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 200 - Types and Status of Application; Benefit and Priority (2)
If the basic filing fee is not paid when filing a Continued Prosecution Application (CPA), the USPTO will send a notice to the applicant. According to MPEP 201.06(d):
‘If the basic filing fee is not paid when the CPA is filed or within the time period set forth in a notice from the Office, the USPTO will send a Notice to File Missing Parts in the CPA.’
This notice gives the applicant a chance to pay the fee and continue the application process. However, it’s important to note that failing to respond to this notice or pay the required fee within the specified time frame could result in the CPA being abandoned. It’s always best practice to submit all required fees at the time of filing to avoid potential delays or complications in the patent application process.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on Notice to File Missing Parts, visit: Notice to File Missing Parts.
Yes, a reference to a prior application can be added after filing, but there are specific procedures and limitations to be aware of. According to MPEP 211.02:
If an applicant includes a reference to a prior application elsewhere in the application but not in the first sentence(s) of the specification, and the application is otherwise complete, OPAP will mail a ‘Notice to File Missing Parts’ giving the applicant an opportunity to correct the reference to the prior application. If the application is otherwise incomplete, OPAP will mail a Notice to File Missing Parts, and the applicant can amend the specification to include the reference to the prior application in addition to completing the application.
However, it’s important to note that adding a reference to claim priority benefits has strict time limitations. As per MPEP 211.03:
A petition under 37 CFR 1.78 and the petition fee would be required to add or correct a reference to a prior application in an application after expiration of the time period set in 37 CFR 1.78(a)(4), (b)(3), (c)(3), or (e)(4).
Therefore, while it’s possible to add or correct a reference after filing, it’s always best to include the correct reference in the initial filing to avoid potential complications or the need for petitions.
To learn more:
MPEP 201 - Types of Applications (1)
If the basic filing fee is not paid when filing a Continued Prosecution Application (CPA), the USPTO will send a notice to the applicant. According to MPEP 201.06(d):
‘If the basic filing fee is not paid when the CPA is filed or within the time period set forth in a notice from the Office, the USPTO will send a Notice to File Missing Parts in the CPA.’
This notice gives the applicant a chance to pay the fee and continue the application process. However, it’s important to note that failing to respond to this notice or pay the required fee within the specified time frame could result in the CPA being abandoned. It’s always best practice to submit all required fees at the time of filing to avoid potential delays or complications in the patent application process.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on Notice to File Missing Parts, visit: Notice to File Missing Parts.
MPEP 500 - Receipt and Handling of Mail and Papers (2)
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 missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
MPEP 503 - Application Number and Filing Receipt (1)
When an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
MPEP 507 - Drawing Review in the Office of Patent Application Processing (1)
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).
Patent Law (7)
If an inventor’s signature was missing from a continuation or divisional application, the Office of Patent Application Processing (OPAP) would typically take the following steps:
- Send a “Notice to File Missing Parts” requiring the signature of the nonsigning inventor.
- If a copy of the decision according status under pre-AIA 37 CFR 1.47 was not included with the original filing, applicants could respond to the Notice by:
- Submitting a copy of the decision according status under pre-AIA 37 CFR 1.47, along with a surcharge for late filing.
- Alternatively, submitting an oath or declaration signed by the previously nonsigning inventor, along with the required surcharge.
This process is described in the MPEP:
“If OPAP mails such a Notice, a copy of the decision according status under pre-AIA 37 CFR 1.47, together with a surcharge under 37 CFR 1.16(f) for its late filing, will be an acceptable reply to the Notice. Alternatively, applicant may submit an oath or declaration signed by the previously nonsigning inventor together with the surcharge set forth in 37 CFR 1.16(f) in reply to the Notice.”
To learn more:
If the basic filing fee is not paid when filing a Continued Prosecution Application (CPA), the USPTO will send a notice to the applicant. According to MPEP 201.06(d):
‘If the basic filing fee is not paid when the CPA is filed or within the time period set forth in a notice from the Office, the USPTO will send a Notice to File Missing Parts in the CPA.’
This notice gives the applicant a chance to pay the fee and continue the application process. However, it’s important to note that failing to respond to this notice or pay the required fee within the specified time frame could result in the CPA being abandoned. It’s always best practice to submit all required fees at the time of filing to avoid potential delays or complications in the patent application process.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on Notice to File Missing Parts, visit: Notice to File Missing Parts.
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).
What are the consequences of omitting an inventor’s oath or declaration in a nonprovisional application?
Omitting an inventor’s oath or declaration in a nonprovisional application can have significant consequences. According to MPEP 601.01(a):
If the application is filed without an inventor’s oath or declaration by any inventor, the Office will send a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing oath or declaration and to pay the surcharge required by 37 CFR 1.16(f) to avoid abandonment.
The key points to note are:
- The USPTO will send a Notice to File Missing Parts.
- A time period (usually two months) is given to file the missing oath or declaration.
- A surcharge under 37 CFR 1.16(f) must be paid.
- Failure to comply may result in abandonment of the application.
It’s important to note that while the application can be filed without the oath or declaration, it must be submitted before the application is allowed to avoid potential issues.
For more information, refer to MPEP 601.01(a) and MPEP 602 on inventor’s oath or declaration.
To learn more:
When an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
Yes, a reference to a prior application can be added after filing, but there are specific procedures and limitations to be aware of. According to MPEP 211.02:
If an applicant includes a reference to a prior application elsewhere in the application but not in the first sentence(s) of the specification, and the application is otherwise complete, OPAP will mail a ‘Notice to File Missing Parts’ giving the applicant an opportunity to correct the reference to the prior application. If the application is otherwise incomplete, OPAP will mail a Notice to File Missing Parts, and the applicant can amend the specification to include the reference to the prior application in addition to completing the application.
