Utility Applications

  1. Overview Article: “I just invented something. What is a Patent, and Why Should I get One?”

If you have just invented something, congratulations!  If you are ready and willing to embark on the patent process, the U.S. government may reward you with a patent.

Patents are designed to reward innovation and encourage the free exchange of information.  When an inventor has proven to the government, via the United States Patent and Trademark Office (USPTO), that he or she has invented something new and useful, the government will reward the inventor with a patent in exchange for a public description of the invention.  The patent gives the inventor control over how that invention is made or used within borders of the United States for a limited period of time.  For twenty years, the inventor can choose who can practice or sell the invention within the United States, and can choose to prevent others from practicing the invention within the United States.

For example, if an inventor has invented a new and useful widget, and obtains a patent on that widget, she can give a company the right to manufacture and sell the widget in exchange for a benefit, e.g., money.  This is known as a license.

If the inventor has discovered a competitor selling the patented widget without her permission, she can stop the competitor’s activities by filing a lawsuit for patent infringement.  The federal courts can then enforce the patent by ordering the competitor to stop infringing the patent, and ordering the competitor to give the inventor her share of the profits.

 

The government recognizes many types of inventions with the patent system.  For the most part, any new or useful machine, method, article of manufacture, or composition of matter is eligible for patent protection.  Inventors have patented anything from engines to computer algorithms to textiles to chemical compounds.  But there are categories, such as laws of nature and abstract ideas, that cannot be patented, in order to prevent an unfair monopoly over what some consider the building blocks of innovation.

In order to obtain a patent, you must file a patent application with the USPTO that fully describes your invention.  The USPTO will then publish and examine your application, and analyze what you have claimed to be your invention.  The USPTO may require you to redefine your invention, clarify your invention, or distinguish your invention from others in a process known as patent prosecution.  If the USPTO agrees that your invention is clear, new, and useful, the USPTO will grant you a patent.

Preparing a patent application and prosecuting the application before the USPTO is a complex process that requires legal and technical expertise.  Our patent attorneys and patent agents are legally trained scientists and engineers with the necessary knowledge and experience to get you the patent you deserve for your invention.

  1. Frequently Asked Questions on Utility Patents (FAQs)

What are the minimum filing requirements for a utility patent application?

  1. Specification
  2. Drawing
  3. Claims
  4. Inventor’s Declaration*
  5. Filing Fees

* Although not needed to obtain a filing date, the USPTO charges a LATE FEE if submitted after the filing date.

What are the most common Objections the USPTO makes to the Specification?

  • Abstract is longer than 150 words

An abstract may not exceed 150 words in length. 37 CFR 1.72(b).  If a submitted abstract is longer than 150 words, an examiner will likely require the applicant to cure the defect in the first Office Action.

  • Images used for equations do not have a high enough resolution

An equation should preferably be typed using a word processor or equation editor. If an equation is embedded as an image, the image should have a sufficiently high resolution to be reproducible.

  • Font size is too large or too small

Text height has to be at least 0.32 cm (1/8 inch).  The USPTO recommends a 12pt. nonscript font such as Arial, Times Roman, or Courier.  37 CFR 1.52(b). Smaller fonts are allowed for superscript or subscript, as long as characters are clearly visible.

  • Use of photographs

Applicants may only submit photographs if “photographs are the only practicable medium for illustrating the claimed invention.”  37 CFR. 1.84.  Black and white photographs must be of such quality that the details of the photograph can be reproduced in the printed patent.  Color photographs may be accepted if they are submitted with a proper petition and are of sufficient quality the pertinent details can be reproduced in black and white in the printed patent.  The USPTO recommends a minimum resolution of 300 DPI.

  • Figure and view numbers are not oriented in the same direction

Indications of the figure and view number of a specific drawing must be oriented in the same direction as the drawing so that a reader does not have to rotate the sheet.

  • A figure has multiple sub-parts on a single page

The USPTO has been issuing objections to figures having sub-parts that are not separately labeled and/or separately described in the Specification.  For example, if FIG. 1 has sub-parts (a), (b), and (c), these sub-parts should each be labeled with reference to FIG. 1 (e.g., FIG. 1(a), FIG. 1(b), and FIG. 1(c)), and should be separately described in the Brief Description of the Drawings.

  • Drawing sheets do not have proper margins

The USPTO requires all drawing sheets to have specific margins.  Top and left side margins must be at least 1 inch.  Bottom and right side margins must be at least 3/8 inch.

What are the most common errors in the formal application documents?

  • An inventor’s name is abbreviated in the oath or declaration

In a declaration, each inventor must be identified by his or her full name, including family name and at least one given name.  If the inventor’s full given name is a singular letter, the inventor should clarify in the declaration that the letter is the inventor’s given name. MPEP 602.08(b).

  • The Applicant’s entity size is incorrectly identified as a large, small, or micro entity

An applicant qualifies as a small entity if it is a person, a small business concern, or a nonprofit organization. 37 CFR 1.27(a).  A micro entity qualifies as a small entity, and in addition, has filed no more than 4 previous applications, and earns less than a specified income. An applicant is a large entity if it does not meet any of the above requirements for a small or micro entity.

What is the timeline for responding to a non-final Office action (NFOA)?

A response to an NFOA is due three (3) months from the USPTO mailing date of the action, and three (3) one-month extensions of time are obtainable.  However, if a response is not filed within six (6) months of the NFOA’s mailing date, the application will be abandoned.

What is the difference between a final Office action (FOA) and an Advisory Action (AA)?

If the applicant’s response to a non-final Office action does not persuade the examiner, or if the applicant’s claim amendments result in a new ground of rejection, the examiner will issue a final Office action (FOA).  New claim amendments and evidence are limited in the applicant’s response to an FOA.

If the applicant’s response to the FOA is not persuasive, the examiner will issue an Advisory Action (AA).  In response to the AA, the applicant can file a request for continued examination (RCE) or an appeal.

What is the timeline for responding to a final Office action (FOA)?

The response to an FOA is due three (3) months from the mailing date of the FOA, and three (3) one-month extensions of time are obtainable. However, if a response is not filed within six (6) months of the FOA’s mailing date, the application will be abandoned.

What is the timeline for responding to an Advisory Action (AA)?

The deadline for response to an AA is six (6) months after issuance of the FOA.  This deadline is not extendable.  If an Advisory Action has not been received, and the six-month deadline is approaching, the Applicant may file a Request for Continued Examination or an appeal to ensure the Applicant’s response to the FOA is accepted before the application becomes abandoned.

What is the optional 2-month deadline for responding to an FOA?

The optional 2-month deadline is the date occurring two (2) months after the FOA is mailed.  If a response is filed by the optional 2-month deadline, extension of time fees can be reduced.

If the FOA response was submitted by the optional 2-month deadline, extensions of time fees for filing an RCE, if required, are calculated from the mailing date of the AA.

However, if the FOA response was submitted after the optional 2-month deadline, the extension of time is calculated from the date the response to the AA is filed.

What is an Information Disclosure Statement (IDS)?

An IDS is a submission to the USPTO by the Applicant to disclose references known to the Applicant and “material” to patentability.  This disclosure is meant to satisfy the “duty of candor” owed to the USPTO under 37 C.F.R. 1.56.  An IDS often includes, for example, references that are cited in Office Actions of related applications.  The requirements for submission of an IDS depend on the time period during which it is submitted.

When is an IDS due?

An IDS is due during the pendency and prosecution of any patent application.  An IDS may be submitted any time before a first Office action issues, but thereafter, must be submitted within three (3) months of discovery of a material reference.

What are the requirements for filing an IDS?

An IDS includes a listing and copies of references material to patentability, and an English language translation of at least the abstract of any references that are not in English.  A certification and fee may also be required depending on when the IDS is filed.  For example, after the first Office action is filed, the Applicant must certify that the references became known to the Applicant within three (3) months of filing the IDS.

  • Time Period 1: before the 1st Office Action, no fee or certification is necessary.
  • Time Period 2: after the 1st Office Action and before a final Office Action or Notice of Allowance, there are no fees, but a certification may be required.
  • Time Period 3: after a final Office Action or Notice of Allowance, but before the Issue Fee is paid, both a fee and a certification are required.
  • Time Period 4: after the Issue Fee is paid, a Petition to Withdraw from Issue and an RCE must be filed to submit the IDS.
  • Time Period 5: after the patent issues it is no longer possible to file an IDS.