Patent Law FAQ

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.

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.

The USPTO may require earlier submission of priority documents in certain circumstances. According to 37 CFR 1.55(g)(2), these circumstances include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

In these cases, the applicant may be required to submit the priority claim and certified copy of the foreign application earlier than the general deadline of the patent grant date.

To learn more:

• priority documents
• early submission
• USPTO requirements
• patent examination

The USPTO may require earlier filing of priority claims and certified copies in certain situations. According to 37 CFR 1.55(g)(2), these situations include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

The MPEP explains that these requirements allow the USPTO to address priority issues promptly when they are relevant to ongoing proceedings or examination.

To learn more:

• priority claim timing
• certified copy filing
• USPTO requirements
• interference proceedings

While MPEP 203.06 mentions ‘essential parts’ without specifying them, other sections of the MPEP provide details on what constitutes a complete patent application. The essential parts typically include:

• Specification (including a description of the invention)
• At least one claim
• Drawings (when necessary to understand the invention)
• Filing fees
• Inventor’s oath or declaration

The specific requirements may vary depending on the type of patent application (e.g., utility, design, or plant patent). It’s crucial to consult the relevant MPEP sections, such as MPEP 601, for detailed information on application requirements.

To learn more:

• essential parts
• patent application
• USPTO requirements
• complete application

The English translation of a non-English assignment document must be signed by the individual who performed the translation. As stated in MPEP 302.02:

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

This requirement ensures the accuracy and authenticity of the translation. It’s important to note that the translator’s signature is required, not necessarily the signature of the parties involved in the assignment.

To learn more:

• patent assignment
• document translation
• translator signature
• USPTO requirements

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.

A cover sheet is a crucial component in the patent document recording process. It provides essential information about the document being recorded and the patents or applications it relates to.

The requirement for a cover sheet is specified in 37 CFR 3.31, which states the necessary contents of a cover sheet. As mentioned in MPEP 315, a completed cover sheet is one of the required items when recording a document with additional patents or applications: “a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)”

For more detailed information on cover sheets, refer to MPEP § 302.07.

For more information on cover sheet, visit: cover sheet.

For more information on document submission, visit: document submission.

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

An assignment cover sheet must include specific information to be accepted by the USPTO. According to MPEP 302.07, the cover sheet must contain:

• The name of the party conveying the interest
• The name and address of the party receiving the interest
• A description of the interest conveyed or transaction to be recorded
• Identification of the interests involved (e.g., patent number, application number)
• The name and address of the party to whom correspondence concerning the request to record the document should be mailed
• The date the document was executed
• The signature of the party submitting the document

It’s crucial to provide all required information accurately to ensure the assignment is properly recorded.

To learn more:

• assignment cover sheet
• required information
• USPTO requirements

If an assignment cover sheet is not submitted with the assignment document, the USPTO will not record the assignment. According to MPEP 302.07, “The Office will not accept an assignment document that is not accompanied by a cover sheet.” This means that the assignment will not be officially recognized by the USPTO, which could affect the ownership rights of the patent or application.

To learn more:

• assignment cover sheet
• USPTO requirements
• patent ownership

According to MPEP 302.02, non-English assignment documents can only be accepted and recorded by the USPTO if they are accompanied by an English translation. The MPEP states:

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

This means that inventors, assignees, or their representatives must provide a certified English translation along with the original non-English document for it to be officially recorded.

To learn more:

• patent assignment
• non-English documents
• USPTO requirements
• translation
• patent recording

What are the requirements for faxed assignment documents to be recorded at the USPTO?

For faxed assignment documents to be recorded at the USPTO, they must meet the following requirements:

• The document must be legible and capable of being reproduced in legible form.
• The fax must include a cover sheet with the sender’s name, address, and telephone number.
• Payment of the recording fee must be included or authorized.
• The fax should be sent to the specific fax number designated for assignment submissions.

As stated in MPEP 302.09: “The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.” This means that the fax transmission must be complete and received by the USPTO to be considered officially submitted.

To learn more:

• fax submission
• assignment documents
• USPTO requirements
• recording fee
• legibility

For paper or facsimile submissions of patent assignment documents to the USPTO, the following requirements apply:

• Either a copy of the original document or an extract of the original document must be submitted
• Only one side of each page may be used
• Paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4)
• A 2.5 cm (one-inch) margin must be present on all sides
• The paper should be flexible, strong white, non-shiny, and durable

As stated in 37 CFR 3.24(b): For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used.

To learn more:

• paper submission
• assignment documents
• USPTO requirements
• document format

For electronic submissions of assignment documents, the USPTO requires:

• Either a copy of the original document or an extract of the original document
• Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format
• When printed to paper size of 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible
• A 2.5 cm (one-inch) margin must be present on all sides

As stated in 37 CFR 3.24(a): All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director.

To learn more:

• electronic submission
• assignment documents
• TIFF
• document format
• USPTO requirements

No, you cannot use both sides of the paper when submitting assignment documents to the USPTO. For paper or facsimile submissions, only one side of each page may be used.

As stated in 37 CFR 3.24(b): Only one side of each page may be used.

This requirement ensures that all information is clearly visible and can be properly scanned and recorded by the USPTO. Using both sides of the paper could result in missed information or difficulties in processing your document.

To learn more:

• paper submission
• assignment documents
• USPTO requirements
• document format

No, you cannot submit multiple assignment documents with a single cover sheet. MPEP 302.07 clearly states: “A patent cover sheet must identify only one patent, and a separate patent cover sheet must be submitted for each patent as to which the assignment document is to be recorded.”

This requirement ensures that each assignment is properly documented and linked to the correct patent or application. If you have multiple assignments to record, you must prepare and submit a separate cover sheet for each one.

To learn more:

• assignment cover sheet
• multiple assignments
• USPTO requirements

A cover sheet is a crucial component in the patent document recording process. It provides essential information about the document being recorded and the patents or applications it relates to.

The requirement for a cover sheet is specified in 37 CFR 3.31, which states the necessary contents of a cover sheet. As mentioned in MPEP 315, a completed cover sheet is one of the required items when recording a document with additional patents or applications: “a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)”

For more detailed information on cover sheets, refer to MPEP § 302.07.

For more information on cover sheet, visit: cover sheet.

