Contents of US Patent Applications & Filing Requirements Usman Ansar Khan, Ph.D. Regional Workshop – CIIT October 9, 2013 The content provided in these workshop presentation materials is for general informational purposes only, and neither is intended to constitute nor should be construed as legal opinion or legal advice.  The content herein is only the opinion of the author and is not attributable to H.C. Park & Associates, PLC. Content of US Patent Applications & Filing Requirements

Content of US Patent Applications & Filing Requirements Table of Contents Parts of An Application Filing Requirements Common Drafting Errors Summary Content of US Patent Applications & Filing Requirements

Parts of An Application Title Cross-Reference to Related Application(s) Background Summary of the Invention Brief Description of the Drawings Detailed Description of the Invention Abstract Claims Drawings Content of US Patent Applications & Filing Requirements

Content of US Patent Applications & Filing Requirements Title MPEP § 606 - Heading on the first page of the specification - May be up to 500 characters - Should be as short and specific as possible - Examiners often require amending title if not specific enough - First words of the title such as “An”, “A”, “The”, “Improvement of”, or “New” may be omitted by the USPTO in official records Content of US Patent Applications & Filing Requirements

Cross-Reference to Related Application - First sentence in specification after title Reference to claim the benefit of one or more prior filed copending provisional, non-provisional, or international application - Identify priority application by the application number and filing date - Indicate relationship to priority applications (e.g., continuation, divisional, reissue, etc) Content of US Patent Applications & Filing Requirements

Other Reference Statements - Included only if applicable - Statement regarding rights of federally sponsored research or development (MPEP § 310) - Included names to party of a joint research agreement (37 C.F.R. § 1.71(g)) - Reference to a gene sequence listing, a table, or a computer program listing appendix submitted on compact disc and an incorporation-by-reference of the material on the compact disc (37 C.F.R. § 1.96(c)) Content of US Patent Applications & Filing Requirements

Content of US Patent Applications & Filing Requirements Background MPEP § 608.01(c) Two parts: Field of the Invention - A statement of the field of endeavor to which the invention pertains 2) Description of the related art - A brief description of information known to the inventor(s), possibly including references to specific documents related to the invention - Typically includes a statement pertaining to the problem involved in the prior art (or state of technology) which the invention is drawn toward. Content of US Patent Applications & Filing Requirements

Summary of the Invention MPEP § 608.01(d) - Typically includes one or two specific statements summarizing the invention’s nature and substance - Summary should be directed to the specific invention being claimed - Typically also includes restating (in identical words) of the independent claims and/or dependent claims in narrative English Content of US Patent Applications & Filing Requirements

Brief Description of the Drawings MPEP § 608.01(f) Includes a listing of drawings with a sentence or two describing each drawing Used by USPTO to determine if all figures noted in the specification are present in the application – if there is a missing figure – a Notice of Omitted Item(s) is issued Must include a statement (example included below) if a color figure is also being provided 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. Content of US Patent Applications & Filing Requirements

Detailed Description of the Invention MPEP § 608.01(g) Invention must be described including a process for making the invention in full, clear, concise, and accurate terms Description should be sufficient enough so that any person of ordinary skill in the pertinent art, science, or area could make and use the invention without extensive experimentation (Enablement requirement - MPEP § 2164 and 35 U.S.C. § 112) Should distinguish invention from prior inventions Should disclose best mode for carrying out the invention Should describe each element in the drawings Content of US Patent Applications & Filing Requirements

Content of US Patent Applications & Filing Requirements Abstract MPEP § 608.01(b) - Purpose: To enable USPTO and public to quickly determine the nature of the technical disclosures of the invention - Should point to novelty in invention - Should be in narrative form and limited to 150 words - Single paragraph on a separate page Content of US Patent Applications & Filing Requirements

Content of US Patent Applications & Filing Requirements Claims MPEP § 608.01(i)-§ 608.01(o) Purpose: Define the scope of the protection of the patent application Requirements: Must clearly and particularly point out and distinctly claim the subject matter Applicant(s) regards as the invention Must be separate from the Detailed Description (must begin on separate piece of paper) Must have at least one claim Claims can be independent, dependent, or multiple dependent Determine, in part, fee required to be submitted with an application Content of US Patent Applications & Filing Requirements

Content of US Patent Applications & Filing Requirements Drawings MPEP § 608.01(f) Must show all claimed features of the invention Necessary to include if drawing is required for understanding the subject matter being claimed Should be in black ink, but can be in color if color is necessary to disclose/describe the subject matter being claimed. Multiple color inks should be distinguishable if the colored inks are printed in black and white Content of US Patent Applications & Filing Requirements

Content of US Patent Applications & Filing Requirements Drawings MPEP § 608.01(f) To submit a colored drawing: 1) Must pay fee set forth by 37 C.F.R. § 1.17(h) 2) File 3 sets of the color drawing(s) 3) An amendment to the specification (Brief Description of Drawings section) must be made to indicate that a figure is in color 4) File a petition explaining why the color drawings are necessary Content of US Patent Applications & Filing Requirements

Content of US Patent Applications & Filing Requirements Provisional Applications 2) Non-provisional Applications 15 Content of US Patent Applications & Filing Requirements

Provisional Application Submission/Filing Requirements Can be filed within 12 months of first sale, offer for sale, public use, or publication of invention Must file: Written description and drawings in compliance with 35 U.S.C. § 112, 1st paragraph, and 35 U.S.C. § 113, respectively Filing fee Cover sheet including: - Identification of application as a provisional - Name and residency of Inventor(s) - Title of Invention - Corresponding address - Attorney/Agent and docket information (if applicable) 16 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Submission Requirements - Utility Patent Application Transmittal Form - Fee Transmittal Form - Application Data Sheet (ADS) (optional) - Written Description (with at least one claim) - Drawings (if needed) - Executed Oath or Declaration (37 C.F.R. § 1.47) - Nucleotide and/or Amino Acid Sequence Listing (if applicable) - Power of Attorney and Statement under 37 C.F.R. § 3.73(b) (if applicable) 17 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Utility Patent Application Transmittal Form - Serves as cover page to indicate the types of papers being filed - Should clearly indicate type of application, applicant, title of the invention, and any other enclosures (e.g., specification, oath/declaration) Fee Transmittal Form - Indicates fees being paid and form of payment - Fees include filing, search, and examination fees - Pay fees as small entity or large entity 18 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Application Data Sheet (ADS) - Voluntary Submission - Indicates: - Application type - Priority Information - Applicant information (name, address, citizenship) - Entity Status - Correspondence information - Representative/Attorney Information - Assignment Information 19 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Application Data Sheet (ADS) Statements in Transitional Applications (Nonprovisional applications that are: 1) filed on or after March 16, 2013; and 2) claim foreign priority or domestic benefit of an application filed before March 16, 2013) If a transitional application has ever included a claim to an invention having an effective filing date on or after March 16, 2013, Applicant must provide a statement to that effect 20 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Supplemental ADS - Can be submitted prior to payment of issue fee to correct or update information previously submitted in an ADS or Oath/Declaration Written Description & Drawings - Includes Title, Background, Summary of the Invention, Brief Description of Drawings, Detailed Description of the Invention, Abstract, and Drawings (as described) 21 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Oath/Declaration (37 C.F.R. § 1.63 and § 1.68) - Statement by each inventor that he/she is the original and first inventor of the invention - Identifies full name and citizenship of each inventor - Must be executed (signed and dated) to be valid Oath/Declaration - Must be in a language understood by the inventor (an English translation may be attached to the Oath/Declaration if the original Oath/Declaration is not in English) - Includes the following statements: 1) Executing person(s) understands the contents of the application including the claims 2) Executing person(s) acknowledges the duty of disclosure 22 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Oath/Declaration - Other required information (if ADS not submitted) - Information regarding any claims for foreign priority (specifying the application number, country, day, month, and year of its filing) - Residence and/or mailing address information of inventors 23 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Oath/Declaration - If filing a continuation or divisional application: - No new oath/declaration required provided that 1) no new inventors have been added in the continuation or divisional application; and 2) no new matter is introduced - Copy of executed oath / declaration in parent application should be submitted - Statement requesting the deletion of the name of the person(s) who are not inventors in the child application (if applicable) - If an inventor refuses to sign or cannot be located, 37 C.F.R. § 1.47 may apply 24 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Oath/Declaration - If a continuation-in-part application is filed, a new oath / declaration should be filed A representative may sign on behalf of an inventor due to certain circumstances (e.g., death, insanity, incapacity / handicap of inventor, failure to reach inventor) 37 C.F.R. § 1.42, § 1.43, and § 1.47 may apply 25 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Oath vs. Declaration Oath: - Must be sworn to in the presence of authorized officer (e.g., notary public) Declaration: - Does not require presence of authorized officer (generally preferred) - Includes statement that all information on declaration is true, and that willful false statements are punishable by law and may impact the validity of patent application 26 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Nucleotide and/or Amino Acid Sequence Listing - Relevant section 37 C.F.R. § 1.821 Power of Attorney - Written document through which inventors or assignee of patent application authorizes a patent practitioner to act on his/her behalf - Must be in writing and signed by inventor/assignee of application - May name only 1) one or more joint inventors; 2) a registered patent practitioner associated with a Customer Number; or 3) 10 or less registered patent practitioners as authorized representatives 27 Content of US Patent Applications & Filing Requirements

Non-Provisional Application Statement under 37 C.F.R. § 3.73(b) or § 3.73(c) - Establishes right of assignee to take action for an application by signing a statement identifying the assignee, and providing either: 1) Documentary evidence of a chain of title from the original owner to the assignee (including a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation); or 2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the USPTO (e.g., reel and frame number). 28 Content of US Patent Applications & Filing Requirements

Preliminary Amendment An amendment submitted to the USPTO prior to the mailing of a First Office Action by the USPTO May be submitted either: 1) At the time of filing of an application; or 2) After filing of an application, but prior to mailing of a first Office Action If 1, then the preliminary amendment is treated as part of the original disclosure. 29 Content of US Patent Applications & Filing Requirements

Preliminary Amendment Amendments made in a preliminary amendment may be included in the published version of the application If amendments to the specification are made in a preliminary amendment, the USPTO will issue a “Notice to File Corrected Application Papers” and require applicant(s) to submit a Substitute Specification If an amendment to the specification is made in a preliminary amendment only to add or amend a benefit claim to a prior-filed application, a substitute specification is not necessary Any amendment filed after filing of a RCE but prior to issuance of a Office Action is not a preliminary amendment 30 Content of US Patent Applications & Filing Requirements

Preliminary Amendment If the preliminary amendment is filed along with an application and includes new matter or subject matter not supported by the application & the oath/declaration submitted with the application does not include a reference to the preliminary amendment, the Examiner may require the applicant(s) to submit a supplemental oath/declaration referring to the preliminary amendment 31 Content of US Patent Applications & Filing Requirements

Preliminary Amendment A preliminary amendment may not be entered if: 1) the preliminary amendment cancels all the claims without presenting any new or substitute claims; 2) the preliminary amendment interferes with the preparation of the first Office Action A preliminary amendment will be entered if: 1) the preliminary amendment is filed within 3 months of filing of the application 2) the preliminary amendment is filed within 3 months of the day the national stage of a 371 application is entered 3) the preliminary amendment is filed no later than the filing date of a continued prosecution application 32 Content of US Patent Applications & Filing Requirements

Common Drafting Errors Lack of claim support in specification and drawings Alternative vs. Required language (and vs. or) Preferred embodiments Patent profanity (must, required, only, should, necessary, important, critical, essential, unnecessary) Narrowly defining and limiting terms 33 Content of US Patent Applications & Filing Requirements

Common Drafting Errors Means-plus-function language Consistency Solely focusing on invention and not potential infringers Not describing alternatives 34 Content of US Patent Applications & Filing Requirements

Content of US Patent Applications & Filing Requirements Summary Application Title Cross-Reference to Related Application(s) Background Summary of the Invention Brief Description of the Drawings Detailed Description of the Invention Abstract Claims Drawings If applicable Sequence Listing Preliminary Amendment Fees Transmittal Forms Written Description & Drawings Oath / Declaration Assignment ADS Power of Attorney & Statement under 3.73b Filing Requirements 35 Content of US Patent Applications & Filing Requirements

Content of US Patent Applications & Filing Requirements Questions ? 36 Content of US Patent Applications & Filing Requirements