1. How long does patent protection last once my utility or plant patent is granted?
Answer: For applications filed on or after June 8, 1995, utility and plant patents are granted for a term which begins with the date of the grant and usually ends 20 years from the filing date of the application or the filing date of the earliest nonprovisional application for which benefit is claimed. Utility patents are also subject to the payment of appropriate maintenance fees. There are no maintenance fees for plant patents.
2. How long does patent protection last once my design patent is granted?
Answer: The term of a design patent is 15 years from the date of patent grant for design patent applications filed on or after 5/13/2015 or 14 years from date of patent grant for design patent applications that were filed before 5/13/2015. No maintenance fees are required for design patents.
3. What subject matter may be covered by a design patent?
Answer: In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof). The subject matter of a design patent application may relate to the configuration or shape of an article, the surface ornamentation applied to an article, or the combination of configuration and surface ornamentation.
4. What subject matter may be covered by a utility patent?
Answer: In a utility patent application, the subject matter which is claimed may be a new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof.
5. Can I file both a utility patent application and design patent application for the same invention?
Answer: Yes, in certain situations where the invention resides both in its utility and its ornamental appearance, both a utility patent application and a design patent application may be filed on an article.
6. Can I add new subject matter, such as additional details, after I have filed a patent application (any type of patent application)?
Answer: No. New subject matter (i.e., new matter) cannot be added to a patent application after the filing date of the application.
7. When can I use the phrase “patent pending” to identify or mark my invention?
Answer: Once you have filed a patent application and while the patent application is pending, you may identify or mark your invention “patent pending” or “patent applied for,” however patent protection does not begin until the actual grant of the patent. The phrases “patent pending” or “patent applied for” have no legal effect, but only give information that an application for patent has been filed in the USPTO. The law imposes a fine on those who use these phrases falsely to deceive the public.
8. What are the advantages of filing a provisional patent application if it never becomes a patent?
Answer: A provisional patent application provides a simplified filing with a lower initial investment with 12 months to assess the invention's commercial potential before committing to the higher cost of filing and prosecuting a nonprovisional patent application. A provisional application also establishes an official United States patent application filing date for the invention. It is important to note, however, in order for a nonprovisional application to obtain benefit of the earlier provisional application’s filing date, the nonprovisional application must be filed within one year from the filing date of the provisional patent application. In addition, a provisional patent application cannot be filed for a design. More information is available at Provisional Application for Patent on the USPTO website.
9. Can the USPTO recommend a patent practitioner?
Answer: No, however you can search for a registered patent practitioner (i.e., patent attorney or patent agent) located in your area, e.g., by city and state, at Finding a registered patent practitioner on the USPTO website.
10. What should I use for the “Title of Invention”?
Answer: The title should be a brief description of what the invention is or does (not the trade name under which you plan to market the invention). The title should contain fewer than 500 characters, and it should not begin with “a,” “an,” or “the,” or the words “new,” “improved,” “improvement of,” or “improvement in.” For design applications, the title must designate the particular article.
11. What do I need to do to qualify for micro entity status under the gross income basis? Do I need to provide income tax records or other documentation?
Answer: To qualify for micro entity status under the gross income basis, you must meet the gross income limit as well as the application filing limit as noted on form PTO/SB/15A. By filing form PTO/SB/15A, you are certifying you meet the filing requirements of micro entity status, based on the gross income limit, as well as the application filing limit (item number 2 on the form). Tax records or other documentation is not required and should not be provided. If there are multiple inventors associated with your invention, each inventor must meet the gross income and application filing limits to qualify for micro entity status and file a PTO/SB/15A form. Note that form PTO/SB/15A must be properly signed.
12. Can I send photographs instead of drawings?
Answer: Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. However, the USPTO will accept photographs in utility and design patent applications if photographs are the only practicable medium for illustrating the claimed invention. To be acceptable, such photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. While black and white photographs may be submitted in a provisional patent application, this may limit the effectiveness of the provisional application since photographs may not clearly show all of the details of the invention. Please note that photographs scanned into your file at the USPTO may not clearly show the details of your invention as well as drawings.
13. How do I change the correspondence address of record for a specific patent application or patent?
Answer: File Form PTO/AIA/122 to change the correspondence address of record for a pending patent application. File Form PTO/AIA/123 to change the correspondence address of record for an issued patent.
14. How do I respond to a “Notice to File Missing Parts” that I received?
Answer: A Notice to File Missing Parts will identify the item(s) required. A properly signed response and the required items, including any fees, must be received within the time period for reply that is set forth in the notice or must be mailed/transmitted within the time period for reply together with a proper certificate of mailing or transmission (Form PTO/SB/92). The Inventors Assistance Center (IAC) can review the notice you received and help you understand what is required.
15. How do I add, revoke or update the Power of Attorney (POA) in my application?
Answer: The USPTO has power of attorney forms available on its patents forms web page.
If the filing date of your application is on or after September 16, 2012:
Use form AIA/82 to appoint one or more patent practitioners.
Use form AIA/81 to appoint one or more joint inventors.
Use form AIA/81A if your application has issued as a patent.
Note that these forms must be signed by all parties identified as the applicant. Additional guidance on the specific power of attorney forms to be used for applications filed on or after September 16, 2012, can be found on the USPTO website.
If your application was filed before September 16, 2012:
Use form PTO/SB/81 to appoint one or more patent practitioners.
Use form PTO/SB/81A if your application has issued as a patent.
16. What documents and forms should I submit when filing a provisional patent application ?
Answer: Generally, there are five (5) items that you should submit when filing a provisional patent application. These include:
- A detailed written description of the invention that sets forth what the invention is and how it works;
- Drawings illustrating the invention if drawings are necessary for the understanding of the invention;
- A Provisional Application for Patent Cover Sheet (form PTO/SB/16);
- Certification of Micro Entity Status (form PTO/SB/15A) for each applicant/inventor if claiming micro entity status based on gross income basis;
- The appropriate filing fee.
Note: Although a provisional patent application will be accorded a filing date regardless of whether any drawings are submitted, applicants should file any drawings necessary for the understanding of the invention with the application. A drawing necessary to understand the invention cannot be introduced into an application after the filing date because of the prohibition against new matter. Furthermore, amendments are not ordinarily permitted in a provisional application.
17. What documents and forms should I submit when filing a nonprovisional utility application?
Answer: A nonprovisional utility application must include a detailed written description of the invention that sets forth what the invention is and how it works and drawings illustrating the invention if drawings are necessary for the understanding of the invention. The specification should include at least one claim. The forms that should be filed will vary depending on whether the application is filed by mail or via the USPTO’s electronic filing system (e.g., EFS-Web). Generally, the necessary forms include: PTO/AIA/01 or PTO/AIA/08, PTO/AIA/14, PTO/AIA/15, PTO/SB/17, and, if certifying micro entity status, PTO/SB/15A or PTO/SB/15B. These forms are available on the USPTO website on the patents forms page. Please note that when you file in paper (e.g., by mail), a non-electronic filing fee is required in addition to all other associated fees which apply. See the current USPTO Fee Schedule for the current fee amounts.
18. Can I use PTO/AIA/08 in lieu of PTO/AIA/01 for the Declaration associated with my Application Data Sheet (ADS), form PTO/AIA/14?
19. What does the term “Priority Mail Express Label Number” mean on various transmittal and cover sheet forms that may be used to file new applications?
Answer: Priority Mail Express™ is a type of domestic delivery service offered by the U.S. Postal Service, and each Priority Mail Express™ envelope or box is given a label number that is used to track delivery of the item. If you mail your application to the USPTO by Priority Mail Express™, write the label number in the “Priority Mail Express Label Number” box of the transmittals or cover sheets before placing the application papers into the envelope or box. When the USPTO receives your Priority Mail Express envelope/box, the filing date of the enclosed application papers will be the date the U.S. Postal Service received your envelope/box, rather than the date it arrived at the USPTO, provided that the application papers satisfy the requirements for a filing date. If you send in your application any other way (e.g., first class mail, certified mail, delivery by a delivery service), the filing date of your application papers will be the date the application papers are received at the USPTO headquarters in Alexandria, Virginia, provided that the application papers satisfy the requirements for a filing date.
20. Who do I contact for assistance with various patent forms?
Answer: The Inventors Assistance Center (IAC) may be consulted if you need assistance regarding which forms are needed for your application, how to fill out these forms, which lines can be left blank, and any general questions related to the forms themselves.
The Electronic Business Center (EBC) should be consulted when technical questions or issues arise regarding how to create Adobe Portable Document Format (PDF) documents, how to view or upload these documents into the USPTO’s electronic filing system (e.g., EFS-Web), or any problems encountered when electronically filing these forms with your application.
21. On various USPTO patent forms, what do I fill in on lines such as “Attorney Docket Number”, and “Registration Number,” etc.?
Answer: These lines are used when the forms are being completed and signed by a patent practitioner (i.e., a patent attorney or patent agent), otherwise they should be left blank. As a general rule, when filling out forms leave lines blank where the information being requested is not applicable. If do you not understand what information is being requested, you may wish to consult with the Inventors Assistance Center (IAC) to make sure all required information is provided.
22. How do I identify information being added or deleted in an Application Data Sheet (ADS) (e.g., form AIA/14)?
Answer: Underline information that is being added, and strike-through or bracket (e.g., [bracket]) information that is being deleted.
23. What is a claim?
Answer: A claim defines the metes and bounds of the subject matter to be protected by the patent grant, similar to the way property lines define the metes and bounds of physical property. The claims define the scope of protection of the patent and thus are a critical part of your patent. The claim or claims must appear at the end of the specification and begin on a separate page. Claim writing can be difficult especially for someone without experience in drafting claims. The USPTO recommends using a registered attorney or agent to assist in preparing and prosecuting a patent application. Some information regarding claim drafting is available on the 2018 Inventor Info Chat web page on the USPTO website.
A utility patent application must contain at least one claim. The claim or claims must particularly point out and distinctly claim the subject matter that the inventor or inventors regard as the invention.
A design patent application may only include a single claim. The claim defines the design which applicant wishes to patent. The claim should normally be in formal terms to “The ornamental design for (the article which embodies the design or to which it is applied) as shown.” The description of the article in the claim should be consistent in terminology with the title of the invention.
A plant patent application may only include a single claim. The claim shall be in formal terms to the plant as shown and described.
24. What are the recommended margins, font size, and line spacing requirements for the specification, including the claims and abstract, for my patent application?
Answer: It is recommended that each page have a top margin of 3/4 inch, a left side margin of 1 inch, a right side margin of 3/4 inch and a bottom margin of 3/4 inch. Note that the rule requires that each page must have a top margin of at least 3/4 inch, a left side margin of at least 1 inch, a right side margin of at least 3/4 inch and a bottom margin of at least 3/4 inch. The text must be a nonscript font (e.g., Arial, Times Roman, or Courier), preferably with a font size of 12, and spacing between lines must be 1.5 or double spaced. Note: the claims and abstract each must begin on a separate page.
25. Today is the last day to file my reply to an Office action or notice to the USPTO. Other than filing electronically via the USPTO’s electronic filing system (e.g., EFS-Web), what other options are available?
Answer: You may mail your reply using the U.S. Postal Service with sufficient postage as first class mail and include a Certificate of Mailing or Transmission form (PTO/SB/92). The USPTO will then consider the date you placed your reply in the U.S. Postal Service mailbox (i.e., the date identified on PTO/SB/92) as the date for determining whether the reply was timely filed.
You may also fax your reply to the USPTO and include a Certificate of Mailing or Transmission form (PTO/SB/92). The complete facsimile transmission must be sent to the USPTO’s Official Fax Number 571-273-8300. The USPTO will then consider the date you faxed your reply to the USPTO’s Official Fax Number (i.e., the date identified on PTO/SB/92) as the date for determining whether the reply was timely filed.
Note: While a response to an Office action may be sent by facsimile to the USPTO’s Official Fax Number, there are some situations in which facsimile transmissions are not permitted. For example, new patent applications and other correspondence necessary to accord a filing date to an application (including a reply to a Notice of Incomplete Application) are not permitted to be sent by facsimile transmission. In addition, because the facsimile transmission process may degrade the quality of the drawing, it is not recommended that drawings be sent by facsimile transmission.
26. Must I file a provisional patent application before filing a nonprovisional utility patent application?
Answer: No. There is no requirement to file a provisional patent application before filing a nonprovisional utility patent application.
27. Can I make changes to the drawings I have already submitted?
Answer: Yes, but the changes must not add any new matter (i.e., new technical details or features). An amended drawing must be labeled “Replacement Sheet” in the top margin and the replacement sheet must contain the same number of figures, even if only one of the figures is being amended. Any replacement sheet of drawings must be an attachment to an amendment document. All changes to the drawings must be explained, in detail, in either the drawing amendment or remarks section of the amendment document.
28. How can I get an extension of time in order to reply to an Office action or notice?
Answer: You should carefully review the Office action or notice to determine if extensions of time are available and what is the maximum extension of time that may be obtained. If extensions of time are available, you may request an extension of time by submitting form PTO/AIA/22 and paying the appropriate extension of time fee. Extensions of time are available in increments from one to five months, but the type of action or notice you are responding to will determine the maximum number of months that you may obtain. The petition fee associated with your extension of time depends on your Entity status (Micro/Small/Large) and the number of months being requested.
29. What is a customer number?
Answer: A customer number is a unique number created by the USPTO and is used to designate the correspondence address for your patent application(s). Using a customer number to designate the correspondence address will ensure that you can access your patent application information using your registered USPTO.gov account. Use form SB/125 to request a customer number.
30. Can a certified copy of a foreign priority application be filed electronically through the USPTO’s electronic filing system (e.g., EFS-Web)?
Answer: No. A certified copy of a foreign priority document is required by statute. A copy of the certified copy filed by applicant, including a photocopy , e.g., a PDF submitted via EFS-Web or a facsimile copy is not acceptable. Unless the USPTO receives the priority document through the electronic priority document exchange (PDX) program, a certified copy of a foreign priority document must be mailed to, or hand-carried to the USPTO. For more information about the PDX program search “PDX” on the USPTO website at www.uspto.gov or visit the Electronic Priority Document Exchange (PDX) Program.
31. What can I do if my patent application becomes abandoned?
Answer: There are different types of petitions that can be filed to either withdraw the holding of abandonment or to revive the abandoned application depending on the particular situation. Information regarding a petition to withdraw the holding of abandonment based on failure to receive an Office action is available on the USPTO website at 06 - Withdrawal of abandonment based on failure to receive an office action. Information regarding a petition to withdraw the holding of abandonment based on evidence that a reply was timely mailed or filed is available at 07 - Withdrawal of abandonment based on evidence that a reply was timely mailed or filed. Information regarding a petition to revive an unintentionally abandoned application based on the applicant’s failure to timely respond to an Office action or notice is available at 09 - Revival based on unintentional delay
32. What items do I need to submit in order to revive an application that became unintentionally abandoned based on the failure to file a timely and proper reply to a notice or action?
Answer: You will need to submit the following:
- Form PTO/SB/64 (which includes the required statement of unintentional delay) that is properly signed;
- The petition fee (see the USPTO Fee Schedule for the current fee amount);
- A proper reply to the notice or action; and
- A terminal disclaimer if you are filing the petition for a design patent application.
33. Is there a minimum age for filing a patent application?
Answer: No. There is no minimum age for filing a patent application but any person named as an inventor must truly be an inventor and must be competent to execute the oath or declaration, which requires that the inventor review and understand the contents of the application.