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)
The key requirements for filing a divisional application include:
- The divisional application must be filed before the patenting or abandonment of the parent application.
- It must claim only subject matter disclosed in the parent application.
- It must be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if it is a design application).
- The inventorship must include at least one inventor named in the parent application.
- It must claim the benefit of the parent application under 35 U.S.C. 120, 121, 365(c), or 386(c).
As stated in the MPEP:
The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
To learn more:
To file a Continued Prosecution Application (CPA), the following requirements must be met:
- The application must be for a design patent
- The prior application must be a complete design application as defined by 37 CFR 1.51(b)
- The CPA must be filed before the earliest of:
- Payment of the issue fee in the prior application
- Abandonment of the prior application
- Termination of proceedings in the prior application
Additionally, the CPA must include a request on a separate paper, identify the prior application, and be accompanied by the basic filing fee, search fee, and examination fee.
To learn more:
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)
Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:
- It establishes a continuous chain of pending applications
- It allows the later application to claim the earlier filing date
- Without copendency, the benefit claim is improper
As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”
MPEP 211 - Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)
Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:
- It establishes a continuous chain of pending applications
- It allows the later application to claim the earlier filing date
- Without copendency, the benefit claim is improper
As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”
MPEP 400 - Representative of Applicant or Owner (1)
Yes, a patent application can be filed on behalf of a deceased inventor under certain circumstances:
- The application must be filed by the legal representative of the deceased inventor’s estate.
- The legal representative must submit an oath or declaration and any necessary assignments.
- The application should be filed as soon as possible after the inventor’s death to avoid potential issues with prior art.
MPEP 409.01 states: “If an inventor dies after an application is filed but before the application is approved for issue as a patent, and this fact is known to the legal representative or the assignee, a petition to change the applicant under 37 CFR 1.46(c)(2) should be filed.”
It’s important to note that the legal representative must act promptly to ensure the application is properly filed and prosecuted in accordance with USPTO regulations.
To learn more:
MPEP 500 - Receipt and Handling of Mail and Papers (5)
A self-addressed postcard serves as a receipt and provides evidence of the items submitted to the USPTO with a patent application. According to MPEP 503, the postcard should itemize all components of the application, including:
- Inventor’s name(s)
- Title of invention
- Number of pages of specification, claims, and sheets of drawing
- Whether the inventor’s oath or declaration is included
- List of additional forms included
- Amount and manner of paying the fee
The MPEP states: “A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.”
It’s important to note that the postcard must be properly itemized to serve as evidence of receipt. Simply listing “a complete application” is not sufficient. Each component should be specifically listed on the postcard.
For applications filed via EFS-Web, an Electronic Acknowledgment Receipt serves as the electronic equivalent of a postcard receipt.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO submission, visit: USPTO submission.
The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address is used for various patent-related documents, including:
- Patent applications
- Replies to notices of informality
- Requests for extension of time
- Notices of appeal to the Patent Trial and Appeal Board
- Requests for reexamination
- Petitions 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 more information on patent application filing, visit: patent application filing.
For more information on patent correspondence, visit: patent correspondence.
The USPTO recommends several methods for filing new patent applications, with some being more advantageous than others. According to MPEP 511, the recommended methods are:
- Electronic Filing System (EFS-Web or Patent Center): This is the most recommended method. As stated in MPEP 511: “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.”
- Priority Mail Express®: If not filing electronically, this is the next best option. MPEP 511 notes: “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.”
- Hand-delivery: Applications can be hand-delivered to the USPTO.
- First-class mail: While possible, this method carries risks of delay and is not recommended for new applications.
It’s important to note that new applications cannot be filed by facsimile. For more details on electronic filing, refer to the Legal Framework for Patent Electronic System on the USPTO website.
To learn more:
Patent applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. As stated in the MPEP, All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing.
This digital system allows examiners, technical support staff, and other Office personnel to perform further processing and examination efficiently.
For physical items such as models, exhibits, and specimens, special handling procedures are in place. The MPEP directs readers to MPEP § 608.03 and 608.03(a) for more information on these items.
