Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
'MPEP 306-Assignment of Division (1)
The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:
- Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
- Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
- Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.
Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.
For more information on new assignment, visit: new assignment.
For more information on USPTO requirements, visit: USPTO requirements.
Topics:
‘MPEP 306-Assignment of Division
and Continuation-in-Part in Relation to Parent Application’
MPEP 300 – Ownership and Assignment
Patent Law
Patent Procedure
and Continuation-in-Part in Relation to Parent Application' (1)
The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:
- Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
- Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
- Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.
Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.
For more information on new assignment, visit: new assignment.
For more information on USPTO requirements, visit: USPTO requirements.
Topics:
‘MPEP 306-Assignment of Division
and Continuation-in-Part in Relation to Parent Application’
MPEP 300 – Ownership and Assignment
Patent Law
Patent Procedure
MPEP 2900 – International Design Applications (1)
The requirements for submitting a certified copy of a foreign priority document in an international design application are as follows:
- A certified copy of the foreign priority document is generally not required to be submitted to the USPTO.
- The International Bureau will normally handle the exchange of priority documents with the USPTO.
- If the priority document is not in the International Bureau’s Digital Access Service (DAS), the applicant may need to submit it directly.
According to MPEP 2920.05(d):
“In most cases, the applicant will not need to submit a certified copy of the foreign priority document to the Office in an international design application designating the United States.”
However, it’s important to note that if the International Bureau is unable to obtain a copy of the priority document, the applicant may be required to provide it directly to the USPTO.
To learn more:
MPEP 2920.05(D) – Foreign Priority (1)
The requirements for submitting a certified copy of a foreign priority document in an international design application are as follows:
- A certified copy of the foreign priority document is generally not required to be submitted to the USPTO.
- The International Bureau will normally handle the exchange of priority documents with the USPTO.
- If the priority document is not in the International Bureau’s Digital Access Service (DAS), the applicant may need to submit it directly.
According to MPEP 2920.05(d):
“In most cases, the applicant will not need to submit a certified copy of the foreign priority document to the Office in an international design application designating the United States.”
However, it’s important to note that if the International Bureau is unable to obtain a copy of the priority document, the applicant may be required to provide it directly to the USPTO.
To learn more:
MPEP 300 – Ownership and Assignment (1)
The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:
- Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
- Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
- Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.
Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.
For more information on new assignment, visit: new assignment.
For more information on USPTO requirements, visit: USPTO requirements.
Topics:
‘MPEP 306-Assignment of Division
and Continuation-in-Part in Relation to Parent Application’
MPEP 300 – Ownership and Assignment
Patent Law
Patent Procedure
MPEP 500 – Receipt and Handling of Mail and Papers (2)
Can small entity status be changed during the patent process?
Yes, small entity status can be changed during the patent process. The MPEP 509.03 provides guidance on this: “Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.” This means that:
- You can change from small entity to large entity at any time by simply paying the full fee.
- If you lose small entity status, you must notify the USPTO before or with the next fee payment.
- Changing from large entity to small entity requires a new certification of entitlement to small entity status.
It’s important to monitor your status throughout the patent process and update the USPTO promptly if changes occur to avoid potential issues.
To learn more:
If there are variations in your signature across different patent documents, you should:
- Try to use a consistent signature for all patent correspondence to avoid confusion.
- Be prepared for the USPTO to require ratification or confirmation of the signature if there are significant variations.
- If asked to ratify, state that you personally signed the previously submitted document and, if needed, submit a compliant format of the signature.
According to the MPEP: “For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided.”
If the USPTO requires ratification, they may ask you to submit a statement or a duplicate document with a compliant signature. This helps ensure the authenticity of signatures and clarity of the record.
To learn more:
Patent Law (9)
Correcting or adding drawings after a patent application is filed is addressed in MPEP 608.02, subsection II. The key points are:
- Drawings can be corrected, revised, or added if no new matter is introduced.
- The applicant must submit a proposed drawing correction in reply to the Office action.
- For non-provisional applications, replacement sheets of corrected drawings must be submitted.
- For provisional applications, corrected drawings may be submitted as an amendment to the application.
The MPEP states: ‘Where a drawing is to be amended, applicant must submit a replacement sheet of drawings which complies with 37 CFR 1.84 and includes all of the figures appearing on the original version of the sheet, even if only one figure is being amended.’ This ensures that the entire drawing set remains consistent and complete.
To learn more:
Topics:
Patent Law
Patent Procedure
Submitting informal drawings in a patent application can have several consequences:
- The application may be considered incomplete, potentially affecting the filing date.
- The examiner may object to the drawings and require formal drawings to be submitted.
- It may delay the examination process.
