General Information Concerning Patents
Contents
Functions of the Patent and Trademark Office
Purpose of this booklet
What is a patent?
Patent laws
What can be patented
Novelty and other conditions for obtaining a patent
The United States Patent and Trademark Office
Publications of the Patent and Trademark Office
General information and correspondence
Library, search room searches
Attorneys and agents
Disclosure Document
Who may apply for a patent
Application for patent
Oath or declaration, signature
Filing Fees
Specification (description and claims)
Drawing
Models, exhibits, specimens
Examination of applications and proceedings in the Patent and
Trademark Office
Amendments to application
Time for response and abandonment
Appeal to the Board of Patent Appeals and Interferences and to
the courts
Interferences
Allowances and issue of patent
Nature of patent and patent rights
Maintenance Fees
Correction of patents
Assignments and licenses
Infringement of patents
Patent marking and "patent pending"
Design patents
Plant patents
Treaties and foreign patents
Foreign applicants for United States patents
Fees and payment
Answers to questions frequently asked
FUNCTIONS OF THE PATENT AND TRADEMARK OFFICE
The Patent and Trademark Office is an agency of the U.S.
Department of Commerce.
The role of the Patent and Trademark Office is to provide
patent protection for inventions and to register trademarks. It
serves the interest of inventors and businesses with respect to
their inventions and corporate, product, and service
identifications. It also advises and assists the bureaus and
offices of the Department of Commerce and other agencies of the
Government in matters involving "intellectual property" such as
patents, trademarks and semiconductor mask works. Through the
preservation, classification, and dissemination of patent
information, the Office aids and encourages innovation and the
scientific and technical advancement of the Nation.
In discharging its duties, the Patent and Trademark Office
examines applications and grants patents on inventions when
applicants are entitled to them; it publishes and disseminates
patent information, records assignments of patents, maintains
search files of U.S. and foreign patents and a search room for
public use in examining issued patents and records. It supplies
copies of patents and official records to the public. Similar
functions are performed relating to trademarks.
PURPOSE OF THIS BOOKLET
The purpose of this booklet is to give the reader some
general information about patents and the operations of the
Patent and Trademark Office. (A similar booklet is available on
the subject of trademarks.) It attempts to answer many of the
questions commonly asked of the Patent and Trademark Office but
is not intended to be a comprehensive textbook on patent law or
a guide for the patent lawyer. Consequently, many details are
omitted and complications have been avoided as much as
possible. It is hoped that this pamphlet will be useful to
inventors and prospective applicants for patents, to students,
and to others who may be interested in patents by giving them a
brief general introduction to the subject.
Because of the large amount of mail received by the Patent
and Trademark Office, a copy of this pamphlet, with particular
sections marked when appropriate, may be used by the Patent and
Trademark Office to reply to inquiries and is intended as a
courtesy reply.
Additional information may be obtained from the
publications listed on pages 6 and 7. The Patent and Trademark
Office does not publish any textbooks on patent law, but a
number of such works for the specialist and for the general
reader have been published by private concerns.
WHAT IS A PATENT?
A patent for an invention is a grant of a property right
by the Government to the inventor (or his heirs or assigns),
acting through the Patent and Trademark Office. The term of the
patent is 17 years from the date the patent is granted, subject
to the payment of maintenance fees.
The right conferred by the patent grant extends throughout
the United States and its territories and possessions.
The right conferred by the patent grant is, in the
language of the statute and of the grant itself, "the right to
exclude others from making, using, or selling" the invention.
What is granted is not the right to make, use, or sell, but the
right to exclude others from making, using, or selling the
invention.
Most of the statements in the preceding paragraphs will be
explained in greater detail in later sections.
Some persons occasionally confuse patents, copyrights, and
trademarks. Although there may be some resemblance in the
rights of these three kinds of intellectual property, they are
different and serve different purposes.
Copyrights
A copyright protects the writings of an author against
copying. Literary, dramatic, musical and artistic works are
included within the protection of the copyright law, which in
some instances also confers performing and recording rights.
The copyright goes to the form of expression rather than to the
subject matter of the writing. A description of a machine could
be copyrighted as a writing, but this would only prevent others
from copying the description; it would not prevent others from
writing a description of their own or from making and using the
machine. Copyrights are registered in the Copyright Office in
the Library of Congress. Information concerning copyrights may
be obtained from the Register of Copyrights, Library of
Congress, Washington, D.C. 20559. (Telephone 202/479-0700)
Trademarks
A trademark relates to any word, name, symbol or device
which is used in trade with goods to indicate the source or
origin of the goods and to distinguish them from the goods of
others. Trademark rights may be used to prevent others from
using a confusingly similar mark but not to prevent others from
making the same goods or from selling them under a non-
confusing mark. Similar rights may be acquired in marks used in
the sale or advertising of services (service marks). Trademarks
and service marks which are used in interstate or foreign
commerce may be registered in the Patent and Trademark Office.
The procedure relating to the registration of trademarks and
some general information concerning trademarks is given in a
pamphlet called Basic Facts About Trademarks.
PATENT LAWS
The Constitution of the United States gives Congress the
power to enact laws relating to patents. in Article I, section
8, which reads "Congress shall have power... to promote the
progress of science and useful arts, by securing for limited
times to authors and inventors the exclusive right to their
respective writings and discoveries." Under this power Congress
has from time to time enacted various laws relating to patents.
The first patent law was enacted in 1790. The law now in effect
is a general revision which was enacted July 19, 1952, and
which came into effect January 1, 1953. It is codified in Title
35, United States Code.
