Patent Law FAQ

What is the significance of the term ‘nonprovisional’ in patent applications?

The term ‘nonprovisional’ in patent applications is significant because it distinguishes these applications from provisional applications:

• Examination: Nonprovisional applications undergo substantive examination by the USPTO, while provisional applications do not.
• Patent Grant: Only nonprovisional applications can mature into granted patents.
• Duration: Nonprovisional applications have a standard 20-year term from the filing date, while provisional applications expire after 12 months.
• Content Requirements: Nonprovisional applications must include formal patent claims and other specific elements not required in provisional applications.

The MPEP 201.01 mentions nonprovisional applications in the context of original applications: ‘Original applications include all applications other than reissue applications. Original applications may be nonprovisional or provisional.’

For more information on nonprovisional application, visit: nonprovisional application.

For more information on patent examination, visit: patent examination.

For more information on patent grant, visit: patent grant.

For more information on provisional application, visit: provisional application.

Can I file a divisional-continuation application after my parent application has been patented?

No, you cannot file a divisional-continuation application after your parent application has been patented. According to MPEP 201.06(c):

“The divisional application must be filed before the patenting or abandonment of or termination of proceedings on the prior application.”

This means that the window for filing a divisional-continuation application closes when the parent application is either:

• Granted a patent
• Abandoned
• Proceedings are terminated

If you wish to pursue additional claims or inventions after your patent has been granted, you may need to consider other options, such as filing a reissue application or a new continuation-in-part application, depending on the specific circumstances and the nature of the new subject matter.

For more information on parent application, visit: parent application.

For more information on patent grant, visit: patent grant.

Yes, delayed benefit claims can be filed for design applications. The MPEP 211.04 provides specific information about this:

“Effective May 13, 2015, 37 CFR 1.78(d)(3) was amended to make the procedures under 37 CFR 1.78(e) to accept an unintentionally delayed benefit claim applicable to design applications where the benefit claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for certificate of correction after patent grant.”

This means that for design applications, it’s possible to file a petition for a delayed benefit claim even after the patent has been granted, along with a request for a certificate of correction.

To learn more:

• design applications
• delayed benefit claim
• certificate of correction
• patent grant

Yes, a continuation application can be filed after the parent application is granted or abandoned, but there are timing restrictions. The MPEP states:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

However, it’s important to note:

• For standard continuation applications under 37 CFR 1.53(b), they must be filed before the patenting, abandonment, or termination of proceedings on the earlier application.
• For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), they must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

Always consult with a patent attorney to ensure proper timing and procedures are followed.

For more information on continuation application, visit: continuation application.

For more information on CPA, visit: CPA.

For more information on patent grant, visit: patent grant.

If you file a foreign priority claim after paying the issue fee but before the patent grant:

• The claim will be placed in the file record
• There may be no review of the papers
• The published patent will not include the priority claim

To have the priority claim considered after publication, you will need to file:

1. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
2. For original applications under 35 U.S.C. 111(a) or 371, a petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55

MPEP 214.03 states: “When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim.”

What is the significance of the term ‘nonprovisional’ in patent applications?

The term ‘nonprovisional’ in patent applications is significant because it distinguishes these applications from provisional applications:

• Examination: Nonprovisional applications undergo substantive examination by the USPTO, while provisional applications do not.
• Patent Grant: Only nonprovisional applications can mature into granted patents.
• Duration: Nonprovisional applications have a standard 20-year term from the filing date, while provisional applications expire after 12 months.
• Content Requirements: Nonprovisional applications must include formal patent claims and other specific elements not required in provisional applications.

The MPEP 201.01 mentions nonprovisional applications in the context of original applications: ‘Original applications include all applications other than reissue applications. Original applications may be nonprovisional or provisional.’

For more information on nonprovisional application, visit: nonprovisional application.

For more information on patent examination, visit: patent examination.

For more information on patent grant, visit: patent grant.