- In some cases, it could result in a loss of patent rights if not corrected in time.
MPEP 608.02(b) states: ‘The Office no longer considers drawings as formal or informal; drawings are either acceptable or not acceptable. Drawings will be accepted by the Office of Patent Application Processing (OPAP) if the drawings meet the requirements of 37 CFR 1.84(a), (b), (c), and (e) and are capable of reproduction.’
It’s important to note that while the USPTO may accept informal drawings initially, they may still be objected to during examination, requiring corrections to be made.
To learn more:
To learn more:
Topics:
Patent Law
Patent Procedure
Can small entity status be changed during the patent process?
Yes, small entity status can be changed during the patent process. The MPEP 509.03 provides guidance on this: “Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.” This means that:
- You can change from small entity to large entity at any time by simply paying the full fee.
- If you lose small entity status, you must notify the USPTO before or with the next fee payment.
- Changing from large entity to small entity requires a new certification of entitlement to small entity status.
It’s important to monitor your status throughout the patent process and update the USPTO promptly if changes occur to avoid potential issues.
To learn more:
The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:
- Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
- Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
- Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.
Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.
For more information on new assignment, visit: new assignment.
For more information on USPTO requirements, visit: USPTO requirements.
Topics:
‘MPEP 306-Assignment of Division
and Continuation-in-Part in Relation to Parent Application’
MPEP 300 – Ownership and Assignment
Patent Law
Patent Procedure
The inventor’s citizenship is an important piece of information in a patent application for several reasons:
- Compliance with USPTO requirements
- Determination of inventorship rights
- Application of international treaties
- Export control considerations
MPEP 602.08(a) states: ‘Citizenship is required to support an oath or declaration under 37 CFR 1.63 or to determine whether the application is subject to a secrecy order under 37 CFR 5.1(b).’
The citizenship information helps the USPTO ensure compliance with various legal requirements and international agreements, such as the Paris Convention for the Protection of Industrial Property.
To learn more:
Topics:
Patent Law
Patent Procedure
The requirements for submitting a certified copy of a foreign priority document in an international design application are as follows:
- A certified copy of the foreign priority document is generally not required to be submitted to the USPTO.
- The International Bureau will normally handle the exchange of priority documents with the USPTO.
- If the priority document is not in the International Bureau’s Digital Access Service (DAS), the applicant may need to submit it directly.
According to MPEP 2920.05(d):
“In most cases, the applicant will not need to submit a certified copy of the foreign priority document to the Office in an international design application designating the United States.”
However, it’s important to note that if the International Bureau is unable to obtain a copy of the priority document, the applicant may be required to provide it directly to the USPTO.
To learn more:
According to 37 CFR 1.72(b), the requirements for an abstract in a patent application are:
- It must commence on a separate sheet, preferably following the claims.
- It should be under the heading ‘Abstract’ or ‘Abstract of the Disclosure’.
- The sheet presenting the abstract should not include other parts of the application.
- It should be concise, preferably not exceeding 150 words in length.
- It should enable quick determination of the nature and gist of the technical disclosure.
The USPTO states: The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
To learn more:
Topics:
Patent Law
Patent Procedure
If a patent application is missing an abstract, the following actions will be taken:
- For applications filed under 35 U.S.C. 111(a), the Office of Patent Application Processing (OPAP) will review for compliance and require an abstract if one has not been filed.
- For all other applications lacking an abstract, the examiner will require the submission of an abstract in the first Office action.
The MPEP states: The Office of Patent Application Processing (OPAP) will review all applications filed under 35 U.S.C. 111(a) for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other applications which lack an abstract, the examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification.
To learn more:
Topics:
Patent Law
Patent Procedure
If there are variations in your signature across different patent documents, you should:
- Try to use a consistent signature for all patent correspondence to avoid confusion.
- Be prepared for the USPTO to require ratification or confirmation of the signature if there are significant variations.
- If asked to ratify, state that you personally signed the previously submitted document and, if needed, submit a compliant format of the signature.
According to the MPEP: “For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided.”
If the USPTO requires ratification, they may ask you to submit a statement or a duplicate document with a compliant signature. This helps ensure the authenticity of signatures and clarity of the record.
To learn more:
Patent Procedure (9)
Correcting or adding drawings after a patent application is filed is addressed in MPEP 608.02, subsection II. The key points are:
- Drawings can be corrected, revised, or added if no new matter is introduced.
- The applicant must submit a proposed drawing correction in reply to the Office action.
- For non-provisional applications, replacement sheets of corrected drawings must be submitted.
- For provisional applications, corrected drawings may be submitted as an amendment to the application.
