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 (7)
The filing date of a nonprovisional application under 37 CFR 1.53(b) depends on the type of application and when it was filed:
- For utility and plant applications filed on or after December 18, 2013: The filing date is the date on which the specification, with or without claims, is received in the USPTO.
- For design applications: The filing date is the date on which the specification, including at least one claim, and any required drawings are received in the USPTO.
- For applications filed before December 18, 2013: The filing date was the date on which the specification containing a description and at least one claim, and any required drawings were received in the USPTO.
The MPEP states:
For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office.
This change in filing date requirements was part of the implementation of the Patent Law Treaties Implementation Act of 2012.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
For nonprovisional applications filed on or after December 18, 2013, the filing date requirements have been simplified. The MPEP states: For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office.
This means that utility and plant patent applications no longer require at least one claim or any drawings to receive a filing date. However, design patent applications still require at least one claim and any required drawings to receive a filing date.
To learn more:
The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
- For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.
The MPEP states:
For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.
This change reflects the America Invents Act’s modifications to U.S. patent law.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent application requirements, visit: patent application requirements.
The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
- For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.
The MPEP states for post-AIA applications:
37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.
These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on inventorship, visit: inventorship.
For more information on patent application requirements, visit: patent application requirements.
The inventorship of a divisional application must include at least one inventor named in the parent application, but it doesn’t have to be identical. The MPEP states:
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).
If the divisional application is filed with fewer inventors than the parent application, a statement may be filed requesting deletion of the names of the additional inventors. For applications filed on or after September 16, 2012, the statement must be filed with the divisional application and signed by a party set forth in 37 CFR 1.33(b).
To learn more:
Can the specification be omitted when filing a divisional or continuation application?
No, the specification cannot be omitted when filing a divisional or continuation application. However, the process is simplified. According to MPEP 201.06(c):
“A new specification (including the claims) may be submitted in a divisional application filed under 37 CFR 1.53(b). In such a case, the applicant must file a copy of the prior application as filed or a new specification.”
This means that while you must include a specification, you have two options:
- Submit a copy of the prior application’s specification
- Submit a new specification tailored to the divisional or continuation application
If you choose to submit a copy of the prior application, it’s important to ensure that it properly supports the claims in the new application. Any new matter introduced in a continuation application may result in a rejection under 35 U.S.C. 112(a).
Remember, the claims are considered part of the specification, so you must include claims with your application, whether you’re using the prior specification or submitting a new one.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on patent application requirements, visit: patent application requirements.
For more information on USPTO, visit: USPTO.
MPEP 201 - Types of Applications (4)
The filing date of a nonprovisional application under 37 CFR 1.53(b) depends on the type of application and when it was filed:
- For utility and plant applications filed on or after December 18, 2013: The filing date is the date on which the specification, with or without claims, is received in the USPTO.
- For design applications: The filing date is the date on which the specification, including at least one claim, and any required drawings are received in the USPTO.
- For applications filed before December 18, 2013: The filing date was the date on which the specification containing a description and at least one claim, and any required drawings were received in the USPTO.
The MPEP states:
For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office.
This change in filing date requirements was part of the implementation of the Patent Law Treaties Implementation Act of 2012.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
- For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.
The MPEP states:
For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.
This change reflects the America Invents Act’s modifications to U.S. patent law.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent application requirements, visit: patent application requirements.
The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
- For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.
The MPEP states for post-AIA applications:
37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.
These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on inventorship, visit: inventorship.
For more information on patent application requirements, visit: patent application requirements.
Can the specification be omitted when filing a divisional or continuation application?
No, the specification cannot be omitted when filing a divisional or continuation application. However, the process is simplified. According to MPEP 201.06(c):
“A new specification (including the claims) may be submitted in a divisional application filed under 37 CFR 1.53(b). In such a case, the applicant must file a copy of the prior application as filed or a new specification.”
This means that while you must include a specification, you have two options:
- Submit a copy of the prior application’s specification
- Submit a new specification tailored to the divisional or continuation application
If you choose to submit a copy of the prior application, it’s important to ensure that it properly supports the claims in the new application. Any new matter introduced in a continuation application may result in a rejection under 35 U.S.C. 112(a).
Remember, the claims are considered part of the specification, so you must include claims with your application, whether you’re using the prior specification or submitting a new one.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on patent application requirements, visit: patent application requirements.
For more information on USPTO, visit: USPTO.
MPEP 217-Incorporation by Reference Under 37 CFR 1.57(b) (1)
To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
MPEP 400 - Representative of Applicant or Owner (3)
The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.
The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’
For more information on patent application requirements, visit: patent application requirements.
The USPTO has specific requirements for signatures on documents, as outlined in 37 CFR 1.4(d). Key points include:
- Signatures must be personally inserted by the signer or comply with specific electronic signature standards.
- The person inserting a signature certifies that it is their own signature.
- A person submitting a document signed by another must have a reasonable basis to believe the signature is authentic.
The MPEP states: The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.
For more information on patent application requirements, visit: patent application requirements.
No, patent applicants are not required to conduct prior art searches before filing a patent application. This is clarified in the MPEP, which states:
An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984).
However, conducting a prior art search can be beneficial for understanding the state of the art and assessing the potential patentability of an invention.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior art search, visit: prior art search.
MPEP 410 - Representations to the U.S. Patent and Trademark Office (3)
The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.
The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’
For more information on patent application requirements, visit: patent application requirements.
The USPTO has specific requirements for signatures on documents, as outlined in 37 CFR 1.4(d). Key points include:
- Signatures must be personally inserted by the signer or comply with specific electronic signature standards.
- The person inserting a signature certifies that it is their own signature.
- A person submitting a document signed by another must have a reasonable basis to believe the signature is authentic.
The MPEP states: The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.
For more information on patent application requirements, visit: patent application requirements.
No, patent applicants are not required to conduct prior art searches before filing a patent application. This is clarified in the MPEP, which states:
An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984).
However, conducting a prior art search can be beneficial for understanding the state of the art and assessing the potential patentability of an invention.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior art search, visit: prior art search.
MPEP 500 - Receipt and Handling of Mail and Papers (3)
If a patent application is missing essential parts, such as the specification, drawings, or claims, the USPTO will notify the applicant of the missing elements. According to MPEP 506:
‘Applicant will be notified of the incomplete application and the time period set for submitting the omitted parts.’
The applicant will then have an opportunity to submit the missing parts within the specified time period to complete the application.
For more information on incomplete application, visit: incomplete application.
For more information on missing parts, visit: missing parts.
For more information on patent application requirements, visit: patent application requirements.
To obtain a filing date for a nonprovisional patent application filed under 37 CFR 1.53(b), the application must include:
- A specification containing a description as prescribed by 35 U.S.C. 112(a)
- At least one claim (for applications filed on or after December 13, 2013)
- Any drawings necessary under 35 U.S.C. 113 (first sentence)
As stated in the MPEP: Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor’s oath or declaration.
If any required items are missing, the applicant will be notified and given a time period to submit the missing elements. The filing date will be the date the missing items are received.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
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. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
For more information on declaration, visit: declaration.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on patent application requirements, visit: patent application requirements.
MPEP 506 - Completeness of Original Application (3)
If a patent application is missing essential parts, such as the specification, drawings, or claims, the USPTO will notify the applicant of the missing elements. According to MPEP 506:
‘Applicant will be notified of the incomplete application and the time period set for submitting the omitted parts.’
The applicant will then have an opportunity to submit the missing parts within the specified time period to complete the application.
For more information on incomplete application, visit: incomplete application.
For more information on missing parts, visit: missing parts.
For more information on patent application requirements, visit: patent application requirements.
To obtain a filing date for a nonprovisional patent application filed under 37 CFR 1.53(b), the application must include:
- A specification containing a description as prescribed by 35 U.S.C. 112(a)
- At least one claim (for applications filed on or after December 13, 2013)
- Any drawings necessary under 35 U.S.C. 113 (first sentence)
As stated in the MPEP: Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor’s oath or declaration.
If any required items are missing, the applicant will be notified and given a time period to submit the missing elements. The filing date will be the date the missing items are received.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
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. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
For more information on declaration, visit: declaration.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on patent application requirements, visit: patent application requirements.
Patent Law (19)
Inventors are required to provide their place of residence in patent applications. According to MPEP 602.08(a):
“Each inventor’s place of residence, that is, the city and either state or foreign country, is required to be included in the oath or declaration in a nonprovisional application for compliance with 37 CFR 1.63 unless it is included in an application data sheet (37 CFR 1.76).”
For provisional applications, the residence must be included on the cover sheet or in an application data sheet.
To learn more:
- Inventor Residence
- Patent Application
- Inventor Information
- Oath or Declaration
- Application Data Sheet
To learn more:
The filing date of a nonprovisional application under 37 CFR 1.53(b) depends on the type of application and when it was filed:
- For utility and plant applications filed on or after December 18, 2013: The filing date is the date on which the specification, with or without claims, is received in the USPTO.
- For design applications: The filing date is the date on which the specification, including at least one claim, and any required drawings are received in the USPTO.
- For applications filed before December 18, 2013: The filing date was the date on which the specification containing a description and at least one claim, and any required drawings were received in the USPTO.
The MPEP states:
For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office.
This change in filing date requirements was part of the implementation of the Patent Law Treaties Implementation Act of 2012.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.
The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’
For more information on patent application requirements, visit: patent application requirements.
An inventor’s oath or declaration must include:
- Inventor bibliographic information (see MPEP ยง 602.08(a))
- Name of the inventor or each joint inventor
- Signature of each inventor (with some exceptions, see MPEP ยง 602.08(b))
- Identification of the application to which it is directed (see MPEP ยง 602.08(c))
As stated in the MPEP, “The inventor’s oath or declaration must include certain inventor bibliographic information, name the inventor or each joint inventor and except as otherwise provided be signed by each inventor, and identify the application to which it is directed.”
To learn more:
What information is required for inventor’s citizenship in a patent application?
For patent applications, the inventor’s citizenship must be provided. According to MPEP 602.08(b), ‘The inventor’s citizenship must be specifically identified in the oath or declaration.’ This requirement applies to both utility and design patent applications. The MPEP further states:
‘It is not sufficient for oath or declaration to merely state that the inventor is a citizen of the ‘United States,’ but the particular state of which the inventor is a citizen must be specified.’
This means that for U.S. citizens, the specific state of citizenship should be mentioned. For non-U.S. citizens, the country of citizenship should be clearly stated.
To learn more:
If a patent application is missing essential parts, such as the specification, drawings, or claims, the USPTO will notify the applicant of the missing elements. According to MPEP 506:
‘Applicant will be notified of the incomplete application and the time period set for submitting the omitted parts.’
The applicant will then have an opportunity to submit the missing parts within the specified time period to complete the application.
For more information on incomplete application, visit: incomplete application.
For more information on missing parts, visit: missing parts.
For more information on patent application requirements, visit: patent application requirements.
The USPTO has specific requirements for signatures on documents, as outlined in 37 CFR 1.4(d). Key points include:
- Signatures must be personally inserted by the signer or comply with specific electronic signature standards.
- The person inserting a signature certifies that it is their own signature.
- A person submitting a document signed by another must have a reasonable basis to believe the signature is authentic.
The MPEP states: The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.
For more information on patent application requirements, visit: patent application requirements.
To obtain a filing date for a nonprovisional patent application filed under 37 CFR 1.53(b), the application must include:
- A specification containing a description as prescribed by 35 U.S.C. 112(a)
- At least one claim (for applications filed on or after December 13, 2013)
- Any drawings necessary under 35 U.S.C. 113 (first sentence)
As stated in the MPEP: Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor’s oath or declaration.
If any required items are missing, the applicant will be notified and given a time period to submit the missing elements. The filing date will be the date the missing items are received.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
For continuing applications filed on or after September 16, 2012, the following requirements apply:
- A copy of an oath or declaration or substitute statement from the prior nonprovisional application can be used, provided it complies with 37 CFR 1.63 or 37 CFR 1.64.
- The oath or declaration must comply with 35 U.S.C. 115 and the relevant CFR sections in effect for applications filed on or after September 16, 2012.
- It must include a statement that the application was made or authorized to be made by the person executing the oath or declaration.
As stated in the MPEP, “a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012.”
To learn more:
To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
A provisional patent application requires a cover sheet with specific identifying information. According to the MPEP:
“A cover sheet providing identifying information is required for a complete provisional application. In accordance with 37 CFR 1.51(c)(1) the cover sheet must state that it is for a provisional application, it must identify and give the residence of the inventor or inventors, and it must give a title of the invention.”
The cover sheet must include:
- Statement that it is for a provisional application
- Inventor(s) identification and residence
- Title of the invention
- Name and registration number of the attorney or agent (if applicable)
- Docket number (if applicable)
- Correspondence address
- Statement regarding federally sponsored research or development (if applicable)
- Name of the government agency and contract number (if developed under a government contract)
For more details on provisional application requirements, refer to MPEP ยง 201.04.
To learn more:
For nonprovisional applications filed on or after December 18, 2013, the filing date requirements have been simplified. The MPEP states: For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office.
This means that utility and plant patent applications no longer require at least one claim or any drawings to receive a filing date. However, design patent applications still require at least one claim and any required drawings to receive a filing date.
To learn more:
The requirement for an inventor’s citizenship in patent applications has changed:
- For applications filed on or after September 16, 2012: Citizenship is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.
- For nonprovisional applications filed before September 16, 2012: Citizenship was required under pre-AIA 35 U.S.C. 115.
As stated in the MPEP: “For applications filed on or after September 16, 2012, the citizenship of the inventor is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.”
For older applications, if an inventor is not a citizen of any country, a statement to this effect is accepted as satisfying the statutory requirement.
To learn more:
The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
- For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.
The MPEP states:
For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.
This change reflects the America Invents Act’s modifications to U.S. patent law.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent application requirements, visit: patent application requirements.
The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
- For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.
The MPEP states for post-AIA applications:
37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.
These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on inventorship, visit: inventorship.
For more information on patent application requirements, visit: patent application requirements.
The inventorship of a divisional application must include at least one inventor named in the parent application, but it doesn’t have to be identical. The MPEP states:
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).
If the divisional application is filed with fewer inventors than the parent application, a statement may be filed requesting deletion of the names of the additional inventors. For applications filed on or after September 16, 2012, the statement must be filed with the divisional application and signed by a party set forth in 37 CFR 1.33(b).
To learn more:
Can the specification be omitted when filing a divisional or continuation application?
No, the specification cannot be omitted when filing a divisional or continuation application. However, the process is simplified. According to MPEP 201.06(c):
“A new specification (including the claims) may be submitted in a divisional application filed under 37 CFR 1.53(b). In such a case, the applicant must file a copy of the prior application as filed or a new specification.”
This means that while you must include a specification, you have two options:
- Submit a copy of the prior application’s specification
- Submit a new specification tailored to the divisional or continuation application
If you choose to submit a copy of the prior application, it’s important to ensure that it properly supports the claims in the new application. Any new matter introduced in a continuation application may result in a rejection under 35 U.S.C. 112(a).
Remember, the claims are considered part of the specification, so you must include claims with your application, whether you’re using the prior specification or submitting a new one.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on patent application requirements, visit: patent application requirements.
For more information on USPTO, visit: USPTO.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
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. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
For more information on declaration, visit: declaration.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on patent application requirements, visit: patent application requirements.
No, patent applicants are not required to conduct prior art searches before filing a patent application. This is clarified in the MPEP, which states:
An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984).
However, conducting a prior art search can be beneficial for understanding the state of the art and assessing the potential patentability of an invention.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior art search, visit: prior art search.
Patent Procedure (19)
Inventors are required to provide their place of residence in patent applications. According to MPEP 602.08(a):
“Each inventor’s place of residence, that is, the city and either state or foreign country, is required to be included in the oath or declaration in a nonprovisional application for compliance with 37 CFR 1.63 unless it is included in an application data sheet (37 CFR 1.76).”
For provisional applications, the residence must be included on the cover sheet or in an application data sheet.
To learn more:
- Inventor Residence
- Patent Application
- Inventor Information
- Oath or Declaration
- Application Data Sheet
To learn more:
The filing date of a nonprovisional application under 37 CFR 1.53(b) depends on the type of application and when it was filed:
- For utility and plant applications filed on or after December 18, 2013: The filing date is the date on which the specification, with or without claims, is received in the USPTO.
- For design applications: The filing date is the date on which the specification, including at least one claim, and any required drawings are received in the USPTO.
- For applications filed before December 18, 2013: The filing date was the date on which the specification containing a description and at least one claim, and any required drawings were received in the USPTO.
The MPEP states:
For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office.
This change in filing date requirements was part of the implementation of the Patent Law Treaties Implementation Act of 2012.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.
The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’
For more information on patent application requirements, visit: patent application requirements.
An inventor’s oath or declaration must include:
- Inventor bibliographic information (see MPEP ยง 602.08(a))
- Name of the inventor or each joint inventor
- Signature of each inventor (with some exceptions, see MPEP ยง 602.08(b))
- Identification of the application to which it is directed (see MPEP ยง 602.08(c))
As stated in the MPEP, “The inventor’s oath or declaration must include certain inventor bibliographic information, name the inventor or each joint inventor and except as otherwise provided be signed by each inventor, and identify the application to which it is directed.”
To learn more:
What information is required for inventor’s citizenship in a patent application?
For patent applications, the inventor’s citizenship must be provided. According to MPEP 602.08(b), ‘The inventor’s citizenship must be specifically identified in the oath or declaration.’ This requirement applies to both utility and design patent applications. The MPEP further states:
‘It is not sufficient for oath or declaration to merely state that the inventor is a citizen of the ‘United States,’ but the particular state of which the inventor is a citizen must be specified.’
This means that for U.S. citizens, the specific state of citizenship should be mentioned. For non-U.S. citizens, the country of citizenship should be clearly stated.
To learn more:
If a patent application is missing essential parts, such as the specification, drawings, or claims, the USPTO will notify the applicant of the missing elements. According to MPEP 506:
‘Applicant will be notified of the incomplete application and the time period set for submitting the omitted parts.’
The applicant will then have an opportunity to submit the missing parts within the specified time period to complete the application.
For more information on incomplete application, visit: incomplete application.
For more information on missing parts, visit: missing parts.
For more information on patent application requirements, visit: patent application requirements.
The USPTO has specific requirements for signatures on documents, as outlined in 37 CFR 1.4(d). Key points include:
- Signatures must be personally inserted by the signer or comply with specific electronic signature standards.
- The person inserting a signature certifies that it is their own signature.
- A person submitting a document signed by another must have a reasonable basis to believe the signature is authentic.
The MPEP states: The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.
For more information on patent application requirements, visit: patent application requirements.
To obtain a filing date for a nonprovisional patent application filed under 37 CFR 1.53(b), the application must include:
- A specification containing a description as prescribed by 35 U.S.C. 112(a)
- At least one claim (for applications filed on or after December 13, 2013)
- Any drawings necessary under 35 U.S.C. 113 (first sentence)
As stated in the MPEP: Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor’s oath or declaration.
If any required items are missing, the applicant will be notified and given a time period to submit the missing elements. The filing date will be the date the missing items are received.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
For continuing applications filed on or after September 16, 2012, the following requirements apply:
- A copy of an oath or declaration or substitute statement from the prior nonprovisional application can be used, provided it complies with 37 CFR 1.63 or 37 CFR 1.64.
- The oath or declaration must comply with 35 U.S.C. 115 and the relevant CFR sections in effect for applications filed on or after September 16, 2012.
- It must include a statement that the application was made or authorized to be made by the person executing the oath or declaration.
As stated in the MPEP, “a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012.”
To learn more:
To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
A provisional patent application requires a cover sheet with specific identifying information. According to the MPEP:
“A cover sheet providing identifying information is required for a complete provisional application. In accordance with 37 CFR 1.51(c)(1) the cover sheet must state that it is for a provisional application, it must identify and give the residence of the inventor or inventors, and it must give a title of the invention.”
The cover sheet must include:
- Statement that it is for a provisional application
- Inventor(s) identification and residence
- Title of the invention
- Name and registration number of the attorney or agent (if applicable)
- Docket number (if applicable)
- Correspondence address
- Statement regarding federally sponsored research or development (if applicable)
- Name of the government agency and contract number (if developed under a government contract)
For more details on provisional application requirements, refer to MPEP ยง 201.04.
To learn more:
For nonprovisional applications filed on or after December 18, 2013, the filing date requirements have been simplified. The MPEP states: For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office.
This means that utility and plant patent applications no longer require at least one claim or any drawings to receive a filing date. However, design patent applications still require at least one claim and any required drawings to receive a filing date.
To learn more:
The requirement for an inventor’s citizenship in patent applications has changed:
- For applications filed on or after September 16, 2012: Citizenship is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.
- For nonprovisional applications filed before September 16, 2012: Citizenship was required under pre-AIA 35 U.S.C. 115.
As stated in the MPEP: “For applications filed on or after September 16, 2012, the citizenship of the inventor is no longer required by 35 U.S.C. 115 or 37 CFR 1.63.”
For older applications, if an inventor is not a citizen of any country, a statement to this effect is accepted as satisfying the statutory requirement.
To learn more:
The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
- For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.
The MPEP states:
For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.
This change reflects the America Invents Act’s modifications to U.S. patent law.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent application requirements, visit: patent application requirements.
The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:
- For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
- For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.
The MPEP states for post-AIA applications:
37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.
These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.
For more information on America Invents Act, visit: America Invents Act.
For more information on continuation application, visit: continuation application.
For more information on inventorship, visit: inventorship.
For more information on patent application requirements, visit: patent application requirements.
The inventorship of a divisional application must include at least one inventor named in the parent application, but it doesn’t have to be identical. The MPEP states:
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).
If the divisional application is filed with fewer inventors than the parent application, a statement may be filed requesting deletion of the names of the additional inventors. For applications filed on or after September 16, 2012, the statement must be filed with the divisional application and signed by a party set forth in 37 CFR 1.33(b).
To learn more:
Can the specification be omitted when filing a divisional or continuation application?
No, the specification cannot be omitted when filing a divisional or continuation application. However, the process is simplified. According to MPEP 201.06(c):
“A new specification (including the claims) may be submitted in a divisional application filed under 37 CFR 1.53(b). In such a case, the applicant must file a copy of the prior application as filed or a new specification.”
This means that while you must include a specification, you have two options:
- Submit a copy of the prior application’s specification
- Submit a new specification tailored to the divisional or continuation application
If you choose to submit a copy of the prior application, it’s important to ensure that it properly supports the claims in the new application. Any new matter introduced in a continuation application may result in a rejection under 35 U.S.C. 112(a).
Remember, the claims are considered part of the specification, so you must include claims with your application, whether you’re using the prior specification or submitting a new one.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on patent application requirements, visit: patent application requirements.
For more information on USPTO, visit: USPTO.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
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. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
For more information on declaration, visit: declaration.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on patent application requirements, visit: patent application requirements.
No, patent applicants are not required to conduct prior art searches before filing a patent application. This is clarified in the MPEP, which states:
An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984).
However, conducting a prior art search can be beneficial for understanding the state of the art and assessing the potential patentability of an invention.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior art search, visit: prior art search.