For more information on provisional application, visit: provisional application.

Can I file a divisional-continuation application after my parent application has been patented?

No, you cannot file a divisional-continuation application after your parent application has been patented. According to MPEP 201.06(c):

“The divisional application must be filed before the patenting or abandonment of or termination of proceedings on the prior application.”

This means that the window for filing a divisional-continuation application closes when the parent application is either:

• Granted a patent
• Abandoned
• Proceedings are terminated

If you wish to pursue additional claims or inventions after your patent has been granted, you may need to consider other options, such as filing a reissue application or a new continuation-in-part application, depending on the specific circumstances and the nature of the new subject matter.

For more information on parent application, visit: parent application.

For more information on patent grant, visit: patent grant.

Yes, a continuation application can be filed after the parent application is granted or abandoned, but there are timing restrictions. The MPEP states:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

However, it’s important to note:

• For standard continuation applications under 37 CFR 1.53(b), they must be filed before the patenting, abandonment, or termination of proceedings on the earlier application.
• For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), they must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

Always consult with a patent attorney to ensure proper timing and procedures are followed.

For more information on continuation application, visit: continuation application.

For more information on CPA, visit: CPA.

For more information on patent grant, visit: patent grant.

If you file a foreign priority claim after paying the issue fee but before the patent grant:

• The claim will be placed in the file record
• There may be no review of the papers
• The published patent will not include the priority claim

To have the priority claim considered after publication, you will need to file:

1. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
2. For original applications under 35 U.S.C. 111(a) or 371, a petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55

MPEP 214.03 states: “When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim.”

What is the purpose of the Issue Notification in the patent application process?

The Issue Notification serves as an important communication in the patent application process. According to the MPEP 308, “The Issue Notification identifies the issue date of the patent number assigned to the application.” This notification is crucial because it:

• Informs the applicant of the official issue date of their patent
• Provides the assigned patent number
• Serves as confirmation that the patent will be granted
• Helps applicants plan for any post-issuance actions or maintenance fees

The Issue Notification is typically sent several weeks before the actual issue date, giving applicants time to prepare for the patent’s publication and enforcement.

For more information on issue date, visit: issue date.

For more information on patent grant, visit: patent grant.

When a patent is granted on an application filed by someone other than the inventor, it is issued to the real party in interest. This is stipulated in both 35 U.S.C. 118 and 37 CFR 1.46(e):

35 U.S.C. 118 states: If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.

37 CFR 1.46(e) further clarifies: If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81.

How does the USPTO handle requests for early delivery of patents?

The USPTO has a specific process for handling requests for early delivery of patents. According to MPEP 308:

“Ordinarily the patent grant is delivered to the correspondence address of record. However, a patentee may request in writing before the issue date that the patent grant be delivered to another address or to an assignment recordation branch of the USPTO for recordation of an assignment, provided a fee is paid for the service.”

This means that:

• Patentees can request early delivery of their patent grant
• The request must be made in writing before the issue date
• A fee is required for this service
• The patent can be delivered to an alternative address or to the assignment recordation branch

Early delivery requests are typically made when there’s an urgent need to record an assignment or to obtain the physical patent document for business purposes.

For more information on patent grant, visit: patent grant.

For more information on USPTO procedures, visit: USPTO procedures.

What is the purpose of the Issue Notification in the patent application process?

The Issue Notification serves as an important communication in the patent application process. According to the MPEP 308, “The Issue Notification identifies the issue date of the patent number assigned to the application.” This notification is crucial because it:

• Informs the applicant of the official issue date of their patent
• Provides the assigned patent number
• Serves as confirmation that the patent will be granted
• Helps applicants plan for any post-issuance actions or maintenance fees

The Issue Notification is typically sent several weeks before the actual issue date, giving applicants time to prepare for the patent’s publication and enforcement.

For more information on issue date, visit: issue date.

For more information on patent grant, visit: patent grant.

When a patent is granted on an application filed by someone other than the inventor, it is issued to the real party in interest. This is stipulated in both 35 U.S.C. 118 and 37 CFR 1.46(e):

35 U.S.C. 118 states: If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.

37 CFR 1.46(e) further clarifies: If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81.

How does the USPTO handle requests for early delivery of patents?

The USPTO has a specific process for handling requests for early delivery of patents. According to MPEP 308:

“Ordinarily the patent grant is delivered to the correspondence address of record. However, a patentee may request in writing before the issue date that the patent grant be delivered to another address or to an assignment recordation branch of the USPTO for recordation of an assignment, provided a fee is paid for the service.”

This means that:

• Patentees can request early delivery of their patent grant
• The request must be made in writing before the issue date
• A fee is required for this service
• The patent can be delivered to an alternative address or to the assignment recordation branch

Early delivery requests are typically made when there’s an urgent need to record an assignment or to obtain the physical patent document for business purposes.

For more information on patent grant, visit: patent grant.

For more information on USPTO procedures, visit: USPTO procedures.

What is the significance of the term ‘nonprovisional’ in patent applications?

The term ‘nonprovisional’ in patent applications is significant because it distinguishes these applications from provisional applications:

• Examination: Nonprovisional applications undergo substantive examination by the USPTO, while provisional applications do not.
• Patent Grant: Only nonprovisional applications can mature into granted patents.
• Duration: Nonprovisional applications have a standard 20-year term from the filing date, while provisional applications expire after 12 months.
• Content Requirements: Nonprovisional applications must include formal patent claims and other specific elements not required in provisional applications.

The MPEP 201.01 mentions nonprovisional applications in the context of original applications: ‘Original applications include all applications other than reissue applications. Original applications may be nonprovisional or provisional.’

For more information on nonprovisional application, visit: nonprovisional application.

For more information on patent examination, visit: patent examination.

For more information on patent grant, visit: patent grant.

For more information on provisional application, visit: provisional application.

What is the purpose of the Issue Notification in the patent application process?

The Issue Notification serves as an important communication in the patent application process. According to the MPEP 308, “The Issue Notification identifies the issue date of the patent number assigned to the application.” This notification is crucial because it:

• Informs the applicant of the official issue date of their patent
• Provides the assigned patent number
• Serves as confirmation that the patent will be granted
• Helps applicants plan for any post-issuance actions or maintenance fees

The Issue Notification is typically sent several weeks before the actual issue date, giving applicants time to prepare for the patent’s publication and enforcement.

For more information on issue date, visit: issue date.

For more information on patent grant, visit: patent grant.

If you file a foreign priority claim after paying the issue fee but before the patent grant:

• The claim will be placed in the file record
• There may be no review of the papers
• The published patent will not include the priority claim

To have the priority claim considered after publication, you will need to file:

1. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
2. For original applications under 35 U.S.C. 111(a) or 371, a petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55

MPEP 214.03 states: “When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim.”

After a patent is granted, the applicant has specific responsibilities regarding models, exhibits, or specimens:

• The applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of the patent.
• This responsibility does not apply if:
  • The model or exhibit substantially conforms to the requirements of 37 CFR 1.52 or 1.84.
  • The model or exhibit has been described by photographs that substantially conform to 37 CFR 1.84.
  • The model, exhibit, or specimen is perishable.

As stated in 37 CFR 1.94(b), Applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application. This ensures that the item is available if needed for future reference or legal proceedings.

To learn more:

• models
• exhibits
• specimens
• patent grant
• applicant responsibilities

When a patent is granted on an application filed by someone other than the inventor, it is issued to the real party in interest. This is stipulated in both 35 U.S.C. 118 and 37 CFR 1.46(e):

35 U.S.C. 118 states: If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.

37 CFR 1.46(e) further clarifies: If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81.

How does the USPTO handle requests for early delivery of patents?

The USPTO has a specific process for handling requests for early delivery of patents. According to MPEP 308:

“Ordinarily the patent grant is delivered to the correspondence address of record. However, a patentee may request in writing before the issue date that the patent grant be delivered to another address or to an assignment recordation branch of the USPTO for recordation of an assignment, provided a fee is paid for the service.”

This means that:

• Patentees can request early delivery of their patent grant
• The request must be made in writing before the issue date
• A fee is required for this service
• The patent can be delivered to an alternative address or to the assignment recordation branch

Early delivery requests are typically made when there’s an urgent need to record an assignment or to obtain the physical patent document for business purposes.

For more information on patent grant, visit: patent grant.

For more information on USPTO procedures, visit: USPTO procedures.

Can I file a divisional-continuation application after my parent application has been patented?

No, you cannot file a divisional-continuation application after your parent application has been patented. According to MPEP 201.06(c):

“The divisional application must be filed before the patenting or abandonment of or termination of proceedings on the prior application.”

This means that the window for filing a divisional-continuation application closes when the parent application is either:

• Granted a patent
• Abandoned
• Proceedings are terminated

If you wish to pursue additional claims or inventions after your patent has been granted, you may need to consider other options, such as filing a reissue application or a new continuation-in-part application, depending on the specific circumstances and the nature of the new subject matter.

For more information on parent application, visit: parent application.

For more information on patent grant, visit: patent grant.

Yes, delayed benefit claims can be filed for design applications. The MPEP 211.04 provides specific information about this:

“Effective May 13, 2015, 37 CFR 1.78(d)(3) was amended to make the procedures under 37 CFR 1.78(e) to accept an unintentionally delayed benefit claim applicable to design applications where the benefit claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for certificate of correction after patent grant.”

This means that for design applications, it’s possible to file a petition for a delayed benefit claim even after the patent has been granted, along with a request for a certificate of correction.

To learn more:

• design applications
• delayed benefit claim
• certificate of correction
• patent grant

Yes, a continuation application can be filed after the parent application is granted or abandoned, but there are timing restrictions. The MPEP states:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

However, it’s important to note:

• For standard continuation applications under 37 CFR 1.53(b), they must be filed before the patenting, abandonment, or termination of proceedings on the earlier application.
• For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), they must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

Always consult with a patent attorney to ensure proper timing and procedures are followed.

For more information on continuation application, visit: continuation application.

For more information on CPA, visit: CPA.

For more information on patent grant, visit: patent grant.

What is the significance of the term ‘nonprovisional’ in patent applications?

The term ‘nonprovisional’ in patent applications is significant because it distinguishes these applications from provisional applications:

• Examination: Nonprovisional applications undergo substantive examination by the USPTO, while provisional applications do not.
• Patent Grant: Only nonprovisional applications can mature into granted patents.
• Duration: Nonprovisional applications have a standard 20-year term from the filing date, while provisional applications expire after 12 months.
• Content Requirements: Nonprovisional applications must include formal patent claims and other specific elements not required in provisional applications.

The MPEP 201.01 mentions nonprovisional applications in the context of original applications: ‘Original applications include all applications other than reissue applications. Original applications may be nonprovisional or provisional.’

For more information on nonprovisional application, visit: nonprovisional application.

For more information on patent examination, visit: patent examination.

For more information on patent grant, visit: patent grant.

For more information on provisional application, visit: provisional application.

What is the purpose of the Issue Notification in the patent application process?

The Issue Notification serves as an important communication in the patent application process. According to the MPEP 308, “The Issue Notification identifies the issue date of the patent number assigned to the application.” This notification is crucial because it:

• Informs the applicant of the official issue date of their patent
• Provides the assigned patent number
• Serves as confirmation that the patent will be granted
• Helps applicants plan for any post-issuance actions or maintenance fees

The Issue Notification is typically sent several weeks before the actual issue date, giving applicants time to prepare for the patent’s publication and enforcement.

For more information on issue date, visit: issue date.

For more information on patent grant, visit: patent grant.

If you file a foreign priority claim after paying the issue fee but before the patent grant:

• The claim will be placed in the file record
• There may be no review of the papers
• The published patent will not include the priority claim

To have the priority claim considered after publication, you will need to file:

1. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
2. For original applications under 35 U.S.C. 111(a) or 371, a petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55

MPEP 214.03 states: “When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim.”

After a patent is granted, the applicant has specific responsibilities regarding models, exhibits, or specimens:

• The applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of the patent.
• This responsibility does not apply if:
  • The model or exhibit substantially conforms to the requirements of 37 CFR 1.52 or 1.84.
  • The model or exhibit has been described by photographs that substantially conform to 37 CFR 1.84.
  • The model, exhibit, or specimen is perishable.

As stated in 37 CFR 1.94(b), Applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application. This ensures that the item is available if needed for future reference or legal proceedings.

To learn more:

• models
• exhibits
• specimens
• patent grant
• applicant responsibilities

When a patent is granted on an application filed by someone other than the inventor, it is issued to the real party in interest. This is stipulated in both 35 U.S.C. 118 and 37 CFR 1.46(e):

35 U.S.C. 118 states: If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.

37 CFR 1.46(e) further clarifies: If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81.

How does the USPTO handle requests for early delivery of patents?

The USPTO has a specific process for handling requests for early delivery of patents. According to MPEP 308:

“Ordinarily the patent grant is delivered to the correspondence address of record. However, a patentee may request in writing before the issue date that the patent grant be delivered to another address or to an assignment recordation branch of the USPTO for recordation of an assignment, provided a fee is paid for the service.”

This means that:

• Patentees can request early delivery of their patent grant
• The request must be made in writing before the issue date
• A fee is required for this service
• The patent can be delivered to an alternative address or to the assignment recordation branch

Early delivery requests are typically made when there’s an urgent need to record an assignment or to obtain the physical patent document for business purposes.

For more information on patent grant, visit: patent grant.

For more information on USPTO procedures, visit: USPTO procedures.

Can I file a divisional-continuation application after my parent application has been patented?

No, you cannot file a divisional-continuation application after your parent application has been patented. According to MPEP 201.06(c):

“The divisional application must be filed before the patenting or abandonment of or termination of proceedings on the prior application.”

This means that the window for filing a divisional-continuation application closes when the parent application is either:

• Granted a patent
• Abandoned
• Proceedings are terminated

If you wish to pursue additional claims or inventions after your patent has been granted, you may need to consider other options, such as filing a reissue application or a new continuation-in-part application, depending on the specific circumstances and the nature of the new subject matter.

For more information on parent application, visit: parent application.

For more information on patent grant, visit: patent grant.

Yes, delayed benefit claims can be filed for design applications. The MPEP 211.04 provides specific information about this:

“Effective May 13, 2015, 37 CFR 1.78(d)(3) was amended to make the procedures under 37 CFR 1.78(e) to accept an unintentionally delayed benefit claim applicable to design applications where the benefit claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for certificate of correction after patent grant.”

This means that for design applications, it’s possible to file a petition for a delayed benefit claim even after the patent has been granted, along with a request for a certificate of correction.

To learn more:

• design applications
• delayed benefit claim
• certificate of correction
• patent grant

Yes, a continuation application can be filed after the parent application is granted or abandoned, but there are timing restrictions. The MPEP states:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

However, it’s important to note:

• For standard continuation applications under 37 CFR 1.53(b), they must be filed before the patenting, abandonment, or termination of proceedings on the earlier application.
• For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), they must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

Always consult with a patent attorney to ensure proper timing and procedures are followed.

For more information on continuation application, visit: continuation application.

For more information on CPA, visit: CPA.

For more information on patent grant, visit: patent grant.