For more information on document submission, visit: document submission.

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

What documents are required for an assignee to revoke power of attorney in a patent application?

To revoke power of attorney in a patent application, an assignee must submit specific documents to the USPTO. According to MPEP 402.07, the required documents are:

• Statement under 37 CFR 3.73(c): This establishes the assignee’s ownership.
• Revocation of the existing power of attorney
• New power of attorney from the assignee

The MPEP states:

“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner. The assignee must become of record as provided in 37 CFR 3.71. After the assignee becomes of record, the assignee is permitted to revoke the power of attorney of the applicant under the provisions of 37 CFR 1.36(a).”

It’s crucial to ensure all documents are properly executed and filed with the USPTO to effectively change the power of attorney.

To learn more:

• power of attorney
• assignee documents
• USPTO requirements
• patent application

S-signatures, or electronic signatures, are accepted by the USPTO for patent applications. The requirements for S-signatures include:

• The signature must be between forward slash marks (//).
• The signer’s name must be provided in printed or typed form preferably immediately below or adjacent to the S-signature.
• The S-signature may be any combination of letters, numbers, spaces, and punctuation marks.

The MPEP 402.03 states: An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./).

It’s important to note that the S-signature must be inserted by the person signing the document, not by someone else on their behalf.

To learn more:

• S-signature
• electronic signature
• patent application
• USPTO requirements

Improper signatures on patent documents can have serious consequences:

• The document may be considered unsigned and therefore ineffective.
• It could lead to delays in the patent application process.
• In some cases, it might result in the loss of rights or benefits.
• The USPTO may require a new submission with proper signatures.

MPEP 402.03 states: ‘Signatures on any paper filed in the Office relating to patents must be permanent. The Office will accept and consider electronically submitted papers bearing S-signatures or handwritten signatures.’

To avoid these issues, ensure all signatures meet USPTO requirements and are made by authorized individuals.

To learn more:

• improper signatures
• patent documents
• USPTO requirements
• signature consequences

No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:

‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’

This is supported by several court cases cited in the MPEP, including:

• Nordberg, Inc. v. Telsmith, Inc.
• FMC Corp. v. Hennessy Indus., Inc.
• American Hoist & Derrick Co. v. Sowa & Sons, Inc.

The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.

The USPTO accepts handwritten signatures in patent applications, but they must meet specific requirements:

• The signature must be personally applied by the signer.
• It can be in permanent dark ink or its equivalent.
• The entire signature must be contained within the signature area of the document.

According to MPEP 402.03: A handwritten signature must be personally applied by the signer. See 37 CFR 1.4(d)(1).

It’s important to note that while handwritten signatures are accepted, the USPTO encourages electronic filing and signatures for efficiency and accuracy in processing applications.

To learn more:

• handwritten signature
• patent application
• USPTO requirements

No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:

‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’

This is supported by several court cases cited in the MPEP, including:

• Nordberg, Inc. v. Telsmith, Inc.
• FMC Corp. v. Hennessy Indus., Inc.
• American Hoist & Derrick Co. v. Sowa & Sons, Inc.

The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.

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:

• Signature Variations
• Patent Correspondence
• Ratification
• Signature Consistency
• USPTO Requirements

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:

• small entity status
• patent process
• status change
• USPTO requirements

The English translation of a non-English assignment document must be signed by the individual who performed the translation. As stated in MPEP 302.02:

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

This requirement ensures the accuracy and authenticity of the translation. It’s important to note that the translator’s signature is required, not necessarily the signature of the parties involved in the assignment.

To learn more:

• patent assignment
• document translation
• translator signature
• USPTO requirements

The USPTO may require earlier submission of priority documents in certain circumstances. According to 37 CFR 1.55(g)(2), these circumstances include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

In these cases, the applicant may be required to submit the priority claim and certified copy of the foreign application earlier than the general deadline of the patent grant date.

To learn more:

• priority documents
• early submission
• USPTO requirements
• patent examination

The USPTO may require earlier filing of priority claims and certified copies in certain situations. According to 37 CFR 1.55(g)(2), these situations include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

The MPEP explains that these requirements allow the USPTO to address priority issues promptly when they are relevant to ongoing proceedings or examination.

To learn more:

• priority claim timing
• certified copy filing
• USPTO requirements
• interference proceedings

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.

Models or exhibits are generally not required in patent applications unless specific conditions are met. According to MPEP 608.03, models or exhibits are only admitted as part of an application or patent if:

• They substantially conform to the requirements of 37 CFR 1.52 or 1.84
• They are specifically required by the Office
• They are filed with a petition under 37 CFR 1.91(a)(3)

The MPEP states: With the exception of cases involving perpetual motion, a model is not ordinarily required by the Office to demonstrate the operability of a device. However, if operability is questioned, the applicant must establish it to the examiner’s satisfaction.

To learn more:

• models
• exhibits
• patent application
• operability
• USPTO requirements

Annotated sheets are required for patent drawing changes in specific circumstances. According to MPEP 608.02(v), annotated sheets are necessary “When changes are to be made in the drawing itself, other than mere changes in reference characters, designations of figures, or inking over lines pale and rough.” However, the MPEP also notes that “Ordinarily, broken lines may be changed to full without a sketch.” This means that substantial changes to the drawing content require annotated sheets, while minor alterations may not.

To learn more:

• patent drawings
• annotated sheets
• drawing changes
• USPTO requirements

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:

• Signature Variations
• Patent Correspondence
• Ratification
• Signature Consistency
• USPTO Requirements

The key factors for acceptable patent drawings are readability and reproducibility. MPEP 608.02(i) states that “Drawings that do not comply with all of the form requirements of 37 CFR 1.84 may be acceptable for the purposes of publication and examination if the drawings are readable and reproducible for publication purposes.” This means that even if drawings don’t meet all formal requirements, they may still be accepted if they clearly convey the invention and can be properly reproduced in published documents. However, applicants should still aim to comply with 37 CFR 1.84 to ensure the best possible representation of their invention.

To learn more:

• patent drawings
• USPTO requirements
• drawing acceptability

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:

• inventor citizenship
• patent application
• USPTO requirements
• international patent law

A cover sheet is a crucial component in the patent document recording process. It provides essential information about the document being recorded and the patents or applications it relates to.

