Patent Filing Requirements in USPTO - in a Nutshell

Patent Filing Requirements in USPTO – in a Nutshell

There are certain patent filing requirements in USPTO that an inventor should meet in order to get a patent grant for their invention. These requirements include various documents like patent application, which again comprises inventors and/or applicant’s information, request form and detailed description. Additionally, you can attach patent drawings, if required.

Also, there are certain milestones to reach before going for the crucial step of patent filing in the USPTO office.

For all this, an inventor can also take the assistance of patent drafting and filing services by agents and attorney. The USPTO itself suggest the inventors to go with the assistance of patent agents/attorneys for patent filing and other proceedings.

Here, we will discuss those patent filing requirements in USPTO so that your patent application goes through a seamless and smooth prosecution.


Patent Filing Requirements in USPTO

Patent Filing Requirements in USPTO –  The Major Ones

There are certain basic yet crucial necessities that comprise a patent application. These fundamental requirements are as per the rules of USPTO. Also, these work in favor of the inventor if he/she meets those basic necessities.

  • Type of IP protection you seek: you may come up with an invention, but before filing, be clear with the type of protection you seek for your invention. This includes patent, trademark, copyright, trade secrets or a combination of these. 
  • Patentable Invention: once you are clear with the type of protection you seek, determine whether your invention is patentable or not. For this, your invention needs to meet the patentability criteria, which includes: Novelty, Non-Disclosure, industrial applicability, patentable subject-matter and non-obvious. For this, a thorough prior-art search solves the purpose. 
  • Kind of patent protection: there are 3 types of patents- Utility, Design, and plant. The type of patent protection you seek depends totally on your invention. So, determine whether it goes with a utility patent, design or plant or a combination of two or all.

Once you are sure about the type of IP and/patent protection you are going to seek.

You can now proceed with the patent filing proceedings. But again, there are multiple patent filing requirements in USPTO that act as a precursor to the patent filing. These factors will make you mentally prepared for all the filing proceedings that take place at the patent office.

These are:

  • Boundaries of Patent Protection: decide whether you want to file an international or a national application. The procedure for filing both the type of applications is different. One can file a direct application, PCT application or application to Paris convention countries for international applications.
  • Type of Patent Application: determine the type of patent application you want to file. You can file a provisional (incomplete) before filing a non-provisional (complete) patent application. Both serve their own purpose. File complete application within 12 months of filing a provisional application. Be mindful of submitting the application(s) with all the required parts.
  • Complete Prosecution Cost: there is a fee for the different hierarchy of proceedings as the patent application moves. A patent application is subject to a basic fee and additional fees. Additional fees include excess claim fees, fee depending upon the number of office actions and so on.
  • Elements of Patent Application: there are many elements that comprise a patent application. They make up what we call a complete patent application as per the guidelines of USPTO. It should meet the requirements of 35 U.S.C. 111(a).
  • Hiring a Patent Attorney: consider hiring an attorney while drafting and filing a patent application. This is so because an attorney knows patent office rules, and identifies what to add in a patent application. Be mindful of signing a Non-Disclosure Agreement to safeguard your invention prior to sharing information.

Therefore, before going for self-patent filing learn whether it is a wise decision or not.

Working with Patent Office Examiner

In case if your application is incomplete for some reasons, you will get a notification from the patent office. There is a time period of 3 months for giving a response to an office action. Make sure you or your agent corrects the omission within the specified time. Delay will lead to disposal of your patent application.

Once your patent application meets the USPTO requirements, it proceeds with the prosecution. Here the patent office examiner determines whether the application meets the requirements of 35 U.S.C. 111(a). Here 2 things can happen:

  • Meets the requirements of USPTO:  the application will proceed for patent grant.
  • Fails to meet the USPTO requirements: you will receive an office action with errors. If you fail to meet those requirements then it will lead to the abandonment of your application.

If they reject your application twice, you may make an appeal to the Patent Trial and Appeal Board (PTAB).

You can view your pending patent application and documents status in Private PAIR.

Note: if you hire a patent attorney, the USPTO will communicate all the proceedings to the agent or attorney only. USPTO doesn’t engage in double correspondence with the patent applicant and also the agent.

Assistance at The Patent Filing Company

TPFC has a team of experienced personnel who will help you meet all the patent filing requirements in USPTO. We cover 300+ experts provide our services in over 45+ countries. Our patent experts and advisors work up to their full potential to provide world-class advice and IP protection. Also, we do ensure you receive quick responses and results with no compromise on its quality. If you want to know more, do give a visit to our service page.

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