The patent law specifies the subject matter for which a
patent may be obtained and the conditions for patentability.
The law establishes the Patent and Trademark Office for
administering the law relating to the granting of patents, and
contains various other provisions relating to patents.
WHAT CAN BE PATENTED
The patent law specifies the general field of subject
matter that can be patented and the conditions under which a
patent may be obtained.
In the language of the statute, any person who "invents
or discovers any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvements
thereof, may obtain a patent," subject to the conditions and
requirements of the law. By the word "process" is meant a
process or method, and new processes, primarily industrial or
technical processes, may be patented. The term "machine" used
in the statute needs no explanation. The term "manufacture"
refers to articles which are made, and includes all
manufactured articles. The term "composition of matter" relates
to chemical compositions and may include mixtures of ingredients
as well as new chemical compounds. These classes of subject
matter taken together include practically everything which is
made by man and the process for making them.
The Atomic Energy Act of 1954 excludes the patenting of
inventions useful solely in the utilization of special nuclear
material or atomic energy for atomic weapons.
The patent law specifies that the subject matter must be
"useful." The term "useful" in this connection refers to the
condition that the subject matter has a useful purpose and also
includes operativeness, that is, a machine which will not
operate to perform the intended purpose would not be called
useful, and therefore would not be granted a patent.
Interpretations of the statute by the courts have defined
the limits of the field of subject matter which can be
patented, thus it has been held that methods of doing business
and printed matter cannot be patented.
In the case of mixtures of ingredients, such as medicines,
a patent cannot be granted unless there is more to the mixture
than the effect of its components. (So called patent medicines
are ordinarily not patented, the phrase "patent medicine" in
this connection does not have the meaning that the medicine is
patented.) A patent cannot be obtained upon a mere idea or
suggestion. The patent is granted upon the new machine,
manufacture, etc., as has been said, and not upon the idea or
suggestion of the new machine. A complete description of the
actual machine or other subject matter sought to be patented is
required.
NOVELTY AND OTHER CONDITIONS FOR OBTAINING A PATENT
In order for an invention to be patentable it must be new
as defined in the patent law, which provides that an invention
cannot be patented if--
"(a) The invention was known or used by others in this
country, or patented or described in a printed publication
in this or a foreign country, before the invention thereof
by the applicant for patent, or
"(b) The invention was patented or described in a printed
publication in this or a foreign country or in public use
or on sale in this country more than one year prior to the
application for patent in the United States...."
If the invention has been described in a printed
publication anywhere in the world, or if it has been in public
use or on sale in this country before the date that the
applicant made his invention, a patent cannot be obtained. If
the invention has been described in a printed publication
anywhere, or has been in public use or on sale in this country
more than one year before the date on which an application for
patent is filed in this country, a valid patent cannot be
obtained. In this connection it is immaterial when the
invention was made, or whether the printed publication or
public use was by the inventor himself or by someone else. If
the inventor describes the invention in a printed publication
or uses the invention publicly, or places it on sale, he must
apply for a patent before one year has gone by, otherwise any
right to a patent will be lost.
Even if the subject matter sought to be patented is not
exactly shown by the prior art, and involves one or more
differences over the most nearly similar thing already known, a
patent may still be refused if the differences would be
obvious. The subject matter sought to be patented must be
sufficiently different from what has been used or described
before so that it may be said to be unobvious to a person
having ordinary skill in the area of technology related to the
invention. For example, the substitution of one material for
another, or changes in size, are ordinarily not patentable.
THE UNITED STATES PATENT AND TRADEMARK OFFICE
Congress established the United States Patent and
Trademark Office to issue patents on behalf of the Government.
The Patent and Trademark Office as a distinct bureau may be
said to date from the year 1802 when a separate official in the
Department of State who became known as "Superintendent of
Patents" was placed in charge of patents. The revision of the
patent laws enacted in 1836 reorganized the Patent and
Trademark Office and designated the official in charge as
Commissioner of Patents and Trademarks. The Patent and
Trademark Office remained in the Department of State until 1849
when it was transferred to the Department of Interior. In 1925
it was transferred to the Department of Commerce where it is
today.
The Patent and Trademark Office administers the patent
laws as they relate to the granting of patents for inventions,
and performs other duties relating to patents. It examines
applications for patents to determine if the applicants are
entitled to patents under the law and grants the patents when
they are so entitled; it publishes issued patents and various
publications concerning patents, records assignments of
patents, maintains a search room for the use of the public to
examine issued patents and records, supplies copies of records
and other papers, and the like. Similar functions are performed
with respect to the registration of trademarks. The Patent
and Trademark Office has no jurisdiction over questions of
infringement and the enforcement of patents, nor over matters
relating to the promotion or utilization of patents or
inventions.
The head of the Office is the Assistant Secretary and
Commissioner of Patents and Trademarks and his staff includes
the Deputy Assistant Secretary and Deputy Commissioner, several
assistant commissioners, and other officials. As head of the
Office, the Commissioner superintends or performs all duties
respecting the granting and issuing of patents and the
registration of trademarks; exercises general supervision over
the entire work of the Patent and Trademark Office; prescribes
the rules, subject to the approval of the Secretary of
Commerce, for the conduct of proceedings in the Patent and
Trademark Office and for recognition of attorneys and agents;
decides various questions brought before him by petition as
prescribed by the rules, and performs other duties necessary
and required for the administration of the Patent and Trademark
Office.
The work of examining applications for patents is divided
among a number of examining groups, each group having
jurisdiction over certain assigned fields of technology. Each
group is headed by a group director and staffed by a number of
examiners. The examiners review applications for patents and
determine whether patents can be granted. An appeal can be
taken to the Board of Patent Appeals and Interferences from
their decisions refusing to grant a patent and a review by the
Commissioner of Patents and Trademarks may be had on other
matters by petition. The examiners also identify applications
that claim the same invention and initiate proceedings, known
as interferences, to determine who was the first inventor.
In addition to the examining groups, other offices perform
various services, such as receiving and distributing mail,
receiving new applications, handling sales of printed copies of
patents, making copies of records, inspecting drawings, and
recording assignments.
At present, the Patent and Trademark Office has about
4,400 employees, of whom about half are examiners and others
with technical and legal training. Patent applications are
received at the rate of over 170,000 per year. The Patent and
Trademark Office receives over five million pieces of mail each
year.
PUBLICATIONS OF THE PATENT AND TRADEMARK OFFICE
Patents--The specification and accompanying drawings of
all patents are published on the same day they are granted and
printed copies are sold to the public by the Patent and
Trademark Office. Over 5,000,000 patents have been issued.
Printed copies of any patent, identified by its patent
number, may be purchased from the Patent and Trademark Office.
See fee schedule.
Future patents classified in subclasses containing subject
matter of interest may be obtained, as they issue, by
prepayment of a deposit and a service charge. For the cost of
such subscription service, a separate inquiry should be sent to
the Patent and Trademark Office.
Official Gazette of the United States Patent and Trademark
Office. -- The Official Gazette of the United States Patent and
Trademark Office is the official journal relating to patents
and trademarks. It has been published weekly since January 1872
(replacing the old "Patent Office Reports"), and is now issued
each Tuesday in two parts, one describing patents and the other
trademarks. h contains a claim and a selected figure of the
drawings of each patent granted on that day; notices of patent
and trademark suits; indexes of patents and patentees, list of
patents available for license or sale; and much general
information such as orders, notices, changes in rules, changes
in classification, etc. The Official Gazette is sold on
subscription and by single copies by the Superintendent of
Documents, U.S. Government Printing Office, Washington, D.C.
20402.
The illustrations and claims of the patents are arranged
in the Official Gazette according to the Patent and Trademark
Office classification of subject matter, permitting ready
reference to patents in any particular field. Street addresses
of patentees and a geographical index of residents of inventors
are included. Copies of the Official Gazette may be found in
public libraries of larger cities.
Index of Patents. -- This annual index to the Official
Gazette is currently in two volumes, one an index of patentees
and the other an index by subject matter of the patents. Sold
by Superintendent of Documents.
Index of Trademarks. -- An annual index of registrants of
trademarks. Sold by Superintendent of Documents.
Manual of Classification. -- A looseleaf book containing a
list of all the classes and subclasses of inventions in the
Patent and Trademark Office classification systems, a subject
matter index, and other information relating to classification.
Substitute pages are issued from time to time. Annual
subscription includes the basic manual and substitute pages.
Sold by Superintendent of Documents.
Classification Definitions -- Contains the changes in
classification of patents as well as definitions of new and
revised classes and subclasses. Sold by Patent and Trademark
Office.
Title 37 Code of Federal Regulations. -- Includes rules of
practice for Patents, Trademarks and Copyrights. Available from
the Superintendent of Documents.
Basic Facts about Trademarks -- Contains general
information for the layman about applications for, and
registration of, trademarks and service marks. Copies may be
purchased from Superintendent of Documents.
Directory of Registered Patent Attorneys and Agents
Arranged by States and Countries -- An alphabetical and
geographical listing of patent attorneys and agents registered
to practice before the U.S. Patent and Trademark Office. Sold
by Superintendent of Documents.
Manual of Patent Examining Procedure -- A loose-leaf
manual which serves primarily as a detailed reference work on
patent examining practice and procedure for the Patent and
Trademark Office's Examining Corps. Subscriptions service
includes basic manual, quarterly revisions, and change notices.
Sold by Superintendent of Documents.
The Story of the United States Patent Office. -- A
chronological account of the development of the U.S. Patent and
Trademark Office and patent system and of inventions which had
unusual impact on the American economy and society. Sold by
Superintendent of Documents.
GENERAL INFORMATION AND CORRESPONDENCE
All business with the Patent and Trademark Office should
be transacted by writing to "COMMISSIONER OF PATENTS AND
TRADEMARKS, WASHINGTON, D.C. 20231." Correspondents should be
sure to include their full return addresses, including Zip
Codes.
The principal location of the office is Crystal Plaza 3,
2021 Jefferson Davis highway, Arlington, Virginia. The personal
attendance of applicants at the Office is unnecessary.
Applicants and attorneys are required to conduct their
business with decorum and courtesy. Papers presented in
violation of this requirement will be returned.
Separate letters (but not necessarily in separate
envelopes) should be written in relation to each distinct
subject of inquiry, such as assignments, payments, orders for
printed copies of patents, orders for copies of records,
requests for other services, etc. None of these should be
included with letters responding to Office actions in
applications (see page 19).
When a letter concerns a patent application, the
correspondent must include the serial number, filing date and
Group Art Unit number. When a letter concerns a patent, it must
include the name of the patentee, the title of the invention,
the patent number and the date of issue.
An order for a copy of an assignment must give the book
and page or reel and frame of the record, as well as the name
of the inventor; otherwise, an additional charge is made for
the time consumed in making the search for the assignment.
Applications for patents are not open to the public, and
no information concerning them is released except on written
authority of the applicant, his assignee, or his attorney, or
when necessary to the conduct of the business of the Office.
Patents and related records, including records of any
decisions, the records of assignments other than those relating
to assignments of patent applications, books, and other records
and papers in the Office are open to the public. They may be
inspected in the Patent and Trademark Office Search Room or
copies may be ordered.
The Office cannot respond to inquiries concerning the
novelty and patentability of an invention in advance of the
filing of an application; give advice as to possible
infringement of a patent; advise of the propriety of filing an
application; respond to inquiries as to whether or to whom any
alleged invention has been patented; act as an expounder of the
patent law or as counselor for individuals, except in deciding
questions arising before it in regularly filed cases.
Information of a general nature may be furnished either
directly or by supplying or calling attention to an appropriate
publication.
LIBRARY, SEARCH ROOM SEARCHES AND PATENT AND TRADEMARK
DEPOSITORY LIBRARIES
The Scientific and Technical Information Center of the
Patent and Trademark Office at Crystal Plaza 3, 2021 Jefferson
Davis Highway, Arlington, Va., has available for public use
over 120,000 volumes of scientific and technical books in
various languages, about 90,000 bound volumes of periodicals
devoted to science and technology, the official journals of 77
foreign patent organizations, and over 12 million foreign
patents.
A Search Room is provided where the public may search and
examine United States patents granted since 1836. Patents are
arranged according to the Patent and Trademark Office
classification system of over 400 classes and over 120,000
subclasses. By searching in these classified patents, it is
possible to determine, before actually filing an application,
whether an invention has been anticipated by a United States
patent, and it is also possible to obtain the information
contained in patents relating to any field of endeavor. The
Search Room contains a set of United States patents arranged in
numerical order and a complete set of the Official Gazette.
A Files Information Room also is maintained where the
public may inspect the records and files of issued patents and
other open records.
Applicants, their attorneys or agents, and the general
public are not entitled to use the records and files in the
examiners' rooms.
The Search Room is open from 8 a.m. to 8 p.m. Monday
through Friday except on Federal holidays.
Since a patent is not always granted when an application
is filed, many inventors attempt to make their own
investigation before applying for a patent. This may be done in
the Search Room of the Patent and Trademark Office, and
libraries, located throughout the U.S., which have been
designated as Patent and Trademark Depository Libraries (PTDL).
Patent attorneys or agents may be employed to make a so-called
preliminary search through the prior United States patents to
discover if the particular device or one similar to it has been
shown in some prior patent. This search is not always as
complete as that made by the Patent and Trademark Office during
the examination of an application, but only serves, as its name
indicates a preliminary purpose. For this reason, the Patent
and Trademark Office examiner may, and often does, reject
claims in an application on the basis of prior patents or
publications not found in the preliminary search.
Those who cannot come to the Search Room may order from
the Patent and Trademark Office copies of lists of original
patents or of cross-referenced patents contained in the
subclasses comprising the field of search, or may inspect and
obtain copies of the patents at a Patent and Trademark
Depository Library. The Patent and Trademark Depository
Libraries (PTDLs) receive current issues of U.S. Patents and
maintain collections of earlier issued patents and trademark
information. The scope of these collections varies from library
to library, ranging from patents of only recent years to all or
most of the patents issued since 1790.
These patent collections are open to public use. Each of
the Patent and Trademark Depository Libraries, in addition,
offers the publications of the U.S. Patent Classification
System (e.g., The Manual of Classification, Index to the U.S.
Patent Classification, Classification Definitions, etc.) and
other patent documents and forms, and provides technical staff
assistance in their use to aid the public in gaining effective
access to information contained in patents. The collections are
organized in patent number sequence.
Available in all PTDLs is the Classification And Search
Support Information System (CASSIS), computer data base. With
various modes, it permits the effective identification of
appropriate classifications to search, provides numbers of
patents assigned to a classification to permit finding the
patents in a numerical file of patents, provides the current
classification(s) of all patents, permits word searching on
classification titles, abstracts, the Index provides certain
bibliographic information on more recently issued patents.
Facilities for making paper copies from either microfilm
in readerprinters or from the bound volumes in paper-to-paper
copies are generally provided for a fee.
Due to variations in the scope of patent collections among
the Patent and Trademark Depository Libraries and in their
hours of service to the public, anyone contemplating the use of
the patents at a particular library is advised to contact that
library, in advance, about its collection and hours, so as to
avert possible inconvience.
State Name of Library
Alabama Auburn University Libraries
Birmingham Public Library
Alaska Anchorage: Z. J. Loussac Public
Library
Arizona Tempe: Noble Library, Arizona State
University
Arkansas Little Rock: Arkansas State
University
California Los Angeles City Library
Sacramento: California State Library
San Diego Public Library
Sunnyvale Patent Clearinghouse
Colorado Denver Public Library
Connecticut New Haven: Science Park Library
Delaware Newark: University of Delaware
Library
District of Columbia Washington: Howard University
Libraries
Florida Fort Lauderdale: Broward County Main
Library
Miami-Dade Public Library
Orlando: University of Central
Florida Libraries
Tampa: Tampa Campus Library,
University of South Florida
Georgia Atlanta: Price Gilbert Memorial
Library, Georgia Institute of
Technology
Hawaii Honolulu: Hawaii State Public
Library System
Idaho Moscow: University of Idaho Library
Illinois Chicago Public Library
Springfield: Illinois State Library
Indiana Indianapolis-Marion County Public
Library
West Lafayette: Siegesmund
Engineering Laboratory, Purdue
University
Iowa Des Moines: State Library of Iowa
Kansas Wichita: Ablah Library, Wichita
State University
Kentucky Louisville Free Public Library
Louisiana Baton Rouge: Troy H. Middleton
Library, Louisiana State
University
Maryland College Park: Engineering and
Physical Sciences Library,
University of Maryland
Massachusetts Amherst: Physical Sciences Library,
University of Massachusetts
Boston Public Library
Michigan Ann Arbor: Engineering Library,
University of Michigan
Big Rapids: Abigail S. Timme
Library, Ferris State
University
Detroit Public Library
Minnesota Minneapolis Public Library and
Information Center
Mississippi Jackson: Mississippi Library
Commission
Missouri Kansas City: Linda Hall Library
St. Louis Public Library
Montana Butte: Montana College of Mineral
Science and Technology Library
Nebraska Lincoln: Engineering Library,
University of Nebraska-Lincoln
Nevada Reno: University of Nevada-Reno
Library
New Hampshire Durham: University of New Hampshire
Library
New Jersey Newark Public Library
Piscataway: Library of Science and
Medicine, Rutgers University
New Mexico Albuquerque: University of New
Mexico General Library
New York Albany: New York State Library
Buffalo and Erie County Public
Library
New York Public Library (The
Research Libraries)
North Carolina Raleigh: D. H. Hill Library, North
Carolina State University
North Dakota Grand Forks: Chester Fritz Library,
University of North Dakota
Ohio Cincinnati and Hamilton County,
Public Library of
Cleveland Public Library
Columbus: Ohio State University
Libraries
Toledo/Lucas County Public Library
Oklahoma Stillwater Oklahoma State University
Center for International Trade
Development
Oregon Salem: Oregon State Library
Pennsylvania Philadelphia: The Free Library of
Pittsburgh: Carnegie Library of
University Park: Pattee Library,
Pennsylvania State University
Rhode Island Providence Public Library
South Carolina Charleston: Medical University of
South Carolina Library
Clemson University Libraries
Tennessee Memphis and Shelby County Public
Library and Information Center
Nashville: Stevenson Science
Library, Vanderbilt University
Texas Austin: McKinney Engineering
Library, University of Texas at
Austin
College Station: Sterling C. Evans
Library, Texas A & M University
Dallas Public Library
Houston: The Fondren Library, Rice
University
Utah Salt Lake City: Marriott Library,
University of Utah
Virginia Richmond: James Branch Cabell
Library, Virginia Commonwealth
University
Washington Seattle: Engineering Library,
University of Washington
West Virginia Morgantown: Evansdale Library, West
Virginia University
Wisconsin Madison: Kurt F. Wendt Library,
University of Wisconsin-Madison
Milwaukee Public Library
ATTORNEYS AND AGENTS
The preparation of an application for patent and the
conducting of the proceedings in the Patent and Trademark
Office to obtain the patent is an undertaking requiring the
knowledge of patent law and Patent and Trademark Office
practice as well as knowledge of the scientific or technical
matters involved in the particular invention.
Inventors may prepare their own applications and file them
in the Patent and Trademark Office and conduct the proceedings
themselves, but unless they are familiar with these matters or
study them in detail, they may get into considerable
difficulty. While a patent may be obtained in many cases by
persons not skilled in this work, there would be no assurance
that the patent obtained would adequately protect the
particular invention.
Most inventors employ the services of registered patent
attorneys or patent agents. The law gives the Patent and
Trademark Office the power to make rules and regulations
governing conduct and the recognition of patent attorneys and
agents to practice before the Patent and Trademark Office.
Persons who are not recognized by the Patent and Trademark
Office for this practice are not permitted by law to represent
inventors before the Patent and Trademark Office. The Patent
and Trademark Office maintains a register of attorneys and
agents. To be admitted to this register, a person must comply
with the regulations prescribed by the Office, which require a
showing that the person is of good moral character
and of good repute and that he/she has the legal and scientific
and technical qualifications necessary to render applicants for
patents a valuable service. Certain of these qualifications
must be demonstrated by the passing of an examination. Those
admitted to the examination must have a college degree in
engineering or physical science or the equivalent of such a
degree. The Patent and Trademark Office registers both
attorneys at law and persons who are not attorneys at law. The
former persons are now referred to as "patent attorneys" and
the latter persons are referred to as "patent agents." Insofar
as the work of preparing an application for patent and
conducting the prosecution in the Patent and Trademark Office
is concerned, patent agents are usually just as well qualified
as patent attorneys, although patent agents cannot conduct
patent litigation in the courts or perform various services
which the local jurisdiction considers as practicing law. For
example, a patent agent could not draw up a contract relating
to a patent, such as an assignment or a license, if the State
in which he resides considers drawing contracts as practicing
law.
Some individuals and organizations that are not registered
advertise their services in the fields of patent searching and
invention marketing and development. Such individuals and
organizations cannot represent inventors before the Patent and
Trademark Office. They. are not subject to Patent and Trademark
Office discipline, and the Office cannot assist inventors in
dealing with them.
The Patent and Trademark Office cannot recommend any
particular attorney or agent, or aid in the selection of an
attorney or agent, as by stating, in response to inquiry that a
named patent attorney, agent, or firm, is "reliable" or
"capable." The Patent and Trademark Office publishes a
directory of all registered patent attorneys and agents who
have indicated their availability to accept new clients,
arranged by states, cities, and foreign countries. The
Directory must be purchased from the Government Printing
Office.
The telephone directories of most large cities have, in
the classified section, a heading for patent attorney's under
which those in that area are listed. Many large cities have
associations of patent attorneys.
In employing a patent attorney or agent, the inventor
executes a power of attorney or authorization of agent which
must be filed in the Patent and Trademark Office and is usually
a part of the application papers. When an attorney has been
appointed, the Office does not communicate with the inventor
directly but conducts the correspondence with the attorney
since he/she is acting for the inventor thereafter, although
the inventor is free to contact the Patent and Trademark Office
concerning the status of his/her application. The inventor may
remove the attorney or agent by revoking the power of
authorization.
The Patent and Trademark Office has the power to disbar,
or suspend from practicing before it, persons guilty of gross
misconduct, etc., but this can only be done after a full
hearing with the presentation of clear and convincing evidence
concerning the misconduct. The Patent and Trademark Office will
receive and, in appropriate cases, act upon complaints against
attorneys and agents. The fees charged to inventors by patent
attorneys and agents for their professional services are not
subject to regulation by the Patent and Trademark Office.
Definite evidence of overcharging may afford basis for Patent
and Trademark Office action, but the Office rarely intervenes
in disputes concerning fees.
DISCLOSURE DOCUMENT
One of the services provided for inventors is the
acceptance and preservation for a two-year period of papers
disclosing an invention. This disclosure is accepted as
evidence of the dates of conception of the invention.
It will be retained for two years at which time it will be
destroyed unless it is referred to in a separate letter in a
related patent application.
A fee must accompany the disclosure. See current fee
schedule. The disclosure is limited to written matter or
drawings on paper or other thin, flexible material, such as
linen or plastic drafting material, having dimensions or being
folded to dimensions not to exceed 8-1/2 x 13 inches (21.6 by
33.0 cm). Photographs are acceptable. Each page should be
numbered. Text and drawings should be of such quality as to
permit reproduction.
The disclosure must be accompanied by a stamped,
self-addressed envelope and a duplicate copy also signed by the
inventor. The papers will be stamped with an identifying number
and returned with the reminder that the Disclosure Document may
be relied upon only as evidence of the date of conception and
that an application must be filed in order to provide patent
protection.
WHO MAY APPLY FOR A PATENT
According to the law, only the inventor may apply for a
patent, with certain exceptions. If a person who is not the
inventor should apply for a patent, the patent, if it were
obtained, would be invalid. The person applying in such a case
who falsely states that he/she is the inventor would also be
subject to criminal penalties. If the inventor is dead, the
application may be made by legal representatives, that is, the
administrator or executor of the estate. If the inventor is
insane, the application for patent may be made by a guardian.
If an inventor refuses to apply for a patent or cannot be
found, a joint inventor or a person having a proprietary
interest in the invention may apply on behalf of the missing
inventor.
If two or more persons make an invention jointly, they
apply for a patent as joint inventors. A person who makes a
financial contribution is not a joint inventor and cannot be
joined in the application as an inventor. It is possible to
correct an innocent mistake in erroneously omitting an inventor
or erroneously naming a person as an inventor.
Officers and employees of the Patent and Trademark Office
are prohibited by law from applying for a patent or acquiring,
directly or indirectly, except by inheritance or bequest, any
patent or any right or interest in any patent.
APPLICATION FOR PATENT
An application for a patent is made to the Commissioner of
Patents and Trademarks and includes:
(1) A written document which comprises a specification
(description and claims), and an oath or declaration;
(2) A drawing in those cases in which a drawing is necessary;
(3) The filing fee. See fee schedule.
The specification and oath or declaration must be legibly
written or printed in permanent ink on one side of the paper.
The Office prefers typewriting on letter or legal size 8 to 8
1/2 by 10 1/2 to 13 inches, (20.3 to 21.6 by 26.7 to 33.0 cm) 1
1/2 or double spaced with margins of 1 inch (2.54 cm) on the
left-hand side and at the top. If the papers filed are not
correctly, legibly, and clearly written, the Patent and
Trademark Office may require typewritten or printed papers.
The application for patent is not forwarded for
examination until all its required parts, complying with the
rules relating thereto, are received. If the papers and parts
are incomplete, or so defective that they cannot be accepted as
a complete application for examination, the applicant will be
notified about the deficiencies and be given a time period in
which to remedy them. A surcharge may be required. If the
applicant does not respond within the prescribed time period.
The application will be returned or otherwise disposed of. The
filing fee may be refunded when an application is refused
acceptance as incomplete; however, a handling fee will be
charged.
It is desirable that all parts of the complete application
be deposited in the Office together; otherwise each part must
be signed and a letter must accompany each part, accurately and
clearly connecting it with the other parts of the application.
All applications are numbered in serial order, and the
applicant is informed of the serial number and filing date of
the application by a filing receipt. The filing date of the
application is the date on which the names of the inventors, a
specification (including claims) and any required drawings are
received in the Patent and Trademark Office; or the date on
which the last part completing the application are received in
the case of a previously incomplete or defective application.
Oath or Declaration, Signature
The oath or declaration of the applicant is required by
law. The inventor must make an oath or declaration that he she
believes himself herself to be the original and first inventor
of the subject matter of the application, and he she must make
various other allegations required by law and various
allegations required by the Patent and Trademark Office rules.
The oath must be sworn to by the inventor before a notary
public or other officer authorized to administer oaths. A
declaration may be used in lieu of an oath as part of the
original application for a patent involving designs, plants,
and other patentable inventions; for reissue patents; when
claiming matter originally shown or described but not
originally claimed; or when filing a divisional or continuing
application. A declaration does not need to be notarized.
The application, oath or declaration must be signed by the
inventor in person, or by the person entitled by law to make
application on the inventor's behalf. A full first or middle
name of each inventor without abbreviation and a middle or
first initial, if any, is required. The postoffice address of
the inventor is also required.
Blank forms for applications or certain other papers are
not supplied by the Patent and Trademark Office.
The papers in a complete application will not be returned
for any purpose whatever, nor will the filing fee be returned.
If applicants have not preserved copies of the papers, the
Office will furnish copies for a fee.
Filing Fees*
The filing fee of an application, except in design and
plant cases, consists of a basic fee and additional fees. The
basic fee entitles applicant to present twenty (20) claims,
including not more than three (3) in independent form. An
additional fee is required for each claim in independent form
which is in excess of three (3) and an additional fee is
required for each claim (whether independent or dependent)
which is in excess of a total of twenty (20) claims. If the
application contains multiple dependent claims, additional fees
are required.
If the owner of the invention is a small entity, (an
independent inventor, a small business concern or a non-profit
organization), the filing fees are reduced by half if the small
entity files a verified statement. Copies of sample
verification statements are enclosed.
To avoid errors in the payment of fees it is suggested
that the table in the enclosed patent application transmittal
letter be utilized to calculate the fee payment.
In calculating fees, a claim is in singularly dependent
form if it incorporates by reference a single preceding claim
which may be an independent or a dependent claim. A multiple
dependent claim or any claim depending therefrom shall be
considered as separate dependent claims in accordance with the
number of claims to which reference is made.
The law also provides for the payment of additional fees
on presentation of additional claims after the application is
filed.
When an amendment is filed which presents additional
claims over the total number already paid for, or additional
independent claims over the number of independent claims
already accounted for, it must be accompanied by any additional
fees due.
* Please Note: The fees are current as of the revision date.
Fees are subject to change in October each year therefore
they should be verified before submission to the PTO. A
fee schedule may be obtained by writing 16 Commissioner of
Patents, Washington, D.C. 20231 -- Attention Public Service
Branch.
SPECIFICATION (DESCRIPTION AND CLAIMS)
The specification must include a written description of
the invention and of the manner and process of making and using
it, and is required to be in such full, clear, concise, and
exact terms as to enable any person skilled in the
technological area to which the invention pertains, or with
which it is most nearly connected, to make and use the same.
The specification must set forth the precise invention for
which a patent is solicited, in such manner as to distinguish
it from other inventions and from what is old. It must describe
completely a specific embodiment of the process, machine,
manufacture, composition of matter or improvement invented, and
must explain the mode of operation or principle whenever
applicable. The best mode contemplated by the inventor of
carrying out his invention must be set forth.
In the case of an improvement, the specification must
particularly point out the part or parts of the process,
machine, manufacture, or composition of matter to which the
improvement relates, and the description should be confined to
the specific improvement and to such parts as necessarily
cooperate with it or as may be necessary to a complete
understanding or description of it.
The title of the invention, which should be as short and
specific as possible, should appear as a heading on the first
page of the specification, if it does not otherwise appear at
the beginning of the application.
A brief abstract of the technical disclosure in the
specification must be set forth in a separate page immediately
following the claims in a separate paragraph under the heading
"Abstract of the Disclosure."
A brief summary of the invention indicating its nature and
substance, which may include a statement of the object of the
invention, commensurate with the invention as claimed and any
object recited should precede the detailed description. Such
summary should be that of the invention as claimed.
When there are drawings, there shall be a brief
description of the several views of the drawings, and the
detailed description of the invention shall refer to the
different views by specifying the numbers of the figures, and
to the different parts by use of reference numerals.
The specification must conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as the invention.
The claims are brief descriptions of the subject matter of
the invention, eliminating unnecessary details and reciting all
essential features necessary to distinguish the invention from
what is old. The claims are the operative part of the patent.
Novelty and patentability are judged by the claims,' and, when
a patent is granted, questions of infringement are judged by
the courts on the basis of the claims.
When more than one claim is presented, they may be placed
in dependent form in which a claim may refer back to and
further restrict one or more preceding claims.
A claim in multiple dependent form shall contain a
reference, in the alternative only, to more than one claim
previously set forth and then specify a further limitation of
the subject matter claimed. A multiple dependent claim shall
not serve as a basis for any other multiple dependent claim. A
multiple dependent claim shall be construed to incorporate by
reference all the limitations of the particular claim in
relation to which it is being considered.
The claim or claims must conform to the invention as set
forth in the remainder of the specification and the terms and
phrases used in the claims must find clear support or
antecedent basis in the description so that the meaning of the
terms in the claims may be ascertainable by reference to the
description.
The following order of arrangement should be observed in
framing the specification:
(a) Title of the invention.
(b) Cross-references to related applications, if any.
(c) Brief summary of the invention.
(d) Brief description of the several views of the drawing, if
there are drawings.
(e) Detailed Description.
(f) Claim or claims.
(g) Abstract of the disclosure.
DRAWING
The applicant for a patent will be required by law to
furnish a drawing of the invention whenever the nature of the
case requires a drawing to understand the invention. However,
the Commissioner may require a drawing where the nature of the
subject matter admits of it; this drawing must be filed with
the application. This includes practically all inventions
except compositions of matter or processes, but a drawing may
also be useful in the case of many processes.
The drawing must show every feature of the invention
specified in the claims and is required by the Office rules to
be in a particular form. The Office specifies the size of the
sheet on which the drawing is made, the type of paper, the
margins, and other details relating to the making of the
drawing. The reason for specifying the standards in detail is
that the drawings are printed and published in a uniform style
when the patent issues, and the drawings must also be such that
they can be readily understood by persons using the patent
descriptions.
No names or other identification will be permitted within
the "sight" of the drawing, and applicants are expected to use
the space above and between the hole locations to identify each
sheet of drawings. This identification may consist of the
attorney's name and docket number or the inventor's name and
case number and may include the sheet number and the total
number of sheets filed (for example, "sheet 2 of 4"). The
following rule, reproduced from title 37 of the Code of Federal
Regulations, relates to the standards for drawings:
1.84 Standards for drawings.
(a) Paper and ink. Drawings must be made upon paper which is
flexible, strong, white, smooth, non-shiny and durable.
India ink, or its equivalent in quality, is preferred for
pen drawings to secure perfectly black solid lines. The
use of white pigment to cover lines is not normally
acceptable.
(b) Size of sheet and margins. The size of the sheets on which
drawings are made may either be exactly 81/2 by 14 inches
(21.6 by 35.6 cm.) or exactly 21.0 by 29.7 cm. (DIN size
A4). All drawing sheets in a particular application must
be the same size. One of the shorter sides of the sheet is
regarded as its top.
(1) On 81/2 by 14 inch drawing sheets, the drawings must
include a top margin of 2 inches (5.1 cm.) and bottom and
side margins of 1/4 inch (6.4 mm.) from the edges, thereby
leaving a "sight" precisely 8 by 113/4 inches (20.3 by
29.8 cm.). Margin border lines are not permitted. All work
must be included within the "sight". The sheets may be
provided with two 1/4 inch (6.4 mm.) diameter holes having
their centerlines spaced 11/16 inch (17.5 mm.) below the
top edge and 23/4 inches (7.0 cm.) apart, said holes being
equally spaced from the respective side edges.
(2) On 21.0 by 29.7 cm. drawing sheets, the drawing must
include a top margin of at least 2.5 cm., a left side
margin of 2.5 cm., a right side margin of 1.5 cm., and a
bottom margin of 1.0 cm. Margin border lines are not
permitted. All work must be contained within a sight size
not to exceed 17 by 26.2 cm.
(c) Character of lines. All drawings must be made with
drafting instruments or by a process which will give them
satisfactory reproduction characteristics. Every line and
letter must be durable, black, sufficiently dense and
dark, uniformly thick and well defined; the weight of all
lines and letters must be heavy enough to permit adequate
reproduction. This direction applies to all lines however
fine, to shading, and to lines representing cut surfaces
in sectional views. All lines must be clean, sharp, and
solid. Fine or crowded lines should be avoided. Solid
black should not be used for sectional or surface shading.
Freehand work should be avoided wherever it is possible to
do so.
(d) Hatching and shading. (1) Hatching should be made by
oblique parallel lines spaced sufficiently apart to enable
the lines to be distinguished without difficulty. (2)
Heavy lines on the shade side of objects should preferably
be used except where they tend to thicken the work and
obscure reference characters. The light should come from
the upper left-hand corner at an angle of 45 degrees.
Surface delineations should preferably be shown by proper
shading, which should be open.
(e) Scale. The scale to which a drawing is made ought to be
large enough to show the mechanism without crowding when
the drawing is reduced in size to two-thirds in
reproduction, and views of portions of the mechanism on a
larger scale should be used when necessary to show details
clearly; two or more sheets should be used if one does not
give sufficient room to accomplish this end, but the
number of sheets should not be more than is necessary.
(f) Reference characters. The different views should be
consecutively numbered figures. Reference numerals (and
letters, but numerals are preferred) must be plain,
legible and carefully formed, and not be encircled. They
should, if possible, measure at least one-eighth of an
inch (3.2 mm.) in height so that they may bear reduction
to one twenty-fourth of an inch (1.1 mm.); and they may be
slightly larger when there is sufficient room. They should
not be so placed in the close and complex parts of the
drawing as to interfere with a thorough comprehension of
the same, and therefore should rarely cross or mingle with
the lines. When necessarily grouped around a certain part,
they should be placed at a little distance, at the closest
point where there is available space, and connected by
lines with the parts to which they refer. They should not
be placed upon hatched or shaded surfaces but when
necessary, a blank space may be left in the hatching or
shading where the character occurs so that it shall appear
perfectly distinct and separate from the work. The same
part of an invention appearing in more than one view of
the drawing must always be designated by the same
character, and the same character must never be used to
designate different parts. Reference signs not mentioned
in the description shall not appear in the drawing, and
vice versa.
(g) Symbols, legends. Graphical drawing symbols and other
labeled and labeled representation are used must be
adequately identified in the specification. While
descriptive matter on drawings is not permitted, suitable
legends may be used, or may be required in proper cases,
as in diagrammatic views and flow sheets or to show
materials or where labeled representations are employed to
illustrate conventional elements. Arrows may be required,
in proper cases, to show direction of movement. The
lettering should be as large as, or larger than, the
reference characters.
(h) [Reserved]
(i) Views. The drawing must contain as many figures as may be
necessary to show the invention; the figures should be
consecutively numbered if possible in the order in which
they appear. The figures may be plain, elevation, section,
or perspective views, and detail views of portions of
elements, on a larger scale if necessary, may also be
used. Exploded views, with the separated parts of the same
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