The requirement for a cover sheet is specified in 37 CFR 3.31, which states the necessary contents of a cover sheet. As mentioned in MPEP 315, a completed cover sheet is one of the required items when recording a document with additional patents or applications: “a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)”

For more detailed information on cover sheets, refer to MPEP § 302.07.

For more information on cover sheet, visit: cover sheet.

For more information on document submission, visit: document submission.

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

A substitute specification is a rewritten version of the entire specification or a part of it in a patent application. It may be required by the USPTO or voluntarily submitted by the applicant under certain conditions.

According to 37 CFR 1.125(a):

If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten.

This provision allows the USPTO to request a substitute specification when necessary for clarity and ease of examination.

To learn more:

• substitute specification
• patent application
• USPTO requirements
• rewritten specification

An assignment cover sheet must include specific information to be accepted by the USPTO. According to MPEP 302.07, the cover sheet must contain:

• The name of the party conveying the interest
• The name and address of the party receiving the interest
• A description of the interest conveyed or transaction to be recorded
• Identification of the interests involved (e.g., patent number, application number)
• The name and address of the party to whom correspondence concerning the request to record the document should be mailed
• The date the document was executed
• The signature of the party submitting the document

It’s crucial to provide all required information accurately to ensure the assignment is properly recorded.

To learn more:

• assignment cover sheet
• required information
• USPTO requirements

For foreign inventors in a U.S. patent application, the following information is required:

• The inventor’s full name
• Residence (city and either state or foreign country)
• Mailing address
• Citizenship

According to MPEP 602.08(a): ‘If the residence is not in the United States, the residence (city and country) and mailing address must be provided.’ It’s important to note that the mailing address is particularly crucial for foreign inventors to ensure proper communication with the USPTO.

To learn more:

• foreign inventors
• patent application
• inventor information
• USPTO requirements

If patent drawings do not comply with the requirements set forth in MPEP 608.02(d), the following process occurs:

1. The examiner will require additional illustration
2. A notice will be sent to the applicant
3. The applicant will have at least two months from the date of the notice to submit corrected drawings
4. Corrections must comply with 37 CFR 1.81(d)

According to the MPEP: Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. This process ensures that all necessary details are properly illustrated before the application can proceed.

To learn more:

• patent drawings
• drawing corrections
• noncompliant drawings
• USPTO requirements

If an Information Disclosure Statement (IDS) doesn’t comply with USPTO requirements, it will be placed in the file but not considered by the Office. According to MPEP 609.05(a):

Pursuant to 37 CFR 1.97(i), submitted information, filed before the grant of a patent, which does not comply with 37 CFR 1.97 and 37 CFR 1.98 will be placed in the file, but will not be considered by the Office.

This means that while the IDS will be part of the application file, the examiner won’t review or consider the information it contains when examining the patent application.

To learn more:

• IDS
• Information Disclosure Statement
• Patent Application
• USPTO Requirements

If an assignment cover sheet is not submitted with the assignment document, the USPTO will not record the assignment. According to MPEP 302.07, “The Office will not accept an assignment document that is not accompanied by a cover sheet.” This means that the assignment will not be officially recognized by the USPTO, which could affect the ownership rights of the patent or application.

To learn more:

• assignment cover sheet
• USPTO requirements
• patent ownership

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:

• missing patent abstract
• patent application process
• USPTO requirements
• Office action

What documents are required for an assignee to revoke power of attorney in a patent application?

To revoke power of attorney in a patent application, an assignee must submit specific documents to the USPTO. According to MPEP 402.07, the required documents are:

• Statement under 37 CFR 3.73(c): This establishes the assignee’s ownership.
• Revocation of the existing power of attorney
• New power of attorney from the assignee

The MPEP states:

“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner. The assignee must become of record as provided in 37 CFR 3.71. After the assignee becomes of record, the assignee is permitted to revoke the power of attorney of the applicant under the provisions of 37 CFR 1.36(a).”

It’s crucial to ensure all documents are properly executed and filed with the USPTO to effectively change the power of attorney.

To learn more:

• power of attorney
• assignee documents
• USPTO requirements
• patent application

What are the specific requirements for drawings in design patent applications?

Design patent applications have unique drawing requirements due to their focus on the ornamental design of an article. According to MPEP 608.02(a), the following specific requirements apply:

• Multiple views: The drawings must contain a sufficient number of views to completely disclose the appearance of the design.
• Surface shading: This is often necessary to show the contours and character of the design.
• Solid black surface shading: This is not permitted, except when used to represent the color black or color contrast.
• Broken lines: These may be used to show environmental structure but form no part of the claimed design.
• Color drawings: These are permitted upon filing a petition explaining why color drawings are necessary.

The MPEP states, “Lack of good drawings in a design patent application may result in a refusal to issue the application until suitable drawings are submitted.” Therefore, it’s crucial to submit high-quality, compliant drawings from the outset to avoid delays in the examination process.

To learn more:

• design patent drawings
• USPTO requirements
• surface shading
• broken lines

When submitting models or exhibits that are required by the Office or filed with a petition, applicants must include photographs that meet specific criteria. According to MPEP 608.03:

Models or exhibits that are required by the Office or filed with a petition under 37 CFR 1.91(a)(3) must be accompanied by photographs that (A) show multiple views of the material features of the model or exhibit, and (B) substantially conform to the requirements of 37 CFR 1.84.

The MPEP further clarifies that material features are those which represent the portion(s) of the model or exhibit forming the basis for which it has been submitted. For video or DVD submissions, applicants must provide photographs of what is depicted in the video (e.g., a still image or single frame), not just a photograph of the media itself.

To learn more:

• patent photographs
• model documentation
• exhibit documentation
• USPTO requirements

S-signatures, or electronic signatures, are accepted by the USPTO for patent applications. The requirements for S-signatures include:

• The signature must be between forward slash marks (//).
• The signer’s name must be provided in printed or typed form preferably immediately below or adjacent to the S-signature.
• The S-signature may be any combination of letters, numbers, spaces, and punctuation marks.

The MPEP 402.03 states: An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./).

It’s important to note that the S-signature must be inserted by the person signing the document, not by someone else on their behalf.

To learn more:

• S-signature
• electronic signature
• patent application
• USPTO requirements

According to MPEP 302.02, non-English assignment documents can only be accepted and recorded by the USPTO if they are accompanied by an English translation. The MPEP states:

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

This means that inventors, assignees, or their representatives must provide a certified English translation along with the original non-English document for it to be officially recorded.

To learn more:

• patent assignment
• non-English documents
• USPTO requirements
• translation
• patent recording

The U.S. Patent and Trademark Office (USPTO) allows the inclusion of copyright or mask work notices in design or utility patent applications under specific conditions:

• The notice must be placed adjacent to the copyrighted or mask work material.
• The content of the notice must be limited to elements required by law.
• A specific authorization must be included at the beginning of the specification.
• If included in drawings, the notice must comply with 37 CFR 1.84(s).

As stated in MPEP 608.01(w): The U.S. Patent and Trademark Office will permit the inclusion of a copyright or mask work notice in a design or utility patent application, and thereby any patent issuing therefrom, which discloses material on which copyright or mask work protection has previously been established, under the following conditions…

To learn more:

• Copyright notice
• Mask work notice
• Patent application
• USPTO requirements

What are the requirements for faxed assignment documents to be recorded at the USPTO?

For faxed assignment documents to be recorded at the USPTO, they must meet the following requirements:

• The document must be legible and capable of being reproduced in legible form.
• The fax must include a cover sheet with the sender’s name, address, and telephone number.
• Payment of the recording fee must be included or authorized.
• The fax should be sent to the specific fax number designated for assignment submissions.

As stated in MPEP 302.09: “The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.” This means that the fax transmission must be complete and received by the USPTO to be considered officially submitted.

To learn more:

• fax submission
• assignment documents
• USPTO requirements
• recording fee
• legibility

What are the requirements for drawings in color?

Color drawings are not ordinarily permitted in utility and design patent applications. However, the USPTO will accept color drawings in utility and design patent applications if the following conditions are met:

• The fee set forth in 37 CFR 1.17(h) is paid;
• The specification contains the following language as the first paragraph of the brief description of the drawings: ‘The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.’
• Color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent.

As stated in MPEP 608.02(b): ‘If color drawings are filed with the original application, it is not necessary to file a petition with the filing of the application. However, a petition and fee are required if color drawings are submitted after the original application papers are filed.’

To learn more:

• color drawings
• patent application
• USPTO requirements

What are the requirements for corrected or substitute drawings in patent applications?

When submitting corrected or substitute drawings in patent applications, applicants must adhere to specific requirements set by the USPTO:

• Corrected or substitute drawings must be labeled as ‘Replacement Sheet’ in the top margin.
• Any changes to the drawings must be explained in either the drawing amendment or remarks section of the amendment paper.
• All changes to the drawings should be identified with annotations on the drawing sheet.
• New drawings must be labeled ‘New Sheet’.

As stated in MPEP 608.02(b): ‘Any replacement sheet of drawings must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. The figure or figure number of the amended drawing(s) must not be labeled as ‘amended.’ The requirement for corrected drawings will not be held in abeyance.’

It’s important to note that the USPTO may require corrected drawings if the submitted drawings do not meet the necessary standards. The MPEP states: ‘The USPTO will not release drawings for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office.’

To learn more:

• corrected drawings
• substitute drawings
• patent application
• USPTO requirements

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:

• patent abstract
• patent application
• technical disclosure
• USPTO requirements

For paper or facsimile submissions of patent assignment documents to the USPTO, the following requirements apply:

• Either a copy of the original document or an extract of the original document must be submitted
• Only one side of each page may be used
• Paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4)
• A 2.5 cm (one-inch) margin must be present on all sides
• The paper should be flexible, strong white, non-shiny, and durable

As stated in 37 CFR 3.24(b): For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used.

To learn more:

• paper submission
• assignment documents
• USPTO requirements
• document format

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:

• drawing corrections
• patent application amendments
• replacement sheets
• USPTO requirements

For electronic submissions of assignment documents, the USPTO requires:

• Either a copy of the original document or an extract of the original document
• Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format
• When printed to paper size of 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible
• A 2.5 cm (one-inch) margin must be present on all sides

As stated in 37 CFR 3.24(a): All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director.

To learn more:

• electronic submission
• assignment documents
• TIFF
• document format
• USPTO requirements

While MPEP 203.06 mentions ‘essential parts’ without specifying them, other sections of the MPEP provide details on what constitutes a complete patent application. The essential parts typically include:

• Specification (including a description of the invention)
• At least one claim
• Drawings (when necessary to understand the invention)
• Filing fees
• Inventor’s oath or declaration

The specific requirements may vary depending on the type of patent application (e.g., utility, design, or plant patent). It’s crucial to consult the relevant MPEP sections, such as MPEP 601, for detailed information on application requirements.

To learn more:

• essential parts
• patent application
• USPTO requirements
• complete application

For patent applications filed before December 18, 2013, drawings were generally required to receive a filing date. As stated in the MPEP, For applications filed prior to December 18, 2013, 35 U.S.C. 111(a)(4) and 35 U.S.C. 111(b)(4) each provide, in part, that the ‘filing date… shall be the date on which… any required drawing are received in the Patent and Trademark Office.’ This means that if drawings were necessary for understanding the invention, they had to be included in the initial filing to secure a filing date.

To learn more:

• patent drawings
• filing date
• USPTO requirements

The USPTO has specific requirements for patent drawings, but they have become more flexible in recent years. According to MPEP 608.02(i), “Drawings that do not comply with all of the form requirements of 37 CFR 1.84 may be acceptable for the purposes of publication and examination if the drawings are readable and reproducible for publication purposes.” This means that while there are still formal requirements outlined in 37 CFR 1.84, the USPTO may accept drawings that don’t meet all these requirements as long as they are clear enough for publication and examination.

To learn more:

• patent drawings
• USPTO requirements
• drawing standards

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:

• informal drawings
• patent application
• drawing requirements

To learn more:

• USPTO requirements
• examination delays

Improper signatures on patent documents can have serious consequences:

• The document may be considered unsigned and therefore ineffective.
• It could lead to delays in the patent application process.
• In some cases, it might result in the loss of rights or benefits.
• The USPTO may require a new submission with proper signatures.

MPEP 402.03 states: ‘Signatures on any paper filed in the Office relating to patents must be permanent. The Office will accept and consider electronically submitted papers bearing S-signatures or handwritten signatures.’

To avoid these issues, ensure all signatures meet USPTO requirements and are made by authorized individuals.

To learn more:

• improper signatures
• patent documents
• USPTO requirements
• signature consequences

No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:

‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’

This is supported by several court cases cited in the MPEP, including:

• Nordberg, Inc. v. Telsmith, Inc.
• FMC Corp. v. Hennessy Indus., Inc.
• American Hoist & Derrick Co. v. Sowa & Sons, Inc.

The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.

Photographs in patent applications should be submitted according to specific guidelines:

• Black and white photographs must be of sufficient quality for reproduction and printing.
• Color photographs are treated the same as color drawings and require a petition.
• Photographs must be on paper that complies with 37 CFR 1.84(e).
• The photographs should directly depict the invention and not include extraneous marks.

MPEP 608.02(b) states: “Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications.” However, they may be accepted if they are the only practicable medium for illustrating the claimed invention.

To learn more:

• photographs
• patent applications
• USPTO guidelines

To learn more:

• USPTO requirements
• black and white photographs
• color photographs

For non-design patent applications filed on or after December 18, 2013, the drawing requirements have been relaxed. The MPEP states: Applications, which are not design applications, filed under 35 U.S.C. 111(a) or (b) on or after December 18, 2013 are entitled to a filing date even if the application does not contain drawings. However, it’s important to note that while drawings are not required for a filing date, they should still be submitted if necessary for understanding the invention, as no amendment may introduce new matter into the disclosure of an application after its filing date.

To learn more:

• patent drawings
• filing date
• USPTO requirements
• new matter

The USPTO accepts handwritten signatures in patent applications, but they must meet specific requirements:

• The signature must be personally applied by the signer.
• It can be in permanent dark ink or its equivalent.
• The entire signature must be contained within the signature area of the document.

According to MPEP 402.03: A handwritten signature must be personally applied by the signer. See 37 CFR 1.4(d)(1).

It’s important to note that while handwritten signatures are accepted, the USPTO encourages electronic filing and signatures for efficiency and accuracy in processing applications.

To learn more:

• handwritten signature
• patent application
• USPTO requirements

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:

• small entity status
• patent process
• status change
• USPTO requirements

No, you cannot use both sides of the paper when submitting assignment documents to the USPTO. For paper or facsimile submissions, only one side of each page may be used.

As stated in 37 CFR 3.24(b): Only one side of each page may be used.

This requirement ensures that all information is clearly visible and can be properly scanned and recorded by the USPTO. Using both sides of the paper could result in missed information or difficulties in processing your document.

To learn more:

• paper submission
• assignment documents
• USPTO requirements
• document format

No, you cannot submit multiple assignment documents with a single cover sheet. MPEP 302.07 clearly states: “A patent cover sheet must identify only one patent, and a separate patent cover sheet must be submitted for each patent as to which the assignment document is to be recorded.”

This requirement ensures that each assignment is properly documented and linked to the correct patent or application. If you have multiple assignments to record, you must prepare and submit a separate cover sheet for each one.

To learn more:

• assignment cover sheet
• multiple assignments
• USPTO requirements

Yes, you can include a copyright or mask work notice in patent drawings, but it must comply with specific requirements. According to 37 CFR 1.84(s) and MPEP 608.01(w):

A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of .32 cm. to .64 cm. (1/8 to 1/4 inches) high.

Additionally, the content of the notice must be limited to only those elements provided for by law, and the authorization language specified in 37 CFR 1.71(e) must be included at the beginning of the specification. If these conditions are met, the notice will not be objected to as extraneous matter under 37 CFR 1.84.

To learn more:

• Copyright notice in drawings
• Mask work notice in drawings
• Patent drawings
• USPTO requirements

Can a patent title be changed after filing?

Yes, a patent title can be changed after filing. The MPEP 606 states:

“The title may be amended at any time during the prosecution of the application, and in many instances a change in title may be required by the examiner.”

This means that:

• Applicants can request a title change during prosecution
• Examiners may require a title change if the original title is inadequate
• The title can be amended up until the patent is granted

It’s important to note that any changes to the title should still accurately reflect the nature of the invention and comply with all USPTO requirements.

To learn more:

• patent title
• title amendment
• patent prosecution
• USPTO requirements

Drawings are not always necessary for a patent application, but they are required when essential for understanding the invention. According to the MPEP, 35 U.S.C. 113 (first sentence) in turn provides that an ‘applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.’ The USPTO has specific practices for determining when drawings might not be necessary, such as for certain process claims, composition applications, and situations where the invention resides solely in the use of a particular material in an otherwise known article or system.

To learn more:

• patent drawings
• USPTO requirements
• invention understanding

The English translation of a non-English assignment document must be signed by the individual who performed the translation. As stated in MPEP 302.02:

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

This requirement ensures the accuracy and authenticity of the translation. It’s important to note that the translator’s signature is required, not necessarily the signature of the parties involved in the assignment.

To learn more:

• patent assignment
• document translation
• translator signature
• USPTO requirements

The USPTO may require earlier submission of priority documents in certain circumstances. According to 37 CFR 1.55(g)(2), these circumstances include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

In these cases, the applicant may be required to submit the priority claim and certified copy of the foreign application earlier than the general deadline of the patent grant date.

To learn more:

• priority documents
• early submission
• USPTO requirements
• patent examination

The USPTO may require earlier filing of priority claims and certified copies in certain situations. According to 37 CFR 1.55(g)(2), these situations include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

The MPEP explains that these requirements allow the USPTO to address priority issues promptly when they are relevant to ongoing proceedings or examination.

To learn more:

• priority claim timing
• certified copy filing
• USPTO requirements
• interference proceedings

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.

Models or exhibits are generally not required in patent applications unless specific conditions are met. According to MPEP 608.03, models or exhibits are only admitted as part of an application or patent if:

• They substantially conform to the requirements of 37 CFR 1.52 or 1.84
• They are specifically required by the Office
• They are filed with a petition under 37 CFR 1.91(a)(3)

The MPEP states: With the exception of cases involving perpetual motion, a model is not ordinarily required by the Office to demonstrate the operability of a device. However, if operability is questioned, the applicant must establish it to the examiner’s satisfaction.

To learn more:

• models
• exhibits
• patent application
• operability
• USPTO requirements

Annotated sheets are required for patent drawing changes in specific circumstances. According to MPEP 608.02(v), annotated sheets are necessary “When changes are to be made in the drawing itself, other than mere changes in reference characters, designations of figures, or inking over lines pale and rough.” However, the MPEP also notes that “Ordinarily, broken lines may be changed to full without a sketch.” This means that substantial changes to the drawing content require annotated sheets, while minor alterations may not.

To learn more:

• patent drawings
• annotated sheets
• drawing changes
• USPTO requirements

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:

• Signature Variations
• Patent Correspondence
• Ratification
• Signature Consistency
• USPTO Requirements

The key factors for acceptable patent drawings are readability and reproducibility. MPEP 608.02(i) states that “Drawings that do not comply with all of the form requirements of 37 CFR 1.84 may be acceptable for the purposes of publication and examination if the drawings are readable and reproducible for publication purposes.” This means that even if drawings don’t meet all formal requirements, they may still be accepted if they clearly convey the invention and can be properly reproduced in published documents. However, applicants should still aim to comply with 37 CFR 1.84 to ensure the best possible representation of their invention.

To learn more:

• patent drawings
• USPTO requirements
• drawing acceptability

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:

• inventor citizenship
• patent application
• USPTO requirements
• international patent law

A cover sheet is a crucial component in the patent document recording process. It provides essential information about the document being recorded and the patents or applications it relates to.

The requirement for a cover sheet is specified in 37 CFR 3.31, which states the necessary contents of a cover sheet. As mentioned in MPEP 315, a completed cover sheet is one of the required items when recording a document with additional patents or applications: “a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)”

For more detailed information on cover sheets, refer to MPEP § 302.07.

For more information on cover sheet, visit: cover sheet.

For more information on document submission, visit: document submission.

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

A substitute specification is a rewritten version of the entire specification or a part of it in a patent application. It may be required by the USPTO or voluntarily submitted by the applicant under certain conditions.

According to 37 CFR 1.125(a):

If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten.

This provision allows the USPTO to request a substitute specification when necessary for clarity and ease of examination.

To learn more:

• substitute specification
• patent application
• USPTO requirements
• rewritten specification

An assignment cover sheet must include specific information to be accepted by the USPTO. According to MPEP 302.07, the cover sheet must contain:

• The name of the party conveying the interest
• The name and address of the party receiving the interest
• A description of the interest conveyed or transaction to be recorded
• Identification of the interests involved (e.g., patent number, application number)
• The name and address of the party to whom correspondence concerning the request to record the document should be mailed
• The date the document was executed
• The signature of the party submitting the document

It’s crucial to provide all required information accurately to ensure the assignment is properly recorded.

To learn more:

• assignment cover sheet
• required information
• USPTO requirements

For foreign inventors in a U.S. patent application, the following information is required:

• The inventor’s full name
• Residence (city and either state or foreign country)
• Mailing address
• Citizenship

According to MPEP 602.08(a): ‘If the residence is not in the United States, the residence (city and country) and mailing address must be provided.’ It’s important to note that the mailing address is particularly crucial for foreign inventors to ensure proper communication with the USPTO.

To learn more:

• foreign inventors
• patent application
• inventor information
• USPTO requirements

If patent drawings do not comply with the requirements set forth in MPEP 608.02(d), the following process occurs:

1. The examiner will require additional illustration
2. A notice will be sent to the applicant
3. The applicant will have at least two months from the date of the notice to submit corrected drawings
4. Corrections must comply with 37 CFR 1.81(d)

According to the MPEP: Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. This process ensures that all necessary details are properly illustrated before the application can proceed.

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• patent drawings
• drawing corrections
• noncompliant drawings
• USPTO requirements

If an Information Disclosure Statement (IDS) doesn’t comply with USPTO requirements, it will be placed in the file but not considered by the Office. According to MPEP 609.05(a):

Pursuant to 37 CFR 1.97(i), submitted information, filed before the grant of a patent, which does not comply with 37 CFR 1.97 and 37 CFR 1.98 will be placed in the file, but will not be considered by the Office.

This means that while the IDS will be part of the application file, the examiner won’t review or consider the information it contains when examining the patent application.

To learn more:

• IDS
• Information Disclosure Statement
• Patent Application
• USPTO Requirements

If an assignment cover sheet is not submitted with the assignment document, the USPTO will not record the assignment. According to MPEP 302.07, “The Office will not accept an assignment document that is not accompanied by a cover sheet.” This means that the assignment will not be officially recognized by the USPTO, which could affect the ownership rights of the patent or application.

To learn more:

• assignment cover sheet
• USPTO requirements
• patent ownership

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:

• missing patent abstract
• patent application process
• USPTO requirements
• Office action

What documents are required for an assignee to revoke power of attorney in a patent application?

To revoke power of attorney in a patent application, an assignee must submit specific documents to the USPTO. According to MPEP 402.07, the required documents are:

• Statement under 37 CFR 3.73(c): This establishes the assignee’s ownership.
• Revocation of the existing power of attorney
• New power of attorney from the assignee

The MPEP states:

“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner. The assignee must become of record as provided in 37 CFR 3.71. After the assignee becomes of record, the assignee is permitted to revoke the power of attorney of the applicant under the provisions of 37 CFR 1.36(a).”

It’s crucial to ensure all documents are properly executed and filed with the USPTO to effectively change the power of attorney.

To learn more:

• power of attorney
• assignee documents
• USPTO requirements
• patent application

What are the specific requirements for drawings in design patent applications?

Design patent applications have unique drawing requirements due to their focus on the ornamental design of an article. According to MPEP 608.02(a), the following specific requirements apply:

• Multiple views: The drawings must contain a sufficient number of views to completely disclose the appearance of the design.
• Surface shading: This is often necessary to show the contours and character of the design.
• Solid black surface shading: This is not permitted, except when used to represent the color black or color contrast.
• Broken lines: These may be used to show environmental structure but form no part of the claimed design.
• Color drawings: These are permitted upon filing a petition explaining why color drawings are necessary.