The MPEP states: ‘Where a drawing is to be amended, applicant must submit a replacement sheet of drawings which complies with 37 CFR 1.84 and includes all of the figures appearing on the original version of the sheet, even if only one figure is being amended.’ This ensures that the entire drawing set remains consistent and complete.
To learn more:
Topics:
Patent Law
Patent Procedure
Submitting informal drawings in a patent application can have several consequences:
- The application may be considered incomplete, potentially affecting the filing date.
- The examiner may object to the drawings and require formal drawings to be submitted.
- It may delay the examination process.
- In some cases, it could result in a loss of patent rights if not corrected in time.
MPEP 608.02(b) states: ‘The Office no longer considers drawings as formal or informal; drawings are either acceptable or not acceptable. Drawings will be accepted by the Office of Patent Application Processing (OPAP) if the drawings meet the requirements of 37 CFR 1.84(a), (b), (c), and (e) and are capable of reproduction.’
It’s important to note that while the USPTO may accept informal drawings initially, they may still be objected to during examination, requiring corrections to be made.
To learn more:
To learn more:
Topics:
Patent Law
Patent Procedure
Can small entity status be changed during the patent process?
Yes, small entity status can be changed during the patent process. The MPEP 509.03 provides guidance on this: “Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.” This means that:
- You can change from small entity to large entity at any time by simply paying the full fee.
- If you lose small entity status, you must notify the USPTO before or with the next fee payment.
- Changing from large entity to small entity requires a new certification of entitlement to small entity status.
It’s important to monitor your status throughout the patent process and update the USPTO promptly if changes occur to avoid potential issues.
To learn more:
The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:
- Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
- Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
- Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.
Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.
For more information on new assignment, visit: new assignment.
For more information on USPTO requirements, visit: USPTO requirements.
Topics:
‘MPEP 306-Assignment of Division
and Continuation-in-Part in Relation to Parent Application’
MPEP 300 – Ownership and Assignment
Patent Law
Patent Procedure
The inventor’s citizenship is an important piece of information in a patent application for several reasons:
- Compliance with USPTO requirements
- Determination of inventorship rights
- Application of international treaties
- Export control considerations
MPEP 602.08(a) states: ‘Citizenship is required to support an oath or declaration under 37 CFR 1.63 or to determine whether the application is subject to a secrecy order under 37 CFR 5.1(b).’
The citizenship information helps the USPTO ensure compliance with various legal requirements and international agreements, such as the Paris Convention for the Protection of Industrial Property.
To learn more:
Topics:
Patent Law
Patent Procedure
The requirements for submitting a certified copy of a foreign priority document in an international design application are as follows:
- A certified copy of the foreign priority document is generally not required to be submitted to the USPTO.
- The International Bureau will normally handle the exchange of priority documents with the USPTO.
- If the priority document is not in the International Bureau’s Digital Access Service (DAS), the applicant may need to submit it directly.
According to MPEP 2920.05(d):
“In most cases, the applicant will not need to submit a certified copy of the foreign priority document to the Office in an international design application designating the United States.”
However, it’s important to note that if the International Bureau is unable to obtain a copy of the priority document, the applicant may be required to provide it directly to the USPTO.
To learn more:
According to 37 CFR 1.72(b), the requirements for an abstract in a patent application are:
- It must commence on a separate sheet, preferably following the claims.
- It should be under the heading ‘Abstract’ or ‘Abstract of the Disclosure’.
- The sheet presenting the abstract should not include other parts of the application.
- It should be concise, preferably not exceeding 150 words in length.
- It should enable quick determination of the nature and gist of the technical disclosure.
The USPTO states: The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
To learn more:
Topics:
Patent Law
Patent Procedure
If a patent application is missing an abstract, the following actions will be taken:
- For applications filed under 35 U.S.C. 111(a), the Office of Patent Application Processing (OPAP) will review for compliance and require an abstract if one has not been filed.
- For all other applications lacking an abstract, the examiner will require the submission of an abstract in the first Office action.
The MPEP states: The Office of Patent Application Processing (OPAP) will review all applications filed under 35 U.S.C. 111(a) for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other applications which lack an abstract, the examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification.
To learn more:
Topics:
Patent Law
Patent Procedure
If there are variations in your signature across different patent documents, you should:
- Try to use a consistent signature for all patent correspondence to avoid confusion.
- Be prepared for the USPTO to require ratification or confirmation of the signature if there are significant variations.
- If asked to ratify, state that you personally signed the previously submitted document and, if needed, submit a compliant format of the signature.
According to the MPEP: “For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided.”
If the USPTO requires ratification, they may ask you to submit a statement or a duplicate document with a compliant signature. This helps ensure the authenticity of signatures and clarity of the record.
To learn more: