How does a provisional application for patent differ from a nonprovisional application for patent?

A provisional application for patent differs from a nonprovisional application for patent in several ways:

• Claims and an oath or a declaration are not required for a provisional application.
• Provisional applications are not examined on their merits.
• A provisional application will become abandoned by the operation of law 12 months from its filing date. (This 12-month period is not counted toward the 20-year term of a patent granted on a subsequently filed nonprovisional application that relies on the filing date of the provisional application.)

TIP: A brochure on Provisional Application for Patent is available by accessing USPTO's Web site at: www.uspto.gov or by calling the USPTO General Information Services at 800.786.9199 or 703.308.4357.

What is a nonprovisional application for patent?

A nonprovisional application for patent is what we think of ordinarily when we talk about applying for a patent. Once granted, it gives the inventor patent rights for a period of 20 years.

What are the basic elements of a nonprovisional application for patent?

There are three basic elements for a nonprovisional application for patent. They are:

• a written document which comprises a specification (description and claims) and an oath or declaration;
• a drawing in those cases in which a drawing is necessary; and
• the filing fee. (The current fee schedule is posted on the USPTO Web site at: www.uspto.gov.)

TIP: The most important part of the application is the specification that defines what you are claiming as the invention or discovery.

Why is the specification so important?

The specification is important because it is what you are trying to patent. If a patent is issued, the claims drafted in the specifications determine the extent of your patent rights.

TIP: The drafting of the claims in the specifications is where the skill and expertise of the patent lawyer or agent comes into play.

What must the specification contain?

In general, the specification must include a written description of the invention and of the manner and process of making and using it. It is required to be in 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 invention.

It must set forth the precise invention for which a patent is solicited so 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 for carrying out the 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 specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter that the applicant regards as the invention.

Can the specification contain more than one claim?

Yes, more than one claim may be presented in the specification as long as they differ from each other. Claims may be presented in independent form-i.e., the claim stands by itself-or in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim that refers back to more than one other claim is considered a "multiple dependent claim."

Are patent applications published?

Yes, most plant and utility patent applications filed on or after Nov. 29, 2000 are required to be published. However, an applicant may request that the application not be published, provided that the invention has not been and will not be the subject of an application filed in a foreign country that requires publication 18 months after filing (or earlier claimed priority date) or under the Patent Cooperation Treaty.

Publication occurs after expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application. Following publication, the application for patent is no longer held in confidence by the Patent Office, and any member of the public may request access to the entire file history of the application.

SIDEBAR: One positive aspect of publication is that an applicant may assert provisional patent rights. These rights provide a patentee with the opportunity to obtain a reasonable royalty from a third party that infringes a published application claim, provided actual notice is given to the third party by the applicant and a patent issues from the application with a substantially identical claim. Thus, damages for pre-patent grant infringement by another are available.

What happens once a completed nonprovisional application is filed?

Once a completed nonprovisional application is filed, it is assigned to a Patent Office Examiner with experience in the technical area covered by the patent claims. The examiner reviews the application for compliance with the legal requirements and makes a search through U.S. patents, publications of patent applications, foreign patent documents and available literature to see if the claimed invention is new, useful and nonobvious and if the application meets the requirements of the patent statute and rules of practice. A decision is reached by the examiner in the light of the examiner's study and the result of the search.

What happens if there are problems with the application?

The applicant or the attorney or agent on record for the applicant will be notified in writing of the examiner's decision by an "Office action." The notice will state the reasons for any adverse action or any objection or additional requirement and provide other information or references that may be useful in aiding the applicant to judge the advisability of continuing the prosecution of his or her application.

Can the examiner reject my claims and refuse to issue a patent?

Yes. If the claimed invention is not directed to patentable subject matter, the claims can be rejected. The claimed invention can be rejected for a lack of novelty or because it differs only in an obvious manner from what is found in the prior art. It is not uncommon for some or all of the claims to be rejected on the first office action by the examiner; relatively few applications are allowed as filed.

What happens then?

An applicant has a right to make a written response to an Office action, either to answer objections or provide further information as requested by the examiner or to contest other adverse action taken by the examiner. It is likely that there will be a number of Office actions and replies during the course of the patent examination.

Can an application be amended?

Yes, an application can be amended before or after the first examination and action as specified in the rules or when and as specifically required by the examiner. After a final rejection of the application or an appeal of a rejected application, the right to amend is severely limited.

What happens when there is a final rejection of the application?

Once an application is finally rejected, an applicant's reply is limited to appeal in the case of rejection of any claim and further amendment is restricted.

An applicant has the right to petition the Director of Patents and Trademarks in the case of objections or requirements not involved in the rejection of any claim. Reply to a final rejection or action must include cancellation of or appeal from the rejection of each claim rejected, and if any claim stands allowed, there must compliance with any requirement or objection as to form. In making a final rejection, the examiner repeats or states all grounds of rejection then considered applicable to the claims in the application.

Is there any other appeal after a final rejection?

Yes, there are two appeal alternatives. An applicant can appeal to the Board of Patent Appeals and Interferences in the USPTO. If the decision of the Board of Patent Appeals and Interferences is still adverse to the applicant, an appeal may be taken to the Court of Appeals for the Federal Circuit or a civil action may be filed against the Director in the United States District Court for the District of Columbia. The Court of Appeals for the Federal Circuit will review the record made in the Patent Office and may affirm or reverse the Patent Office action. In a civil action, the applicant may present testimony in the court, and the court will make a decision.

An alternative to filing an appeal in certain instances is to file a request for continued examination (RCE) or continuation application.

What is an "interference"?

It may happen that another person files a patent application making claims substantially similar to those made in your application, or there is an issued patent with substantially identical claims. A patent can only be granted to one applicant. To resolve these conflicting claims, a proceeding known as an "interference" is instituted by the Patent Office to determine who is the first inventor and entitled to the patent. A very small percentage of patent applications filed become involved in an interference proceeding.

Interference proceedings may also be instituted between an application and a patent already issued, provided that the patent has not been issued, nor the application been published, for more than 1 year prior to the filing of the conflicting application and provided also that the conflicting application is not barred from being patentable for some other reason.

What happens during the interference proceeding?

Each party to the proceeding submits evidence of facts proving when the invention was made. In view of the necessity of proving the various facts and circumstances concerning the making of the invention during an interference, inventors must be able to produce evidence to do this.

If no evidence is submitted, a party is restricted to the date of filing the application as his or her earliest date. The priority question is determined by a board of three administrative patent judges on the evidence submitted. From the decision of the Board of Patent Appeals and Interferences, the losing party may appeal to the Court of Appeals for the Federal Circuit or file a civil action against the winning party in the appropriate United States district court.

What if my patent application is allowed?

Once a patent application is found to be allowable, a notice of allowance will be sent to the applicant or to the applicant's attorney or agent of record, if any, and a fee for issuing the patent must be paid within 3 months from the date of the notice.

When is a patent application considered to be abandoned?

A patent application will be considered abandoned if you do not reply to an Office action within the time allowed or you fail to pay the fee for issuing the patent within 3 months from the date of the notice of allowance.

A provisional application becomes abandoned by operation of law 12 months from its filing date.