Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 120-Secrecy Orders (2)
A secrecy order is issued to prevent the disclosure of sensitive information in patent applications that could be detrimental to national security. According to MPEP 120, “The purpose of this Act is to prevent disclosure of inventions by the publication of applications or by the granting of patents that might be detrimental to the national security.” These orders are typically issued for inventions that have military applications or involve critical technologies.
For more information on invention disclosure, visit: invention disclosure.
MPEP 150-Statements to DOE and NASA (3)
Patent applications that appear to disclose, purport to disclose, or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy. The purpose is to allow the DOE access to these applications for review.
As stated in MPEP 150: Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications.
However, it’s important to note that Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
For inventions related to atomic energy, applicants must file a statement under oath with specific information. According to 42 U.S.C. 2182, this statement should include:
- Full facts surrounding the making or conception of the invention
- Whether the invention was made or conceived under any contract or arrangement with the Commission (now DOE)
- Whether the contract involved the expenditure of funds by the Commission
The law states: No patent for any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application, or within thirty days after request therefor by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery described in the application and whether the invention or discovery was made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
For inventions related to aeronautical and space activities, applicants must file a statement with specific information if requested by the USPTO. According to 51 U.S.C. 20135:
No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration.
This statement should include:
- Full facts about the circumstances of the invention’s creation
- The relationship, if any, between the invention and work performed under any NASA contract
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
MPEP 151 - Content of the Statements (1)
Statements under the Atomic Energy Act and NASA Act must set forth “the full facts” surrounding the conception and making of the invention. According to MPEP 151, these facts should be unique to that invention. The MPEP states:
“The use of form paragraphs or printed forms which set forth only broad generalized statements of fact is not ordinarily regarded as meeting the requirements of these statutes.”
This means that inventors must provide detailed, specific information about their invention’s conception and development.
For more information on invention disclosure, visit: invention disclosure.
MPEP 200 - Types and Status of Application; Benefit and Priority (2)
What is the significance of the term ‘carved out’ in relation to divisional applications?
The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.”
The significance of ‘carved out’ includes:
- It implies that the divisional application is derived from a portion of the parent application.
- The divisional application focuses on a specific invention or set of claims that are distinct from those in the parent application.
- The subject matter in the divisional is entirely based on the disclosure in the parent application.
- No new matter can be added to the divisional application beyond what was disclosed in the parent.
This term emphasizes that while the divisional application is separate, it is intrinsically linked to the parent application’s original disclosure, ensuring that the applicant doesn’t gain an unfair advantage by introducing new subject matter.
For more information on Divisional application, visit: Divisional application.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent filing, visit: patent filing.
What is the relationship between a divisional application and its parent application?
A divisional application is closely related to its parent application, as it stems from the same invention disclosure. According to MPEP 201.06, “A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.” This means that:
- The divisional application contains a subset of the subject matter from the parent application.
- It claims an independent or distinct invention from what is claimed in the parent application.
- It cannot introduce new matter beyond what was disclosed in the parent application.
- It can claim the benefit of the parent application’s filing date.
The relationship allows for separate prosecution of different aspects of an invention while maintaining the priority date of the original disclosure.
To learn more:
MPEP 201 - Types of Applications (1)
What is the significance of the term ‘carved out’ in relation to divisional applications?
The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.”
The significance of ‘carved out’ includes:
- It implies that the divisional application is derived from a portion of the parent application.
- The divisional application focuses on a specific invention or set of claims that are distinct from those in the parent application.
- The subject matter in the divisional is entirely based on the disclosure in the parent application.
- No new matter can be added to the divisional application beyond what was disclosed in the parent.
This term emphasizes that while the divisional application is separate, it is intrinsically linked to the parent application’s original disclosure, ensuring that the applicant doesn’t gain an unfair advantage by introducing new subject matter.
For more information on Divisional application, visit: Divisional application.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent filing, visit: patent filing.
MPEP 300 - Ownership and Assignment (1)
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“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 ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
MPEP 310 - Government License Rights to Contractor - Owned Inventions Made Under Federally Sponsored Research and Development (1)
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“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 ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
Patent Law (12)
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“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 ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
The ‘Detailed Description of Invention’ section requires a comprehensive and precise level of detail. According to MPEP 608.01(g):
“This detailed description, required by 37 CFR 1.71, MPEP ยงยง 608.01, 2161, and 2162, must be in such particularity as to enable any person skilled in the pertinent art or science to make and use the invention without involving extensive experimentation and must clearly convey enough information about the invention to show that applicant invented the subject matter that is claimed.”
The level of detail should include:
- Enablement: Sufficient information for a skilled person to make and use the invention without undue experimentation.
- Complete Disclosure: All aspects of the invention claimed should be thoroughly described.
- Clear Support: Provide clear support for all terms used in the claims.
- Best Mode: The best mode contemplated by the inventor for carrying out the invention.
- Drawings Reference: Detailed explanation of all parts referenced in the drawings.
While the description should be comprehensive, it’s important to note that grammatical perfection is not the primary focus. The key is to provide a clear, enabling disclosure of your invention that supports your claims and demonstrates your invention to the fullest extent.
To learn more:
What is the significance of the term ‘carved out’ in relation to divisional applications?
The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.”
The significance of ‘carved out’ includes:
- It implies that the divisional application is derived from a portion of the parent application.
- The divisional application focuses on a specific invention or set of claims that are distinct from those in the parent application.
- The subject matter in the divisional is entirely based on the disclosure in the parent application.
- No new matter can be added to the divisional application beyond what was disclosed in the parent.
This term emphasizes that while the divisional application is separate, it is intrinsically linked to the parent application’s original disclosure, ensuring that the applicant doesn’t gain an unfair advantage by introducing new subject matter.
For more information on Divisional application, visit: Divisional application.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent filing, visit: patent filing.
A Secrecy Order applies to the subject matter of the invention, not just the patent application itself. It restricts disclosure or publication of the invention in any form. Other related patent applications which contain any significant part of the subject matter also fall under the scope of the order and must be brought to the USPTO’s attention. (MPEP 120 Section II)
What is the relationship between a divisional application and its parent application?
A divisional application is closely related to its parent application, as it stems from the same invention disclosure. According to MPEP 201.06, “A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.” This means that:
- The divisional application contains a subset of the subject matter from the parent application.
- It claims an independent or distinct invention from what is claimed in the parent application.
- It cannot introduce new matter beyond what was disclosed in the parent application.
- It can claim the benefit of the parent application’s filing date.
The relationship allows for separate prosecution of different aspects of an invention while maintaining the priority date of the original disclosure.
To learn more:
The detailed description in a patent application serves several crucial purposes:
- It provides a comprehensive explanation of the invention, as required by 37 CFR 1.71 and MPEP ยง 608.01.
- It must be detailed enough to enable any person skilled in the pertinent art or science to make and use the invention without involving extensive experimentation.
- It should clearly convey enough information about the invention to show that the applicant invented the subject matter that is claimed.
As stated in MPEP 608.01(g):
“This detailed description, required by 37 CFR 1.71, MPEP ยงยง 608.01, 2161, and 2162, must be in such particularity as to enable any person skilled in the pertinent art or science to make and use the invention without involving extensive experimentation and must clearly convey enough information about the invention to show that applicant invented the subject matter that is claimed.”
In essence, the detailed description acts as a comprehensive guide to your invention, ensuring that it can be understood, replicated, and distinguished from prior art.
To learn more:
Patent applications that appear to disclose, purport to disclose, or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy. The purpose is to allow the DOE access to these applications for review.
As stated in MPEP 150: Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications.