For more information on image file wrapper, visit: image file wrapper.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO procedures, visit: USPTO procedures.
No, the Certificate of Mailing or Transmission cannot be used for all USPTO correspondence. The MPEP 512 specifies certain types of correspondence that are excluded from the certificate practice:
“The Certificate of Mailing or Transmission procedure does not apply to: (A) Relative to Patents and Patent Applications— (1) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date…”
The MPEP lists several other exclusions, including certain international application filings, trademark-related filings, and correspondence filed in interference or trial proceedings. It’s crucial to review the full list in MPEP 512 to ensure compliance with USPTO rules.
To learn more:
MPEP 501 - Filing Papers With the U.S. Patent and Trademark Office (1)
The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address is used for various patent-related documents, including:
- Patent applications
- Replies to notices of informality
- Requests for extension of time
- Notices of appeal to the Patent Trial and Appeal Board
- Requests for reexamination
- Petitions 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 more information on patent application filing, visit: patent application filing.
For more information on patent correspondence, visit: patent correspondence.
MPEP 503 - Application Number and Filing Receipt (1)
A self-addressed postcard serves as a receipt and provides evidence of the items submitted to the USPTO with a patent application. According to MPEP 503, the postcard should itemize all components of the application, including:
- Inventor’s name(s)
- Title of invention
- Number of pages of specification, claims, and sheets of drawing
- Whether the inventor’s oath or declaration is included
- List of additional forms included
- Amount and manner of paying the fee
The MPEP states: “A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.”
It’s important to note that the postcard must be properly itemized to serve as evidence of receipt. Simply listing “a complete application” is not sufficient. Each component should be specifically listed on the postcard.
For applications filed via EFS-Web, an Electronic Acknowledgment Receipt serves as the electronic equivalent of a postcard receipt.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO submission, visit: USPTO submission.
MPEP 508 - Distribution (1)
Patent applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. As stated in the MPEP, All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing.
This digital system allows examiners, technical support staff, and other Office personnel to perform further processing and examination efficiently.
For physical items such as models, exhibits, and specimens, special handling procedures are in place. The MPEP directs readers to MPEP § 608.03 and 608.03(a) for more information on these items.
For more information on image file wrapper, visit: image file wrapper.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO procedures, visit: USPTO procedures.
MPEP 511 - Postal Service Interruptions and Emergencies (1)
The USPTO recommends several methods for filing new patent applications, with some being more advantageous than others. According to MPEP 511, the recommended methods are:
- Electronic Filing System (EFS-Web or Patent Center): This is the most recommended method. As stated in MPEP 511: “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.”
- Priority Mail Express®: If not filing electronically, this is the next best option. MPEP 511 notes: “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.”
- Hand-delivery: Applications can be hand-delivered to the USPTO.
- First-class mail: While possible, this method carries risks of delay and is not recommended for new applications.
It’s important to note that new applications cannot be filed by facsimile. For more details on electronic filing, refer to the Legal Framework for Patent Electronic System on the USPTO website.
To learn more:
MPEP 512 - Certificate of Mailing or Transmission (1)
No, the Certificate of Mailing or Transmission cannot be used for all USPTO correspondence. The MPEP 512 specifies certain types of correspondence that are excluded from the certificate practice:
“The Certificate of Mailing or Transmission procedure does not apply to: (A) Relative to Patents and Patent Applications— (1) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date…”
The MPEP lists several other exclusions, including certain international application filings, trademark-related filings, and correspondence filed in interference or trial proceedings. It’s crucial to review the full list in MPEP 512 to ensure compliance with USPTO rules.
To learn more:
Patent Law (12)
A self-addressed postcard serves as a receipt and provides evidence of the items submitted to the USPTO with a patent application. According to MPEP 503, the postcard should itemize all components of the application, including:
- Inventor’s name(s)
- Title of invention
- Number of pages of specification, claims, and sheets of drawing
- Whether the inventor’s oath or declaration is included
- List of additional forms included
- Amount and manner of paying the fee
The MPEP states: “A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.”
It’s important to note that the postcard must be properly itemized to serve as evidence of receipt. Simply listing “a complete application” is not sufficient. Each component should be specifically listed on the postcard.
For applications filed via EFS-Web, an Electronic Acknowledgment Receipt serves as the electronic equivalent of a postcard receipt.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO submission, visit: USPTO submission.
The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address is used for various patent-related documents, including:
- Patent applications
- Replies to notices of informality
- Requests for extension of time
- Notices of appeal to the Patent Trial and Appeal Board
- Requests for reexamination
- Petitions 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 more information on patent application filing, visit: patent application filing.
For more information on patent correspondence, visit: patent correspondence.
Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:
- It establishes a continuous chain of pending applications
- It allows the later application to claim the earlier filing date
- Without copendency, the benefit claim is improper
As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”
The term ‘sufficient proprietary interest’ is introduced in the MPEP § 605 for patent applications filed on or after September 16, 2012. The MPEP states:
“Effective September 16, 2012, the Office revised the rules of practice to permit […] a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
‘Sufficient proprietary interest’ typically means that the person or entity has a significant commercial or financial stake in the invention, even if they are not the inventor or assignee. This could include:
- Licensees with exclusive rights to the invention
- Investors who have funded the development of the invention
- Joint venture partners involved in the invention’s creation
To be considered as having ‘sufficient proprietary interest’, the person or entity must typically provide evidence of their interest and may need to submit a petition to the USPTO. The inventor(s) must also provide authorization for this person or entity to act as the applicant.
This provision allows for greater flexibility in who can file and prosecute patent applications, particularly benefiting startups, research institutions, and collaborative innovation projects.
To learn more:
The key requirements for filing a divisional application include:
- The divisional application must be filed before the patenting or abandonment of the parent application.
- It must claim only subject matter disclosed in the parent application.
- It must be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if it is a design application).
- The inventorship must include at least one inventor named in the parent application.
- It must claim the benefit of the parent application under 35 U.S.C. 120, 121, 365(c), or 386(c).
As stated in the MPEP:
The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
To learn more:
To file a Continued Prosecution Application (CPA), the following requirements must be met:
- The application must be for a design patent
- The prior application must be a complete design application as defined by 37 CFR 1.51(b)
- The CPA must be filed before the earliest of:
- Payment of the issue fee in the prior application
- Abandonment of the prior application
- Termination of proceedings in the prior application
Additionally, the CPA must include a request on a separate paper, identify the prior application, and be accompanied by the basic filing fee, search fee, and examination fee.
To learn more:
The USPTO recommends several methods for filing new patent applications, with some being more advantageous than others. According to MPEP 511, the recommended methods are:
- Electronic Filing System (EFS-Web or Patent Center): This is the most recommended method. As stated in MPEP 511: “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.”
- Priority Mail Express®: If not filing electronically, this is the next best option. MPEP 511 notes: “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.”
- Hand-delivery: Applications can be hand-delivered to the USPTO.
- First-class mail: While possible, this method carries risks of delay and is not recommended for new applications.
It’s important to note that new applications cannot be filed by facsimile. For more details on electronic filing, refer to the Legal Framework for Patent Electronic System on the USPTO website.
To learn more:
For patent applications filed on or after September 21, 2004, the United States Patent and Trademark Office (USPTO) has a specific policy regarding preliminary amendments. According to MPEP 608.04(b):
For applications filed on or after September 21, 2004, the Office will automatically treat any preliminary amendment under 37 CFR 1.115(a)(1) that is present on the filing date of the application as part of the original disclosure.
This means that any preliminary amendment submitted along with the application on its filing date will be considered part of the original disclosure, without any additional action required by the applicant.
To learn more:
Patent applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. As stated in the MPEP, All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing.
This digital system allows examiners, technical support staff, and other Office personnel to perform further processing and examination efficiently.
For physical items such as models, exhibits, and specimens, special handling procedures are in place. The MPEP directs readers to MPEP § 608.03 and 608.03(a) for more information on these items.
For more information on image file wrapper, visit: image file wrapper.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO procedures, visit: USPTO procedures.
No, the Certificate of Mailing or Transmission cannot be used for all USPTO correspondence. The MPEP 512 specifies certain types of correspondence that are excluded from the certificate practice:
“The Certificate of Mailing or Transmission procedure does not apply to: (A) Relative to Patents and Patent Applications— (1) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date…”
The MPEP lists several other exclusions, including certain international application filings, trademark-related filings, and correspondence filed in interference or trial proceedings. It’s crucial to review the full list in MPEP 512 to ensure compliance with USPTO rules.
To learn more:
Yes, a patent application can be filed on behalf of a deceased inventor under certain circumstances:
- The application must be filed by the legal representative of the deceased inventor’s estate.
- The legal representative must submit an oath or declaration and any necessary assignments.
- The application should be filed as soon as possible after the inventor’s death to avoid potential issues with prior art.
MPEP 409.01 states: “If an inventor dies after an application is filed but before the application is approved for issue as a patent, and this fact is known to the legal representative or the assignee, a petition to change the applicant under 37 CFR 1.46(c)(2) should be filed.”
It’s important to note that the legal representative must act promptly to ensure the application is properly filed and prosecuted in accordance with USPTO regulations.
To learn more:
Yes, a company can be listed as the applicant for a patent application, but the rules differ depending on when the application was filed. According to MPEP § 605:
For applications filed on or after September 16, 2012:
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant.”
This means that a company can be listed as the applicant if:
- The inventor has assigned the invention to the company
- The inventor is under an obligation to assign the invention to the company
For applications filed before September 16, 2012:
“For applications filed before September 16, 2012, a person to whom the inventor assigned an invention could file and prosecute an application for patent, but the inventor is considered the applicant.”
In this case, while a company could file and prosecute the application, the inventor would still be considered the applicant.
It’s important to note that regardless of who is listed as the applicant, the true inventor(s) must always be named in the application.
To learn more:
Patent Procedure (12)
A self-addressed postcard serves as a receipt and provides evidence of the items submitted to the USPTO with a patent application. According to MPEP 503, the postcard should itemize all components of the application, including:
- Inventor’s name(s)
- Title of invention
- Number of pages of specification, claims, and sheets of drawing
- Whether the inventor’s oath or declaration is included
- List of additional forms included
- Amount and manner of paying the fee
The MPEP states: “A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.”
It’s important to note that the postcard must be properly itemized to serve as evidence of receipt. Simply listing “a complete application” is not sufficient. Each component should be specifically listed on the postcard.
For applications filed via EFS-Web, an Electronic Acknowledgment Receipt serves as the electronic equivalent of a postcard receipt.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO submission, visit: USPTO submission.
The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address is used for various patent-related documents, including:
- Patent applications
- Replies to notices of informality
- Requests for extension of time
- Notices of appeal to the Patent Trial and Appeal Board
- Requests for reexamination
- Petitions 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 more information on patent application filing, visit: patent application filing.
For more information on patent correspondence, visit: patent correspondence.
Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:
- It establishes a continuous chain of pending applications
- It allows the later application to claim the earlier filing date
- Without copendency, the benefit claim is improper
As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”
The term ‘sufficient proprietary interest’ is introduced in the MPEP § 605 for patent applications filed on or after September 16, 2012. The MPEP states:
“Effective September 16, 2012, the Office revised the rules of practice to permit […] a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
‘Sufficient proprietary interest’ typically means that the person or entity has a significant commercial or financial stake in the invention, even if they are not the inventor or assignee. This could include:
- Licensees with exclusive rights to the invention
- Investors who have funded the development of the invention
- Joint venture partners involved in the invention’s creation
To be considered as having ‘sufficient proprietary interest’, the person or entity must typically provide evidence of their interest and may need to submit a petition to the USPTO. The inventor(s) must also provide authorization for this person or entity to act as the applicant.
This provision allows for greater flexibility in who can file and prosecute patent applications, particularly benefiting startups, research institutions, and collaborative innovation projects.
To learn more:
The key requirements for filing a divisional application include:
- The divisional application must be filed before the patenting or abandonment of the parent application.
- It must claim only subject matter disclosed in the parent application.
- It must be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if it is a design application).
- The inventorship must include at least one inventor named in the parent application.
- It must claim the benefit of the parent application under 35 U.S.C. 120, 121, 365(c), or 386(c).
As stated in the MPEP:
The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
To learn more:
To file a Continued Prosecution Application (CPA), the following requirements must be met:
- The application must be for a design patent
- The prior application must be a complete design application as defined by 37 CFR 1.51(b)
- The CPA must be filed before the earliest of:
- Payment of the issue fee in the prior application
- Abandonment of the prior application
- Termination of proceedings in the prior application
Additionally, the CPA must include a request on a separate paper, identify the prior application, and be accompanied by the basic filing fee, search fee, and examination fee.
To learn more:
The USPTO recommends several methods for filing new patent applications, with some being more advantageous than others. According to MPEP 511, the recommended methods are:
- Electronic Filing System (EFS-Web or Patent Center): This is the most recommended method. As stated in MPEP 511: “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.”
- Priority Mail Express®: If not filing electronically, this is the next best option. MPEP 511 notes: “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.”
- Hand-delivery: Applications can be hand-delivered to the USPTO.
- First-class mail: While possible, this method carries risks of delay and is not recommended for new applications.
It’s important to note that new applications cannot be filed by facsimile. For more details on electronic filing, refer to the Legal Framework for Patent Electronic System on the USPTO website.
To learn more:
For patent applications filed on or after September 21, 2004, the United States Patent and Trademark Office (USPTO) has a specific policy regarding preliminary amendments. According to MPEP 608.04(b):
For applications filed on or after September 21, 2004, the Office will automatically treat any preliminary amendment under 37 CFR 1.115(a)(1) that is present on the filing date of the application as part of the original disclosure.
This means that any preliminary amendment submitted along with the application on its filing date will be considered part of the original disclosure, without any additional action required by the applicant.
To learn more:
Patent applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. As stated in the MPEP, All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing.
This digital system allows examiners, technical support staff, and other Office personnel to perform further processing and examination efficiently.
For physical items such as models, exhibits, and specimens, special handling procedures are in place. The MPEP directs readers to MPEP § 608.03 and 608.03(a) for more information on these items.
For more information on image file wrapper, visit: image file wrapper.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO procedures, visit: USPTO procedures.
No, the Certificate of Mailing or Transmission cannot be used for all USPTO correspondence. The MPEP 512 specifies certain types of correspondence that are excluded from the certificate practice:
“The Certificate of Mailing or Transmission procedure does not apply to: (A) Relative to Patents and Patent Applications— (1) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date…”
The MPEP lists several other exclusions, including certain international application filings, trademark-related filings, and correspondence filed in interference or trial proceedings. It’s crucial to review the full list in MPEP 512 to ensure compliance with USPTO rules.
To learn more:
Yes, a patent application can be filed on behalf of a deceased inventor under certain circumstances:
- The application must be filed by the legal representative of the deceased inventor’s estate.
- The legal representative must submit an oath or declaration and any necessary assignments.
- The application should be filed as soon as possible after the inventor’s death to avoid potential issues with prior art.
MPEP 409.01 states: “If an inventor dies after an application is filed but before the application is approved for issue as a patent, and this fact is known to the legal representative or the assignee, a petition to change the applicant under 37 CFR 1.46(c)(2) should be filed.”
It’s important to note that the legal representative must act promptly to ensure the application is properly filed and prosecuted in accordance with USPTO regulations.
To learn more:
Yes, a company can be listed as the applicant for a patent application, but the rules differ depending on when the application was filed. According to MPEP § 605:
For applications filed on or after September 16, 2012:
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant.”
This means that a company can be listed as the applicant if:
- The inventor has assigned the invention to the company
- The inventor is under an obligation to assign the invention to the company
For applications filed before September 16, 2012:
“For applications filed before September 16, 2012, a person to whom the inventor assigned an invention could file and prosecute an application for patent, but the inventor is considered the applicant.”
In this case, while a company could file and prosecute the application, the inventor would still be considered the applicant.
It’s important to note that regardless of who is listed as the applicant, the true inventor(s) must always be named in the application.
To learn more: