Patent Law FAQ

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The placement of the government license rights statement in a patent application depends on whether there are references to related applications:

• If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
• If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.

This placement is specified in 37 CFR 1.77(b)(1)-(3).

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

The placement of the government license rights statement in a patent application depends on whether there are references to related applications:

• If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
• If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.

This placement is specified in 37 CFR 1.77(b)(1)-(3).

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

The placement of the government license rights statement in a patent application depends on whether there are references to related applications:

• If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
• If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.

This placement is specified in 37 CFR 1.77(b)(1)-(3).

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The placement of the government license rights statement in a patent application depends on whether there are references to related applications:

• If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
• If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.

This placement is specified in 37 CFR 1.77(b)(1)-(3).

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)