However, it’s important to note that Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
A secrecy order is issued to prevent the disclosure of sensitive information in patent applications that could be detrimental to national security. According to MPEP 120, “The purpose of this Act is to prevent disclosure of inventions by the publication of applications or by the granting of patents that might be detrimental to the national security.” These orders are typically issued for inventions that have military applications or involve critical technologies.
For more information on invention disclosure, visit: invention disclosure.
For inventions related to atomic energy, applicants must file a statement under oath with specific information. According to 42 U.S.C. 2182, this statement should include:
- Full facts surrounding the making or conception of the invention
- Whether the invention was made or conceived under any contract or arrangement with the Commission (now DOE)
- Whether the contract involved the expenditure of funds by the Commission
The law states: No patent for any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application, or within thirty days after request therefor by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery described in the application and whether the invention or discovery was made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
Statements under the Atomic Energy Act and NASA Act must set forth “the full facts” surrounding the conception and making of the invention. According to MPEP 151, these facts should be unique to that invention. The MPEP states:
“The use of form paragraphs or printed forms which set forth only broad generalized statements of fact is not ordinarily regarded as meeting the requirements of these statutes.”
This means that inventors must provide detailed, specific information about their invention’s conception and development.
For more information on invention disclosure, visit: invention disclosure.
For inventions related to aeronautical and space activities, applicants must file a statement with specific information if requested by the USPTO. According to 51 U.S.C. 20135:
No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration.
This statement should include:
- Full facts about the circumstances of the invention’s creation
- The relationship, if any, between the invention and work performed under any NASA contract
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
Yes, you can generally use your own terminology in the detailed description of your patent application. The MPEP 608.01(g) states:
“An applicant is ordinarily permitted to use his or her own terminology, as long as it can be understood.”
However, there are some important considerations:
- The terminology must be clear and understandable to a person skilled in the relevant field.
- Consistency is key – use the same terms throughout your application to avoid confusion.
- If you introduce new or unconventional terms, it’s advisable to provide definitions or explanations.
- The examiner may require grammatical corrections, but this is not the primary focus of the examination.
Remember, while you have flexibility in your terminology, the ultimate goal is to clearly communicate your invention. If your unique terms hinder understanding, it may be better to use more standard language in the field.
To learn more:
Patent Procedure (11)
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“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 ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
The ‘Detailed Description of Invention’ section requires a comprehensive and precise level of detail. According to MPEP 608.01(g):
“This detailed description, required by 37 CFR 1.71, MPEP ยงยง 608.01, 2161, and 2162, must be in such particularity as to enable any person skilled in the pertinent art or science to make and use the invention without involving extensive experimentation and must clearly convey enough information about the invention to show that applicant invented the subject matter that is claimed.”
The level of detail should include:
- Enablement: Sufficient information for a skilled person to make and use the invention without undue experimentation.
- Complete Disclosure: All aspects of the invention claimed should be thoroughly described.
- Clear Support: Provide clear support for all terms used in the claims.
- Best Mode: The best mode contemplated by the inventor for carrying out the invention.
- Drawings Reference: Detailed explanation of all parts referenced in the drawings.
While the description should be comprehensive, it’s important to note that grammatical perfection is not the primary focus. The key is to provide a clear, enabling disclosure of your invention that supports your claims and demonstrates your invention to the fullest extent.
To learn more:
What is the significance of the term ‘carved out’ in relation to divisional applications?
The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.”
The significance of ‘carved out’ includes:
- It implies that the divisional application is derived from a portion of the parent application.
- The divisional application focuses on a specific invention or set of claims that are distinct from those in the parent application.
- The subject matter in the divisional is entirely based on the disclosure in the parent application.
- No new matter can be added to the divisional application beyond what was disclosed in the parent.
This term emphasizes that while the divisional application is separate, it is intrinsically linked to the parent application’s original disclosure, ensuring that the applicant doesn’t gain an unfair advantage by introducing new subject matter.
For more information on Divisional application, visit: Divisional application.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent filing, visit: patent filing.
What is the relationship between a divisional application and its parent application?
A divisional application is closely related to its parent application, as it stems from the same invention disclosure. According to MPEP 201.06, “A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.” This means that:
- The divisional application contains a subset of the subject matter from the parent application.
- It claims an independent or distinct invention from what is claimed in the parent application.
- It cannot introduce new matter beyond what was disclosed in the parent application.
- It can claim the benefit of the parent application’s filing date.
The relationship allows for separate prosecution of different aspects of an invention while maintaining the priority date of the original disclosure.
To learn more:
The detailed description in a patent application serves several crucial purposes:
- It provides a comprehensive explanation of the invention, as required by 37 CFR 1.71 and MPEP ยง 608.01.
- It must be detailed enough to enable any person skilled in the pertinent art or science to make and use the invention without involving extensive experimentation.
- It should clearly convey enough information about the invention to show that the applicant invented the subject matter that is claimed.
As stated in MPEP 608.01(g):
“This detailed description, required by 37 CFR 1.71, MPEP ยงยง 608.01, 2161, and 2162, must be in such particularity as to enable any person skilled in the pertinent art or science to make and use the invention without involving extensive experimentation and must clearly convey enough information about the invention to show that applicant invented the subject matter that is claimed.”
In essence, the detailed description acts as a comprehensive guide to your invention, ensuring that it can be understood, replicated, and distinguished from prior art.
To learn more:
Patent applications that appear to disclose, purport to disclose, or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy. The purpose is to allow the DOE access to these applications for review.
As stated in MPEP 150: Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications.
However, it’s important to note that Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
A secrecy order is issued to prevent the disclosure of sensitive information in patent applications that could be detrimental to national security. According to MPEP 120, “The purpose of this Act is to prevent disclosure of inventions by the publication of applications or by the granting of patents that might be detrimental to the national security.” These orders are typically issued for inventions that have military applications or involve critical technologies.
For more information on invention disclosure, visit: invention disclosure.
For inventions related to atomic energy, applicants must file a statement under oath with specific information. According to 42 U.S.C. 2182, this statement should include:
- Full facts surrounding the making or conception of the invention
- Whether the invention was made or conceived under any contract or arrangement with the Commission (now DOE)
- Whether the contract involved the expenditure of funds by the Commission
The law states: No patent for any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application, or within thirty days after request therefor by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery described in the application and whether the invention or discovery was made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
Statements under the Atomic Energy Act and NASA Act must set forth “the full facts” surrounding the conception and making of the invention. According to MPEP 151, these facts should be unique to that invention. The MPEP states:
“The use of form paragraphs or printed forms which set forth only broad generalized statements of fact is not ordinarily regarded as meeting the requirements of these statutes.”
This means that inventors must provide detailed, specific information about their invention’s conception and development.
For more information on invention disclosure, visit: invention disclosure.
For inventions related to aeronautical and space activities, applicants must file a statement with specific information if requested by the USPTO. According to 51 U.S.C. 20135:
No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration.
This statement should include:
- Full facts about the circumstances of the invention’s creation
- The relationship, if any, between the invention and work performed under any NASA contract
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
Yes, you can generally use your own terminology in the detailed description of your patent application. The MPEP 608.01(g) states:
“An applicant is ordinarily permitted to use his or her own terminology, as long as it can be understood.”
However, there are some important considerations:
- The terminology must be clear and understandable to a person skilled in the relevant field.
- Consistency is key – use the same terms throughout your application to avoid confusion.
- If you introduce new or unconventional terms, it’s advisable to provide definitions or explanations.
- The examiner may require grammatical corrections, but this is not the primary focus of the examination.
Remember, while you have flexibility in your terminology, the ultimate goal is to clearly communicate your invention. If your unique terms hinder understanding, it may be better to use more standard language in the field.
To learn more: