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims…” (MPEP 303)

Conflicting claims occur when two or more patent applications claim the same or overlapping subject matter. This is significant because:

• It may indicate potential ownership disputes
• It can affect the novelty or non-obviousness of the claimed inventions
• It might require the USPTO to initiate an interference or derivation proceeding

In such cases, examiners need to verify assignment information to determine the proper course of action.

No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:

‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’

This is supported by several court cases cited in the MPEP, including:

• Nordberg, Inc. v. Telsmith, Inc.
• FMC Corp. v. Hennessy Indus., Inc.
• American Hoist & Derrick Co. v. Sowa & Sons, Inc.

The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.

When filing an interim copy via the USPTO patent electronic filing system:

1. The main parts of the foreign priority application (Abstract, Drawings, Specification, Claims, etc.) along with the cover sheet may be filed as a single PDF image file.
2. Select the document description ‘Interim Copy of the Foreign Priority Application’ when indexing.
3. For plain text files (e.g., Sequence Listings), file as a .txt file and select ‘Interim Copy of the Foreign Priority (text file)’ as the document description.
4. XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc as part of the ‘Interim Copy of Foreign Priority.’

See MPEP § 502.05 for more information on filing documents electronically.

Micro entity status, once properly established, generally remains in effect until:

• A fee is paid in the small entity or undiscounted amount
• A notification of loss of entitlement to micro entity status is filed
• The issue fee or a maintenance fee is due

However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’

The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:

• The Office will not correspond with both an applicant and their attorney/agent.
• The Office will not correspond with more than one attorney/agent.
• If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.

According to MPEP 403: “Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).”

Form paragraph 4.01 states: “Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.”

When two patent practitioners are appointed for the same application:

• If appointed simultaneously, the applicant should specify which address to use for correspondence.
• If a second practitioner is added later, correspondence will be sent to the most recently provided correspondence address.
• A new power of attorney appointing only the second practitioner effectively revokes the power of the first practitioner.

According to MPEP 403.02: “If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address. … If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record. … Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”

In international patent applications, a common representative can be appointed in several ways. According to MPEP 402.09 and 37 CFR 1.455(b):

Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.

If no specific appointment is made and there are multiple applicants, the first named applicant who is entitled to file with the U.S. Receiving Office is considered the common representative by default, as stated in 37 CFR 1.455(a).

To learn more:

• common representative
• international patent applications
• PCT
• power of attorney
• USPTO

The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:

1. Obtain the caller’s full name, application number, and telephone number
2. Verify the caller’s identity and authority to receive information
3. Check Patent Data Portal or the application file to verify releasable information
4. Return the call using a verified telephone number

Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.

When an attorney or agent is suspended, the USPTO does not communicate with them. Instead:

• For sole practitioners: The Office action is mailed to the address of the first named applicant in the application.
• For multiple practitioners: The Office action is mailed to the first named unsuspended registered practitioner of record and to the first named applicant.

This is outlined in Form Paragraphs 4.07 and 4.08 of MPEP § 407.

The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.

The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

How does the Paris Convention affect priority claims in US patent applications?

The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:

‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’

The Paris Convention affects US patent applications in the following ways:

• It allows applicants to claim priority from foreign applications filed in member countries
• It establishes a 12-month priority period for utility patents and a 6-month period for design patents
• It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries

The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.

For more information on foreign priority, visit: foreign priority.

For more information on international patent applications, visit: international patent applications.

For more information on Paris Convention, visit: Paris Convention.

How does the Paris Convention affect international patent applications designating the United States?

The Paris Convention plays a significant role in international patent applications designating the United States. According to MPEP 211.01(c):

‘International applications, which designate the United States, that are filed on or after November 29, 2000, are subject to the provisions of the Patent Cooperation Treaty (PCT). International applications, which designate the United States, that are filed before November 29, 2000, are subject to the provisions of both the PCT and the Paris Convention for the Protection of Industrial Property.’

This means that for applications filed on or after November 29, 2000, the PCT rules govern, while earlier applications must comply with both PCT and Paris Convention provisions. The Paris Convention ensures certain rights, such as a 12-month priority period, for patent applicants across member countries, facilitating the international protection of inventions.

To learn more:

• Paris Convention
• international patent applications
• PCT
• Patent Cooperation Treaty

The application filing limit for micro entity status works as follows:

• An applicant must not have been named as an inventor on more than 4 previously filed patent applications
• This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
• Applications filed as a result of previous employment where rights were assigned don’t count towards the limit

MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’

The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:

‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’

This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.

For more detailed information on how the AIA affects assignee rights, refer to MPEP § 325 for applications filed on or after September 16, 2012.

When an application is filed with informal drawings, the Office of Patent Application Processing (OPAP) will review the drawings to determine if they can be used for publication purposes. If the drawings are not acceptable for publication purposes, OPAP will object to the drawings and require corrected drawings within a set time period, usually two months. This objection does not affect the filing date of the application, and applicants can correct the drawings later in the examination process if needed.

MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:

• The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
• It requires contractors to disclose these inventions and include a statement in patent applications about government support.
• MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
• The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.

In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.

Limited recognition in international patent applications is addressed in 37 CFR 11.9(c), which states:

An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.

This means that unregistered individuals may represent applicants in certain phases of international patent applications under specific conditions. For more detailed information:

• See MPEP § 1807 for representation in international applications (PCT)
• See MPEP § 2911 for representation in international design applications

To learn more:

• limited recognition
• international patent applications
• PCT
• international design applications

To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must:

1. File a request to change the applicant under 37 CFR 1.46(c)(2)
2. File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
3. Submit a statement under 37 CFR 3.73(c) establishing ownership

The 37 CFR 3.73(c) statement must contain either:

• Documentary evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence was submitted for recordation, or
• A statement specifying where such evidence is recorded in the Office (e.g., reel and frame number)

The MPEP states: “The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.”

To claim foreign priority in a U.S. patent application, you must:

1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.

For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.

To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:

• Form PTO/SB/15A for certifying under the gross income basis
• Form PTO/SB/15B for certifying under the institution of higher education basis

The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.

To obtain status information for a patent application, you can:

1. Check Patent Center or Private Patent Application Information Retrieval (PAIR) on the USPTO website at www.uspto.gov
2. Contact the Application Assistance Unit (AAU) for applications in pre-examination or post-examination processing via email at HelpAAU@uspto.gov, phone at 571-272-4000 or toll-free at 888-786-0101, or visit their website

If the application has not been published but is pending or abandoned, the AAU will determine if the requester is authorized to receive status information based on their relationship to the application.

According to MPEP 303, applicants who want information about assignment documents must take specific steps:

1. Request separately certified copies of assignment documents
2. Submit the fees required by 37 CFR 1.19

The MPEP states:

“Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.” (MPEP 303)

A registered patent attorney or agent who has been given a power of attorney may withdraw as attorney or agent of record by submitting a request to the USPTO. The process involves:

1. Filing a request for withdrawal with the USPTO
2. Obtaining approval from the Director of the USPTO
3. Notifying the applicant or patent owner of the withdrawal

MPEP 402.06 states: “When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the reason(s) for which he or she is withdrawing so that the Office can determine whether to grant the request.”

The practitioner must also take steps to protect the client’s interests, such as giving reasonable notice and allowing time for the client to find new representation.