The MPEP states, “Lack of good drawings in a design patent application may result in a refusal to issue the application until suitable drawings are submitted.” Therefore, it’s crucial to submit high-quality, compliant drawings from the outset to avoid delays in the examination process.

To learn more:

• design patent drawings
• USPTO requirements
• surface shading
• broken lines

When submitting models or exhibits that are required by the Office or filed with a petition, applicants must include photographs that meet specific criteria. According to MPEP 608.03:

Models or exhibits that are required by the Office or filed with a petition under 37 CFR 1.91(a)(3) must be accompanied by photographs that (A) show multiple views of the material features of the model or exhibit, and (B) substantially conform to the requirements of 37 CFR 1.84.

The MPEP further clarifies that material features are those which represent the portion(s) of the model or exhibit forming the basis for which it has been submitted. For video or DVD submissions, applicants must provide photographs of what is depicted in the video (e.g., a still image or single frame), not just a photograph of the media itself.

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• patent photographs
• model documentation
• exhibit documentation
• USPTO requirements

S-signatures, or electronic signatures, are accepted by the USPTO for patent applications. The requirements for S-signatures include:

• The signature must be between forward slash marks (//).
• The signer’s name must be provided in printed or typed form preferably immediately below or adjacent to the S-signature.
• The S-signature may be any combination of letters, numbers, spaces, and punctuation marks.

The MPEP 402.03 states: An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./).

It’s important to note that the S-signature must be inserted by the person signing the document, not by someone else on their behalf.

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• S-signature
• electronic signature
• patent application
• USPTO requirements

According to MPEP 302.02, non-English assignment documents can only be accepted and recorded by the USPTO if they are accompanied by an English translation. The MPEP states:

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

This means that inventors, assignees, or their representatives must provide a certified English translation along with the original non-English document for it to be officially recorded.

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• patent assignment
• non-English documents
• USPTO requirements
• translation
• patent recording

The U.S. Patent and Trademark Office (USPTO) allows the inclusion of copyright or mask work notices in design or utility patent applications under specific conditions:

• The notice must be placed adjacent to the copyrighted or mask work material.
• The content of the notice must be limited to elements required by law.
• A specific authorization must be included at the beginning of the specification.
• If included in drawings, the notice must comply with 37 CFR 1.84(s).

As stated in MPEP 608.01(w): The U.S. Patent and Trademark Office will permit the inclusion of a copyright or mask work notice in a design or utility patent application, and thereby any patent issuing therefrom, which discloses material on which copyright or mask work protection has previously been established, under the following conditions…

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• Copyright notice
• Mask work notice
• Patent application
• USPTO requirements

What are the requirements for faxed assignment documents to be recorded at the USPTO?

For faxed assignment documents to be recorded at the USPTO, they must meet the following requirements:

• The document must be legible and capable of being reproduced in legible form.
• The fax must include a cover sheet with the sender’s name, address, and telephone number.
• Payment of the recording fee must be included or authorized.
• The fax should be sent to the specific fax number designated for assignment submissions.

As stated in MPEP 302.09: “The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.” This means that the fax transmission must be complete and received by the USPTO to be considered officially submitted.

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• fax submission
• assignment documents
• USPTO requirements
• recording fee
• legibility

What are the requirements for drawings in color?

Color drawings are not ordinarily permitted in utility and design patent applications. However, the USPTO will accept color drawings in utility and design patent applications if the following conditions are met:

• The fee set forth in 37 CFR 1.17(h) is paid;
• The specification contains the following language as the first paragraph of the brief description of the drawings: ‘The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.’
• Color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent.

As stated in MPEP 608.02(b): ‘If color drawings are filed with the original application, it is not necessary to file a petition with the filing of the application. However, a petition and fee are required if color drawings are submitted after the original application papers are filed.’

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• color drawings
• patent application
• USPTO requirements

What are the requirements for corrected or substitute drawings in patent applications?

When submitting corrected or substitute drawings in patent applications, applicants must adhere to specific requirements set by the USPTO:

• Corrected or substitute drawings must be labeled as ‘Replacement Sheet’ in the top margin.
• Any changes to the drawings must be explained in either the drawing amendment or remarks section of the amendment paper.
• All changes to the drawings should be identified with annotations on the drawing sheet.
• New drawings must be labeled ‘New Sheet’.

As stated in MPEP 608.02(b): ‘Any replacement sheet of drawings must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. The figure or figure number of the amended drawing(s) must not be labeled as ‘amended.’ The requirement for corrected drawings will not be held in abeyance.’

It’s important to note that the USPTO may require corrected drawings if the submitted drawings do not meet the necessary standards. The MPEP states: ‘The USPTO will not release drawings for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office.’

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• corrected drawings
• substitute drawings
• patent application
• USPTO requirements

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.

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• patent abstract
• patent application
• technical disclosure
• USPTO requirements

For paper or facsimile submissions of patent assignment documents to the USPTO, the following requirements apply:

• Either a copy of the original document or an extract of the original document must be submitted
• Only one side of each page may be used
• Paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4)
• A 2.5 cm (one-inch) margin must be present on all sides
• The paper should be flexible, strong white, non-shiny, and durable

As stated in 37 CFR 3.24(b): For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used.

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• paper submission
• assignment documents
• USPTO requirements
• document format

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.

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• drawing corrections
• patent application amendments
• replacement sheets
• USPTO requirements

For electronic submissions of assignment documents, the USPTO requires:

• Either a copy of the original document or an extract of the original document
• Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format
• When printed to paper size of 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible
• A 2.5 cm (one-inch) margin must be present on all sides

As stated in 37 CFR 3.24(a): All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director.

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• electronic submission
• assignment documents
• TIFF
• document format
• USPTO requirements

While MPEP 203.06 mentions ‘essential parts’ without specifying them, other sections of the MPEP provide details on what constitutes a complete patent application. The essential parts typically include:

• Specification (including a description of the invention)
• At least one claim
• Drawings (when necessary to understand the invention)
• Filing fees
• Inventor’s oath or declaration

The specific requirements may vary depending on the type of patent application (e.g., utility, design, or plant patent). It’s crucial to consult the relevant MPEP sections, such as MPEP 601, for detailed information on application requirements.

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• essential parts
• patent application
• USPTO requirements
• complete application

For patent applications filed before December 18, 2013, drawings were generally required to receive a filing date. As stated in the MPEP, For applications filed prior to December 18, 2013, 35 U.S.C. 111(a)(4) and 35 U.S.C. 111(b)(4) each provide, in part, that the ‘filing date… shall be the date on which… any required drawing are received in the Patent and Trademark Office.’ This means that if drawings were necessary for understanding the invention, they had to be included in the initial filing to secure a filing date.

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• patent drawings
• filing date
• USPTO requirements

The USPTO has specific requirements for patent drawings, but they have become more flexible in recent years. According to MPEP 608.02(i), “Drawings that do not comply with all of the form requirements of 37 CFR 1.84 may be acceptable for the purposes of publication and examination if the drawings are readable and reproducible for publication purposes.” This means that while there are still formal requirements outlined in 37 CFR 1.84, the USPTO may accept drawings that don’t meet all these requirements as long as they are clear enough for publication and examination.

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• patent drawings
• USPTO requirements
• drawing standards

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.

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• informal drawings
• patent application
• drawing requirements

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• USPTO requirements
• examination delays

Improper signatures on patent documents can have serious consequences:

• The document may be considered unsigned and therefore ineffective.
• It could lead to delays in the patent application process.
• In some cases, it might result in the loss of rights or benefits.
• The USPTO may require a new submission with proper signatures.

MPEP 402.03 states: ‘Signatures on any paper filed in the Office relating to patents must be permanent. The Office will accept and consider electronically submitted papers bearing S-signatures or handwritten signatures.’

To avoid these issues, ensure all signatures meet USPTO requirements and are made by authorized individuals.

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• improper signatures
• patent documents
• USPTO requirements
• signature consequences

No, an applicant is not required to conduct a prior art search before filing a patent application. The MPEP clearly states:

‘An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent.’

This is supported by several court cases cited in the MPEP, including:

• Nordberg, Inc. v. Telsmith, Inc.
• FMC Corp. v. Hennessy Indus., Inc.
• American Hoist & Derrick Co. v. Sowa & Sons, Inc.

The ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 11.18 does not create any new duty for applicants to conduct prior art searches. However, applicants and practitioners should be aware that providing false or misleading information during prosecution can jeopardize patent enforceability.

Photographs in patent applications should be submitted according to specific guidelines:

• Black and white photographs must be of sufficient quality for reproduction and printing.
• Color photographs are treated the same as color drawings and require a petition.
• Photographs must be on paper that complies with 37 CFR 1.84(e).
• The photographs should directly depict the invention and not include extraneous marks.

MPEP 608.02(b) states: “Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications.” However, they may be accepted if they are the only practicable medium for illustrating the claimed invention.

To learn more:

• photographs
• patent applications
• USPTO guidelines

To learn more:

• USPTO requirements
• black and white photographs
• color photographs

For non-design patent applications filed on or after December 18, 2013, the drawing requirements have been relaxed. The MPEP states: Applications, which are not design applications, filed under 35 U.S.C. 111(a) or (b) on or after December 18, 2013 are entitled to a filing date even if the application does not contain drawings. However, it’s important to note that while drawings are not required for a filing date, they should still be submitted if necessary for understanding the invention, as no amendment may introduce new matter into the disclosure of an application after its filing date.

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• patent drawings
• filing date
• USPTO requirements
• new matter

The USPTO accepts handwritten signatures in patent applications, but they must meet specific requirements:

• The signature must be personally applied by the signer.
• It can be in permanent dark ink or its equivalent.
• The entire signature must be contained within the signature area of the document.

According to MPEP 402.03: A handwritten signature must be personally applied by the signer. See 37 CFR 1.4(d)(1).

It’s important to note that while handwritten signatures are accepted, the USPTO encourages electronic filing and signatures for efficiency and accuracy in processing applications.

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• handwritten signature
• patent application
• USPTO requirements

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.

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• small entity status
• patent process
• status change
• USPTO requirements

No, you cannot use both sides of the paper when submitting assignment documents to the USPTO. For paper or facsimile submissions, only one side of each page may be used.

As stated in 37 CFR 3.24(b): Only one side of each page may be used.

This requirement ensures that all information is clearly visible and can be properly scanned and recorded by the USPTO. Using both sides of the paper could result in missed information or difficulties in processing your document.

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• paper submission
• assignment documents
• USPTO requirements
• document format

No, you cannot submit multiple assignment documents with a single cover sheet. MPEP 302.07 clearly states: “A patent cover sheet must identify only one patent, and a separate patent cover sheet must be submitted for each patent as to which the assignment document is to be recorded.”

This requirement ensures that each assignment is properly documented and linked to the correct patent or application. If you have multiple assignments to record, you must prepare and submit a separate cover sheet for each one.

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• assignment cover sheet
• multiple assignments
• USPTO requirements

Yes, you can include a copyright or mask work notice in patent drawings, but it must comply with specific requirements. According to 37 CFR 1.84(s) and MPEP 608.01(w):

A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of .32 cm. to .64 cm. (1/8 to 1/4 inches) high.

Additionally, the content of the notice must be limited to only those elements provided for by law, and the authorization language specified in 37 CFR 1.71(e) must be included at the beginning of the specification. If these conditions are met, the notice will not be objected to as extraneous matter under 37 CFR 1.84.

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• Copyright notice in drawings
• Mask work notice in drawings
• Patent drawings
• USPTO requirements

Can a patent title be changed after filing?

Yes, a patent title can be changed after filing. The MPEP 606 states:

“The title may be amended at any time during the prosecution of the application, and in many instances a change in title may be required by the examiner.”

This means that:

• Applicants can request a title change during prosecution
• Examiners may require a title change if the original title is inadequate
• The title can be amended up until the patent is granted

It’s important to note that any changes to the title should still accurately reflect the nature of the invention and comply with all USPTO requirements.

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• patent title
• title amendment
• patent prosecution
• USPTO requirements

Drawings are not always necessary for a patent application, but they are required when essential for understanding the invention. According to the MPEP, 35 U.S.C. 113 (first sentence) in turn provides that an ‘applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.’ The USPTO has specific practices for determining when drawings might not be necessary, such as for certain process claims, composition applications, and situations where the invention resides solely in the use of a particular material in an otherwise known article or system.

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• patent drawings
• USPTO requirements
• invention understanding