Chapter §11.02 Filing the Patent Application

• Jurisdiction: United States

§11.02 Filing the Patent Application

The process of obtaining a patent begins with drafting a patent application and filing the application in the USPTO.¹¹ A patent applicant can file pro se and need not be represented by a patent attorney or agent. Nevertheless, obtaining competent representation is highly recommended in order to minimize the risk of losing important legal rights.¹²

Two types of patent applications may be filed: provisional applications and nonprovisional applications. Provisional applications are the newer option, available for the first time as of June 8, 1995. Before that date, only nonprovisional applications (then known simply as "applications") could be filed.¹³

[A] Non-Provisional/Regular Application

There is no requirement that a patent applicant begin the patent prosecution process by filing a provisional application. Most applicants proceed by filing the "full-service" nonprovisional (regular) application as their first filing. In fiscal year 2017 alone, over 647,000 nonprovisional patent applications were filed in the USPTO.¹⁴

Section 111(a) of 35 U.S.C. sets forth the requirements for nonprovisional applications. A nonprovisional application must include a specification concluding with at least one claim.¹⁵ The specification is the entire patent application document, also including a written description of the invention and, if necessary to understand the invention (most often the case), drawings.¹⁶

The claims, which are the numbered, single-sentence paragraphs found at the very end of the specification, are its most important part. As further discussed elsewhere in this treatise,¹⁷ the claims define the scope of a patent owner's right to exclude others from making, using, selling, offering to sell, or importing her invention, much as a deed to a plot of land defines the geographic boundaries of its owner's right to prevent trespassing. For the patent system to function properly, patent claims must provide clear notice on which marketplace participants can rely; whether they actually satisfy this mandate is the subject of considerable debate.¹⁸ The interpretation and scope of the claims will be the focal point of any litigation involving the patent; the language of the claims will be scrutinized intensely in analyzing both the validity of the patent and whether it has been infringed. In determining whether to grant a patent in the first instance, the USPTO will compare the language of the claims as presented in a patent applicant with relevant prior technology. The agency's methodology is the subject of the remainder of this chapter.

The Patent Act also requires that a nonprovisional application include an oath by the applicant.¹⁹ For nonprovisional applications filed before September 16, 2012, the applicant was required to state under oath that she believed herself to be "the original and first inventor" of the invention she seeks to patent.²⁰ For applications filed on or after September 16, 2012 in accordance with the America Invents Act of 2011 (AIA), which changed the U.S. patent system from a "first to invent" system to a "first inventor to file" system,²¹ an inventor's oath or declaration merely requires a statement of belief that the individual is an "original" (but not necessarily the first) inventor.²² The AIA also implemented procedures that allow patent applicants to file a "substitute statement" in lieu of the inventor's oath or declaration in certain circumstances. These include instances in which the inventor cannot be located or is under an obligation to assign the invention but unwilling to execute the oath or declaration.²³

The nonprovisional application must also be accompanied by the appropriate fees.²⁴ An annually revised schedule of USPTO fees is available electronically.²⁵ In addition to the filing fee, applicants filing nonprovisional applications on or after December 8, 2004, also pay a "search fee" and an "examination fee." All three fees are due at the time of filing.²⁶ If the applicant is granted a patent, an "issue fee" is also due. Lastly, maintenance fees must be paid periodically during the post-issuance life of the patent to keep it in force.²⁷

Starting in 2006, patent applications could be filed electronically as PDF documents using the USPTO's "EFS-Web" system.²⁸ As of fiscal year 2013, over 98% of patent applications were filed electronically.²⁹ Patent applications may also be filed in traditional hard-copy form.³⁰

After it receives a patent application, the USPTO sends the applicant a filing receipt indicating the filing date and serial number assigned to her application.³¹ The agency assigns to each application a class and subclass from the USPTO classification system.³² Based on this classification, the agency forwards each nonprovisional application to an appropriate "art unit" for substantive examination based on the type of technology that the application appears to involve.³³ Art units are grouped within various USPTO "Technology Centers."³⁴

[B] Provisional Application

Provisional patent applications are governed by 35 U.S.C. §111(b), which provides that a provisional application must have a specification (and drawings, if necessary to understand the invention). Unlike a nonprovisional application, a provisional application need not include any claims or an oath by the applicant. The optional absence of claims, which are the central, most carefully drafted part of a nonprovisional application, makes the provisional application easier and quicker to prepare. Lacking claims, however, the provisional application may not as clearly identify the precise parameters of the invention.

The provisional patent application has proven very popular as a quick and inexpensive means of establishing an early domestic priority date.³⁵ Its filing also allows the patent applicant to apply the words "patent pending" to her products that embody the invention disclosed in the provisional application.³⁶ She may also be able to rely on the provisional application as evidence that she conceived the invention disclosed therein no later than the provisional application's filing date.³⁷ Lastly, the provisional application filing date may also be relied on as a priority date for the subsequent filing of foreign patent applications on the same invention in accordance with the right of priority of the Paris Convention.³⁸

The provisional application is not substantively examined by the USPTO. Rather, it acts as a sort of placeholder. If the applicant elects to do so, she can file a corresponding nonprovisional application directed to the same invention within 12 months of the provisional application's filing date. The nonprovisional application will be substantively examined as described below.³⁹ Assuming that the invention she claims in the nonprovisional patent application was adequately supported by the disclosure of the provisional application in accordance with the disclosure requirements of 35 U.S.C. §112,⁴⁰ the applicant can claim for the later nonprovisional application the benefit of the earlier provisional application's filing date under 35 U.S.C. §119(e)(1), effectively "backdating" her application filing date by up to 12 months.⁴¹

To obtain the benefit of the provisional application's earlier filing date, the later nonprovisional application must also satisfy other requirements. The nonprovisional must have at least one common inventor with the provisional application,⁴² and the nonprovisional must contain or be amended within a certain time to contain a specific reference to the earlier provisional application, identifying it by serial number.⁴³

For example, U.S. Patent No. 8,000,000 ('000 patent), which issued in August 2011, is directed to visual prostheses configured to provide neural stimulation for the creation of artificial vision. The nonprovisional application from which the patent issued was filed on October 8, 2007, naming Robert J. Greenberg, Kelly H. McClure, and Arup Roy as inventors. Under the heading "Cross Reference to Related Applications," the first sentence of the '000 patent reads: "This application claims the benefit of U.S. provisional Patent Application Ser. No. 60/852,875, filed Oct. 19, 2006 for "Data Telemetry Security for an Implantable Device" by Robert J. Greenberg, Kelly H. McClure and Arup Roy, the disclosure of which is incorporated herein by reference."⁴⁴

Practically speaking, claiming the benefit of a provisional application's filing date means that when the USPTO examiner (or a judge or jury in invalidity litigation) compares the claims of the nonprovisional application with the prior art for purposes of assessing novelty and nonobviousness, he will consider only that prior art having an effective date earlier in time than the filing date of the provisional application. When it is necessary for an applicant to claim the benefit of her earlier provisional filing date, and the examiner determines that the claims in question are adequately supported by the disclosure of the provisional application, he will treat the provisional application filing date as the applicant's presumptive invention date for purposes of analyzing novelty and loss of right under 35 U.S.C. §102 (2006).⁴⁵ In other words, if someone else files for a U.S. patent on the same or similar invention during the provisional application's pendency period or publishes a complete description of the invention during that time period, such materials will not count as prior art against the nonprovisional application; the examiner will ignore them.

Another significant benefit of the provisional application is the possibility of effectively extending patent term. That is, if a patent ultimately issues from a corresponding nonprovisional application that successfully claimed the benefit of the provisional application's filing date under 35 U.S.C. §119(e), the patent's expiration date will be 20 years after the later nonprovisional application's filing date (rather than...