However, it’s important to note that adding a reference to claim priority benefits has strict time limitations. As per MPEP 211.03:
A petition under 37 CFR 1.78 and the petition fee would be required to add or correct a reference to a prior application in an application after expiration of the time period set in 37 CFR 1.78(a)(4), (b)(3), (c)(3), or (e)(4).
Therefore, while it’s possible to add or correct a reference after filing, it’s always best to include the correct reference in the initial filing to avoid potential complications or the need for petitions.
To learn more:
Can a patent application be filed without drawings?
In most cases, a patent application should include drawings if they are necessary to understand the invention. However, there are situations where an application can be filed without drawings. As stated in MPEP 601.01(f): ‘If the specification includes a sequence listing or large tables, those elements may be submitted as electronic files in ASCII text format.’
For applications that do require drawings, but are filed without them, the USPTO will send a Notice to File Missing Parts. The applicant can then submit the drawings within a specified time period, typically two months, extendable up to seven months with fees. However, it’s important to note that adding new drawings may be considered new matter if they introduce elements not described in the original specification.
Design patent applications, which are based entirely on the visual appearance of an item, always require drawings and cannot be filed without them.
To learn more:
Patent Procedure (7)
If an inventor’s signature was missing from a continuation or divisional application, the Office of Patent Application Processing (OPAP) would typically take the following steps:
- Send a “Notice to File Missing Parts” requiring the signature of the nonsigning inventor.
- If a copy of the decision according status under pre-AIA 37 CFR 1.47 was not included with the original filing, applicants could respond to the Notice by:
- Submitting a copy of the decision according status under pre-AIA 37 CFR 1.47, along with a surcharge for late filing.
- Alternatively, submitting an oath or declaration signed by the previously nonsigning inventor, along with the required surcharge.
This process is described in the MPEP:
“If OPAP mails such a Notice, a copy of the decision according status under pre-AIA 37 CFR 1.47, together with a surcharge under 37 CFR 1.16(f) for its late filing, will be an acceptable reply to the Notice. Alternatively, applicant may submit an oath or declaration signed by the previously nonsigning inventor together with the surcharge set forth in 37 CFR 1.16(f) in reply to the Notice.”
To learn more:
If the basic filing fee is not paid when filing a Continued Prosecution Application (CPA), the USPTO will send a notice to the applicant. According to MPEP 201.06(d):
‘If the basic filing fee is not paid when the CPA is filed or within the time period set forth in a notice from the Office, the USPTO will send a Notice to File Missing Parts in the CPA.’
This notice gives the applicant a chance to pay the fee and continue the application process. However, it’s important to note that failing to respond to this notice or pay the required fee within the specified time frame could result in the CPA being abandoned. It’s always best practice to submit all required fees at the time of filing to avoid potential delays or complications in the patent application process.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on Notice to File Missing Parts, visit: Notice to File Missing Parts.
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).
What are the consequences of omitting an inventor’s oath or declaration in a nonprovisional application?
Omitting an inventor’s oath or declaration in a nonprovisional application can have significant consequences. According to MPEP 601.01(a):
If the application is filed without an inventor’s oath or declaration by any inventor, the Office will send a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing oath or declaration and to pay the surcharge required by 37 CFR 1.16(f) to avoid abandonment.
The key points to note are:
- The USPTO will send a Notice to File Missing Parts.
- A time period (usually two months) is given to file the missing oath or declaration.
- A surcharge under 37 CFR 1.16(f) must be paid.
- Failure to comply may result in abandonment of the application.
It’s important to note that while the application can be filed without the oath or declaration, it must be submitted before the application is allowed to avoid potential issues.
For more information, refer to MPEP 601.01(a) and MPEP 602 on inventor’s oath or declaration.
To learn more:
When an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
Yes, a reference to a prior application can be added after filing, but there are specific procedures and limitations to be aware of. According to MPEP 211.02:
If an applicant includes a reference to a prior application elsewhere in the application but not in the first sentence(s) of the specification, and the application is otherwise complete, OPAP will mail a ‘Notice to File Missing Parts’ giving the applicant an opportunity to correct the reference to the prior application. If the application is otherwise incomplete, OPAP will mail a Notice to File Missing Parts, and the applicant can amend the specification to include the reference to the prior application in addition to completing the application.
However, it’s important to note that adding a reference to claim priority benefits has strict time limitations. As per MPEP 211.03:
A petition under 37 CFR 1.78 and the petition fee would be required to add or correct a reference to a prior application in an application after expiration of the time period set in 37 CFR 1.78(a)(4), (b)(3), (c)(3), or (e)(4).
Therefore, while it’s possible to add or correct a reference after filing, it’s always best to include the correct reference in the initial filing to avoid potential complications or the need for petitions.
To learn more:
Can a patent application be filed without drawings?
In most cases, a patent application should include drawings if they are necessary to understand the invention. However, there are situations where an application can be filed without drawings. As stated in MPEP 601.01(f): ‘If the specification includes a sequence listing or large tables, those elements may be submitted as electronic files in ASCII text format.’
For applications that do require drawings, but are filed without them, the USPTO will send a Notice to File Missing Parts. The applicant can then submit the drawings within a specified time period, typically two months, extendable up to seven months with fees. However, it’s important to note that adding new drawings may be considered new matter if they introduce elements not described in the original specification.
Design patent applications, which are based entirely on the visual appearance of an item, always require drawings and cannot be filed without them.
To learn more: