General Information Concerning Patents

Contents

Functions of the Patent and Trademark Office

Purpose of this booklet

What is a patent?

Patent laws

What can be patented

Novelty and other conditions for obtaining a patent

The United States Patent and Trademark Office

Publications of the Patent and Trademark Office

General information and correspondence

Library, search room searches

Attorneys and agents

Disclosure Document

Who may apply for a patent

Application for patent

Oath or declaration, signature

Filing Fees

Specification (description and claims)

Drawing

Models, exhibits, specimens

Examination of applications and proceedings in the Patent and Trademark Office

Amendments to application

Time for response and abandonment

Appeal to the Board of Patent Appeals and Interferences and to the courts

Interferences

Allowances and issue of patent

Nature of patent and patent rights

Maintenance Fees

Correction of patents

Assignments and licenses

Infringement of patents

Patent marking and 'patent pending'

Design patents

Plant patents

Treaties and foreign patents

Foreign applicants for United States patents

Fees and payment

Answers to questions frequently asked

FUNCTIONS OF THE PATENT AND TRADEMARK OFFICE

The Patent and Trademark Office is an agency of the U.S. Department of Commerce.

The role of the Patent and Trademark Office is to provide patent protection for inventions and to register trademarks. It serves the interest of inventors and businesses with respect to their inventions and corporate, product, and service identifications. It also advises and assists the bureaus and offices of the Department of Commerce and other agencies of the Government in matters involving 'intellectual property' such as patents, trademarks and semiconductor mask works. Through the preservation, classification, and dissemination of patent information, the Office aids and encourages innovation and the scientific and technical advancement of the Nation.

In discharging its duties, the Patent and Trademark Office examines applications and grants patents on inventions when applicants are entitled to them; it publishes and disseminates patent information, records assignments of patents, maintains search files of U.S. and foreign patents and a search room for public use in examining issued patents and records. It supplies copies of patents and official records to the public. Similar functions are performed relating to trademarks.

PURPOSE OF THIS BOOKLET

The purpose of this booklet is to give the reader some general information about patents and the operations of the Patent and Trademark Office. (A similar booklet is available on the subject of trademarks.) It attempts to answer many of the questions commonly asked of the Patent and Trademark Office but is not intended to be a comprehensive textbook on patent law or a guide for the patent lawyer. Consequently, many details are omitted and complications have been avoided as much as possible. It is hoped that this pamphlet will be useful to inventors and prospective applicants for patents, to students, and to others who may be interested in patents by giving them a brief general introduction to the subject.

Because of the large amount of mail received by the Patent and Trademark Office, a copy of this pamphlet, with particular sections marked when appropriate, may be used by the Patent and Trademark Office to reply to inquiries and is intended as a courtesy reply.

Additional information may be obtained from the publications listed on pages 6 and 7. The Patent and Trademark Office does not publish any textbooks on patent law, but a number of such works for the specialist and for the general reader have been published by private concerns.

WHAT IS A PATENT?

A patent for an invention is a grant of a property right by the Government to the inventor (or his heirs or assigns), acting through the Patent and Trademark Office. The term of the patent is 17 years from the date the patent is granted, subject to the payment of maintenance fees.

The right conferred by the patent grant extends throughout the United States and its territories and possessions.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, 'the right to exclude others from making, using, or selling' the invention. What is granted is not the right to make, use, or sell, but the right to exclude others from making, using, or selling the invention.

Most of the statements in the preceding paragraphs will be explained in greater detail in later sections.

Some persons occasionally confuse patents, copyrights, and trademarks. Although there may be some resemblance in the rights of these three kinds of intellectual property, they are different and serve different purposes.

Copyrights

A copyright protects the writings of an author against copying. Literary, dramatic, musical and artistic works are included within the protection of the copyright law, which in some instances also confers performing and recording rights. The copyright goes to the form of expression rather than to the subject matter of the writing. A description of a machine could be copyrighted as a writing, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered in the Copyright Office in the Library of Congress. Information concerning copyrights may be obtained from the Register of Copyrights, Library of Congress, Washington, D.C. 20559. (Telephone 202/479-0700)

Trademarks

A trademark relates to any word, name, symbol or device which is used in trade with goods to indicate the source or origin of the goods and to distinguish them from the goods of others. Trademark rights may be used to prevent others from using a confusingly similar mark but not to prevent others from making the same goods or from selling them under a non- confusing mark. Similar rights may be acquired in marks used in the sale or advertising of services (service marks). Trademarks and service marks which are used in interstate or foreign commerce may be registered in the Patent and Trademark Office. The procedure relating to the registration of trademarks and some general information concerning trademarks is given in a pamphlet called Basic Facts About Trademarks.

PATENT LAWS

The Constitution of the United States gives Congress the power to enact laws relating to patents. in Article I, section 8, which reads 'Congress shall have power... to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.' Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The law now in effect is a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code.

The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the Patent and Trademark Office for administering the law relating to the granting of patents, and contains various other provisions relating to patents.

WHAT CAN BE PATENTED

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person who 'invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent,' subject to the conditions and requirements of the law. By the word 'process' is meant a process or method, and new processes, primarily industrial or technical processes, may be patented. The term 'machine' used in the statute needs no explanation. The term 'manufacture' refers to articles which are made, and includes all manufactured articles. The term 'composition of matter' relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything which is made by man and the process for making them.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.

The patent law specifies that the subject matter must be 'useful.' The term 'useful' in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

Interpretations of the statute by the courts have defined the limits of the field of subject matter which can be patented, thus it has been held that methods of doing business and printed matter cannot be patented.

In the case of mixtures of ingredients, such as medicines, a patent cannot be granted unless there is more to the mixture than the effect of its components. (So called patent medicines are ordinarily not patented, the phrase 'patent medicine' in this connection does not have the meaning that the medicine is patented.) A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter sought to be patented is required.

NOVELTY AND OTHER CONDITIONS FOR OBTAINING A PATENT

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if--

'(a) The invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

'(b) The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States....'

If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a valid patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he must apply for a patent before one year has gone by, otherwise any right to a patent will be lost.

Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before so that it may be said to be unobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another, or changes in size, are ordinarily not patentable.

THE UNITED STATES PATENT AND TRADEMARK OFFICE

Congress established the United States Patent and Trademark Office to issue patents on behalf of the Government. The Patent and Trademark Office as a distinct bureau may be said to date from the year 1802 when a separate official in the Department of State who became known as 'Superintendent of Patents' was placed in charge of patents. The revision of the patent laws enacted in 1836 reorganized the Patent and Trademark Office and designated the official in charge as Commissioner of Patents and Trademarks. The Patent and Trademark Office remained in the Department of State until 1849 when it was transferred to the Department of Interior. In 1925 it was transferred to the Department of Commerce where it is today.

The Patent and Trademark Office administers the patent laws as they relate to the granting of patents for inventions, and performs other duties relating to patents. It examines applications for patents to determine if the applicants are entitled to patents under the law and grants the patents when they are so entitled; it publishes issued patents and various publications concerning patents, records assignments of patents, maintains a search room for the use of the public to examine issued patents and records, supplies copies of records and other papers, and the like. Similar functions are performed with respect to the registration of trademarks. The Patent and Trademark Office has no jurisdiction over questions of infringement and the enforcement of patents, nor over matters relating to the promotion or utilization of patents or inventions.

The head of the Office is the Assistant Secretary and Commissioner of Patents and Trademarks and his staff includes the Deputy Assistant Secretary and Deputy Commissioner, several assistant commissioners, and other officials. As head of the Office, the Commissioner superintends or performs all duties respecting the granting and issuing of patents and the registration of trademarks; exercises general supervision over the entire work of the Patent and Trademark Office; prescribes the rules, subject to the approval of the Secretary of Commerce, for the conduct of proceedings in the Patent and Trademark Office and for recognition of attorneys and agents; decides various questions brought before him by petition as prescribed by the rules, and performs other duties necessary and required for the administration of the Patent and Trademark Office.

The work of examining applications for patents is divided among a number of examining groups, each group having jurisdiction over certain assigned fields of technology. Each group is headed by a group director and staffed by a number of examiners. The examiners review applications for patents and determine whether patents can be granted. An appeal can be taken to the Board of Patent Appeals and Interferences from their decisions refusing to grant a patent and a review by the Commissioner of Patents and Trademarks may be had on other matters by petition. The examiners also identify applications that claim the same invention and initiate proceedings, known as interferences, to determine who was the first inventor.

In addition to the examining groups, other offices perform various services, such as receiving and distributing mail, receiving new applications, handling sales of printed copies of patents, making copies of records, inspecting drawings, and recording assignments.

At present, the Patent and Trademark Office has about 4,400 employees, of whom about half are examiners and others with technical and legal training. Patent applications are received at the rate of over 170,000 per year. The Patent and Trademark Office receives over five million pieces of mail each year.

PUBLICATIONS OF THE PATENT AND TRADEMARK OFFICE

Patents--The specification and accompanying drawings of all patents are published on the same day they are granted and printed copies are sold to the public by the Patent and Trademark Office. Over 5,000,000 patents have been issued.

Printed copies of any patent, identified by its patent number, may be purchased from the Patent and Trademark Office. See fee schedule.

Future patents classified in subclasses containing subject matter of interest may be obtained, as they issue, by prepayment of a deposit and a service charge. For the cost of such subscription service, a separate inquiry should be sent to the Patent and Trademark Office.

Official Gazette of the United States Patent and Trademark Office. -- The Official Gazette of the United States Patent and Trademark Office is the official journal relating to patents and trademarks. It has been published weekly since January 1872 (replacing the old 'Patent Office Reports'), and is now issued each Tuesday in two parts, one describing patents and the other trademarks. h contains a claim and a selected figure of the drawings of each patent granted on that day; notices of patent and trademark suits; indexes of patents and patentees, list of patents available for license or sale; and much general information such as orders, notices, changes in rules, changes in classification, etc. The Official Gazette is sold on subscription and by single copies by the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402.

The illustrations and claims of the patents are arranged in the Official Gazette according to the Patent and Trademark Office classification of subject matter, permitting ready reference to patents in any particular field. Street addresses of patentees and a geographical index of residents of inventors are included. Copies of the Official Gazette may be found in public libraries of larger cities.

Index of Patents. -- This annual index to the Official Gazette is currently in two volumes, one an index of patentees and the other an index by subject matter of the patents. Sold by Superintendent of Documents.

Index of Trademarks. -- An annual index of registrants of trademarks. Sold by Superintendent of Documents.

Manual of Classification. -- A looseleaf book containing a list of all the classes and subclasses of inventions in the Patent and Trademark Office classification systems, a subject matter index, and other information relating to classification. Substitute pages are issued from time to time. Annual subscription includes the basic manual and substitute pages. Sold by Superintendent of Documents.

Classification Definitions -- Contains the changes in classification of patents as well as definitions of new and revised classes and subclasses. Sold by Patent and Trademark Office.

Title 37 Code of Federal Regulations. -- Includes rules of practice for Patents, Trademarks and Copyrights. Available from the Superintendent of Documents.

Basic Facts about Trademarks -- Contains general information for the layman about applications for, and registration of, trademarks and service marks. Copies may be purchased from Superintendent of Documents.

Directory of Registered Patent Attorneys and Agents Arranged by States and Countries -- An alphabetical and geographical listing of patent attorneys and agents registered to practice before the U.S. Patent and Trademark Office. Sold by Superintendent of Documents.

Manual of Patent Examining Procedure -- A loose-leaf manual which serves primarily as a detailed reference work on patent examining practice and procedure for the Patent and Trademark Office’s Examining Corps. Subscriptions service includes basic manual, quarterly revisions, and change notices. Sold by Superintendent of Documents.

The Story of the United States Patent Office. -- A chronological account of the development of the U.S. Patent and Trademark Office and patent system and of inventions which had unusual impact on the American economy and society. Sold by Superintendent of Documents.

GENERAL INFORMATION AND CORRESPONDENCE

All business with the Patent and Trademark Office should be transacted by writing to 'COMMISSIONER OF PATENTS AND TRADEMARKS, WASHINGTON, D.C. 20231.' Correspondents should be sure to include their full return addresses, including Zip Codes.

The principal location of the office is Crystal Plaza 3, 2021 Jefferson Davis highway, Arlington, Virginia. The personal attendance of applicants at the Office is unnecessary.

Applicants and attorneys are required to conduct their business with decorum and courtesy. Papers presented in violation of this requirement will be returned.

Separate letters (but not necessarily in separate envelopes) should be written in relation to each distinct subject of inquiry, such as assignments, payments, orders for printed copies of patents, orders for copies of records, requests for other services, etc. None of these should be included with letters responding to Office actions in applications (see page 19).

When a letter concerns a patent application, the correspondent must include the serial number, filing date and Group Art Unit number. When a letter concerns a patent, it must include the name of the patentee, the title of the invention, the patent number and the date of issue.

An order for a copy of an assignment must give the book and page or reel and frame of the record, as well as the name of the inventor; otherwise, an additional charge is made for the time consumed in making the search for the assignment.

Applications for patents are not open to the public, and no information concerning them is released except on written authority of the applicant, his assignee, or his attorney, or when necessary to the conduct of the business of the Office. Patents and related records, including records of any decisions, the records of assignments other than those relating to assignments of patent applications, books, and other records and papers in the Office are open to the public. They may be inspected in the Patent and Trademark Office Search Room or copies may be ordered.

The Office cannot respond to inquiries concerning the novelty and patentability of an invention in advance of the filing of an application; give advice as to possible infringement of a patent; advise of the propriety of filing an application; respond to inquiries as to whether or to whom any alleged invention has been patented; act as an expounder of the patent law or as counselor for individuals, except in deciding questions arising before it in regularly filed cases. Information of a general nature may be furnished either directly or by supplying or calling attention to an appropriate publication.

LIBRARY, SEARCH ROOM SEARCHES AND PATENT AND TRADEMARK DEPOSITORY LIBRARIES

The Scientific and Technical Information Center of the Patent and Trademark Office at Crystal Plaza 3, 2021 Jefferson Davis Highway, Arlington, Va., has available for public use over 120,000 volumes of scientific and technical books in various languages, about 90,000 bound volumes of periodicals devoted to science and technology, the official journals of 77 foreign patent organizations, and over 12 million foreign patents.

A Search Room is provided where the public may search and examine United States patents granted since 1836. Patents are arranged according to the Patent and Trademark Office classification system of over 400 classes and over 120,000 subclasses. By searching in these classified patents, it is possible to determine, before actually filing an application, whether an invention has been anticipated by a United States patent, and it is also possible to obtain the information contained in patents relating to any field of endeavor. The Search Room contains a set of United States patents arranged in numerical order and a complete set of the Official Gazette.

A Files Information Room also is maintained where the public may inspect the records and files of issued patents and other open records.

Applicants, their attorneys or agents, and the general public are not entitled to use the records and files in the examiners’ rooms.

The Search Room is open from 8 a.m. to 8 p.m. Monday through Friday except on Federal holidays.

Since a patent is not always granted when an application is filed, many inventors attempt to make their own investigation before applying for a patent. This may be done in the Search Room of the Patent and Trademark Office, and libraries, located throughout the U.S., which have been designated as Patent and Trademark Depository Libraries (PTDL). Patent attorneys or agents may be employed to make a so-called preliminary search through the prior United States patents to discover if the particular device or one similar to it has been shown in some prior patent. This search is not always as complete as that made by the Patent and Trademark Office during the examination of an application, but only serves, as its name indicates a preliminary purpose. For this reason, the Patent and Trademark Office examiner may, and often does, reject claims in an application on the basis of prior patents or publications not found in the preliminary search.

Those who cannot come to the Search Room may order from the Patent and Trademark Office copies of lists of original patents or of cross-referenced patents contained in the subclasses comprising the field of search, or may inspect and obtain copies of the patents at a Patent and Trademark Depository Library. The Patent and Trademark Depository Libraries (PTDLs) receive current issues of U.S. Patents and maintain collections of earlier issued patents and trademark information. The scope of these collections varies from library to library, ranging from patents of only recent years to all or most of the patents issued since 1790.

These patent collections are open to public use. Each of the Patent and Trademark Depository Libraries, in addition, offers the publications of the U.S. Patent Classification System (e.g., The Manual of Classification, Index to the U.S. Patent Classification, Classification Definitions, etc.) and other patent documents and forms, and provides technical staff assistance in their use to aid the public in gaining effective access to information contained in patents. The collections are organized in patent number sequence.

Available in all PTDLs is the Classification And Search Support Information System (CASSIS), computer data base. With various modes, it permits the effective identification of appropriate classifications to search, provides numbers of patents assigned to a classification to permit finding the patents in a numerical file of patents, provides the current classification(s) of all patents, permits word searching on classification titles, abstracts, the Index provides certain bibliographic information on more recently issued patents.

Facilities for making paper copies from either microfilm in readerprinters or from the bound volumes in paper-to-paper copies are generally provided for a fee.

Due to variations in the scope of patent collections among the Patent and Trademark Depository Libraries and in their hours of service to the public, anyone contemplating the use of the patents at a particular library is advised to contact that library, in advance, about its collection and hours, so as to avert possible inconvience.

State Name of Library

Alabama Auburn University Libraries Birmingham Public Library

Alaska Anchorage: Z. J. Loussac Public Library

Arizona Tempe: Noble Library, Arizona State University

Arkansas Little Rock: Arkansas State University

California Los Angeles City Library Sacramento: California State Library San Diego Public Library Sunnyvale Patent Clearinghouse

Colorado Denver Public Library

Connecticut New Haven: Science Park Library

Delaware Newark: University of Delaware Library

District of Columbia Washington: Howard University Libraries

Florida Fort Lauderdale: Broward County Main Library Miami-Dade Public Library Orlando: University of Central Florida Libraries Tampa: Tampa Campus Library, University of South Florida

Georgia Atlanta: Price Gilbert Memorial Library, Georgia Institute of Technology

Hawaii Honolulu: Hawaii State Public Library System

Idaho Moscow: University of Idaho Library

Illinois Chicago Public Library Springfield: Illinois State Library

Indiana Indianapolis-Marion County Public Library West Lafayette: Siegesmund Engineering Laboratory, Purdue University

Iowa Des Moines: State Library of Iowa

Kansas Wichita: Ablah Library, Wichita State University

Kentucky Louisville Free Public Library

Louisiana Baton Rouge: Troy H. Middleton Library, Louisiana State University

Maryland College Park: Engineering and Physical Sciences Library, University of Maryland

Massachusetts Amherst: Physical Sciences Library, University of Massachusetts Boston Public Library

Michigan Ann Arbor: Engineering Library, University of Michigan Big Rapids: Abigail S. Timme Library, Ferris State University Detroit Public Library

Minnesota Minneapolis Public Library and Information Center

Mississippi Jackson: Mississippi Library Commission

Missouri Kansas City: Linda Hall Library St. Louis Public Library

Montana Butte: Montana College of Mineral Science and Technology Library

Nebraska Lincoln: Engineering Library, University of Nebraska-Lincoln

Nevada Reno: University of Nevada-Reno Library

New Hampshire Durham: University of New Hampshire Library

New Jersey Newark Public Library Piscataway: Library of Science and Medicine, Rutgers University

New Mexico Albuquerque: University of New Mexico General Library

New York Albany: New York State Library Buffalo and Erie County Public Library New York Public Library (The Research Libraries)

North Carolina Raleigh: D. H. Hill Library, North Carolina State University

North Dakota Grand Forks: Chester Fritz Library, University of North Dakota

Ohio Cincinnati and Hamilton County, Public Library of Cleveland Public Library Columbus: Ohio State University Libraries Toledo/Lucas County Public Library

Oklahoma Stillwater Oklahoma State University Center for International Trade Development

Oregon Salem: Oregon State Library

Pennsylvania Philadelphia: The Free Library of Pittsburgh: Carnegie Library of University Park: Pattee Library, Pennsylvania State University

Rhode Island Providence Public Library

South Carolina Charleston: Medical University of South Carolina Library Clemson University Libraries

Tennessee Memphis and Shelby County Public Library and Information Center Nashville: Stevenson Science Library, Vanderbilt University

Texas Austin: McKinney Engineering Library, University of Texas at Austin College Station: Sterling C. Evans Library, Texas A & M University Dallas Public Library Houston: The Fondren Library, Rice University

Utah Salt Lake City: Marriott Library, University of Utah

Virginia Richmond: James Branch Cabell Library, Virginia Commonwealth University

Washington Seattle: Engineering Library, University of Washington

West Virginia Morgantown: Evansdale Library, West Virginia University

Wisconsin Madison: Kurt F. Wendt Library, University of Wisconsin-Madison Milwaukee Public Library

ATTORNEYS AND AGENTS

The preparation of an application for patent and the conducting of the proceedings in the Patent and Trademark Office to obtain the patent is an undertaking requiring the knowledge of patent law and Patent and Trademark Office practice as well as knowledge of the scientific or technical matters involved in the particular invention.

Inventors may prepare their own applications and file them in the Patent and Trademark Office and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.

Most inventors employ the services of registered patent attorneys or patent agents. The law gives the Patent and Trademark Office the power to make rules and regulations governing conduct and the recognition of patent attorneys and agents to practice before the Patent and Trademark Office. Persons who are not recognized by the Patent and Trademark Office for this practice are not permitted by law to represent inventors before the Patent and Trademark Office. The Patent and Trademark Office maintains a register of attorneys and agents. To be admitted to this register, a person must comply with the regulations prescribed by the Office, which require a showing that the person is of good moral character and of good repute and that he/she has the legal and scientific and technical qualifications necessary to render applicants for patents a valuable service. Certain of these qualifications must be demonstrated by the passing of an examination. Those admitted to the examination must have a college degree in engineering or physical science or the equivalent of such a degree. The Patent and Trademark Office registers both attorneys at law and persons who are not attorneys at law. The former persons are now referred to as 'patent attorneys' and the latter persons are referred to as 'patent agents.' Insofar as the work of preparing an application for patent and conducting the prosecution in the Patent and Trademark Office is concerned, patent agents are usually just as well qualified as patent attorneys, although patent agents cannot conduct patent litigation in the courts or perform various services which the local jurisdiction considers as practicing law. For example, a patent agent could not draw up a contract relating to a patent, such as an assignment or a license, if the State in which he resides considers drawing contracts as practicing law.

Some individuals and organizations that are not registered advertise their services in the fields of patent searching and invention marketing and development. Such individuals and organizations cannot represent inventors before the Patent and Trademark Office. They. are not subject to Patent and Trademark Office discipline, and the Office cannot assist inventors in dealing with them.

The Patent and Trademark Office cannot recommend any particular attorney or agent, or aid in the selection of an attorney or agent, as by stating, in response to inquiry that a named patent attorney, agent, or firm, is 'reliable' or 'capable.' The Patent and Trademark Office publishes a directory of all registered patent attorneys and agents who have indicated their availability to accept new clients, arranged by states, cities, and foreign countries. The Directory must be purchased from the Government Printing Office.

The telephone directories of most large cities have, in the classified section, a heading for patent attorney’s under which those in that area are listed. Many large cities have associations of patent attorneys.

In employing a patent attorney or agent, the inventor executes a power of attorney or authorization of agent which must be filed in the Patent and Trademark Office and is usually a part of the application papers. When an attorney has been appointed, the Office does not communicate with the inventor directly but conducts the correspondence with the attorney since he/she is acting for the inventor thereafter, although the inventor is free to contact the Patent and Trademark Office concerning the status of his/her application. The inventor may remove the attorney or agent by revoking the power of authorization.

The Patent and Trademark Office has the power to disbar, or suspend from practicing before it, persons guilty of gross misconduct, etc., but this can only be done after a full hearing with the presentation of clear and convincing evidence concerning the misconduct. The Patent and Trademark Office will receive and, in appropriate cases, act upon complaints against attorneys and agents. The fees charged to inventors by patent attorneys and agents for their professional services are not subject to regulation by the Patent and Trademark Office. Definite evidence of overcharging may afford basis for Patent and Trademark Office action, but the Office rarely intervenes in disputes concerning fees.

DISCLOSURE DOCUMENT

One of the services provided for inventors is the acceptance and preservation for a two-year period of papers disclosing an invention. This disclosure is accepted as evidence of the dates of conception of the invention.

It will be retained for two years at which time it will be destroyed unless it is referred to in a separate letter in a related patent application.

A fee must accompany the disclosure. See current fee schedule. The disclosure is limited to written matter or drawings on paper or other thin, flexible material, such as linen or plastic drafting material, having dimensions or being folded to dimensions not to exceed 8-1/2 x 13 inches (21.6 by 33.0 cm). Photographs are acceptable. Each page should be numbered. Text and drawings should be of such quality as to permit reproduction.

The disclosure must be accompanied by a stamped, self-addressed envelope and a duplicate copy also signed by the inventor. The papers will be stamped with an identifying number and returned with the reminder that the Disclosure Document may be relied upon only as evidence of the date of conception and that an application must be filed in order to provide patent protection.

WHO MAY APPLY FOR A PATENT

According to the law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If the inventor is dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is insane, the application for patent may be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or a person having a proprietary interest in the invention may apply on behalf of the missing inventor.

If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or erroneously naming a person as an inventor.

Officers and employees of the Patent and Trademark Office are prohibited by law from applying for a patent or acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent.

APPLICATION FOR PATENT

An application for a patent is made to the Commissioner of Patents and Trademarks and includes:

(1) A written document which comprises a specification (description and claims), and an oath or declaration;

(2) A drawing in those cases in which a drawing is necessary;

(3) The filing fee. See fee schedule.

The specification and oath or declaration must be legibly written or printed in permanent ink on one side of the paper. The Office prefers typewriting on letter or legal size 8 to 8 1/2 by 10 1/2 to 13 inches, (20.3 to 21.6 by 26.7 to 33.0 cm) 1 1/2 or double spaced with margins of 1 inch (2.54 cm) on the left-hand side and at the top. If the papers filed are not correctly, legibly, and clearly written, the Patent and Trademark Office may require typewritten or printed papers.

The application for patent is not forwarded for examination until all its required parts, complying with the rules relating thereto, are received. If the papers and parts are incomplete, or so defective that they cannot be accepted as a complete application for examination, the applicant will be notified about the deficiencies and be given a time period in which to remedy them. A surcharge may be required. If the applicant does not respond within the prescribed time period. The application will be returned or otherwise disposed of. The filing fee may be refunded when an application is refused acceptance as incomplete; however, a handling fee will be charged.

It is desirable that all parts of the complete application be deposited in the Office together; otherwise each part must be signed and a letter must accompany each part, accurately and clearly connecting it with the other parts of the application.

All applications are numbered in serial order, and the applicant is informed of the serial number and filing date of the application by a filing receipt. The filing date of the application is the date on which the names of the inventors, a specification (including claims) and any required drawings are received in the Patent and Trademark Office; or the date on which the last part completing the application are received in the case of a previously incomplete or defective application.

Oath or Declaration, Signature

The oath or declaration of the applicant is required by law. The inventor must make an oath or declaration that he she believes himself herself to be the original and first inventor of the subject matter of the application, and he she must make various other allegations required by law and various allegations required by the Patent and Trademark Office rules. The oath must be sworn to by the inventor before a notary public or other officer authorized to administer oaths. A declaration may be used in lieu of an oath as part of the original application for a patent involving designs, plants, and other patentable inventions; for reissue patents; when claiming matter originally shown or described but not originally claimed; or when filing a divisional or continuing application. A declaration does not need to be notarized.

The application, oath or declaration must be signed by the inventor in person, or by the person entitled by law to make application on the inventor’s behalf. A full first or middle name of each inventor without abbreviation and a middle or first initial, if any, is required. The postoffice address of the inventor is also required.

Blank forms for applications or certain other papers are not supplied by the Patent and Trademark Office.

The papers in a complete application will not be returned for any purpose whatever, nor will the filing fee be returned. If applicants have not preserved copies of the papers, the Office will furnish copies for a fee.

Filing Fees*

The filing fee of an application, except in design and plant cases, consists of a basic fee and additional fees. The basic fee entitles applicant to present twenty (20) claims, including not more than three (3) in independent form. An additional fee is required for each claim in independent form which is in excess of three (3) and an additional fee is required for each claim (whether independent or dependent) which is in excess of a total of twenty (20) claims. If the application contains multiple dependent claims, additional fees are required.

If the owner of the invention is a small entity, (an independent inventor, a small business concern or a non-profit organization), the filing fees are reduced by half if the small entity files a verified statement. Copies of sample verification statements are enclosed.

To avoid errors in the payment of fees it is suggested that the table in the enclosed patent application transmittal letter be utilized to calculate the fee payment.

In calculating fees, a claim is in singularly dependent form if it incorporates by reference a single preceding claim which may be an independent or a dependent claim. A multiple dependent claim or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference is made.

The law also provides for the payment of additional fees on presentation of additional claims after the application is filed.

When an amendment is filed which presents additional claims over the total number already paid for, or additional independent claims over the number of independent claims already accounted for, it must be accompanied by any additional fees due.

* Please Note: The fees are current as of the revision date. Fees are subject to change in October each year therefore they should be verified before submission to the PTO. A fee schedule may be obtained by writing 16 Commissioner of Patents, Washington, D.C. 20231 -- Attention Public Service Branch.

SPECIFICATION (DESCRIPTION AND CLAIMS)

The specification must include a written description of the invention and of the manner and process of making and using it, and is required to be in such 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 same.

The specification must set forth the precise invention for which a patent is solicited, in such manner 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 of carrying out his 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 title of the invention, which should be as short and specific as possible, should appear as a heading on the first page of the specification, if it does not otherwise appear at the beginning of the application.

A brief abstract of the technical disclosure in the specification must be set forth in a separate page immediately following the claims in a separate paragraph under the heading 'Abstract of the Disclosure.'

A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, commensurate with the invention as claimed and any object recited should precede the detailed description. Such summary should be that of the invention as claimed.

When there are drawings, there shall be a brief description of the several views of the drawings, and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures, and to the different parts by use of reference numerals.

The specification must conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.

The claims are brief descriptions of the subject matter of the invention, eliminating unnecessary details and reciting all essential features necessary to distinguish the invention from what is old. The claims are the operative part of the patent. Novelty and patentability are judged by the claims,’ and, when a patent is granted, questions of infringement are judged by the courts on the basis of the claims.

When more than one claim is presented, they may be placed in dependent form in which a claim may refer back to and further restrict one or more preceding claims.

A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.

The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.

The following order of arrangement should be observed in framing the specification:

(a) Title of the invention.

(b) Cross-references to related applications, if any.

(c) Brief summary of the invention.

(d) Brief description of the several views of the drawing, if there are drawings.

(e) Detailed Description.

(f) Claim or claims.

(g) Abstract of the disclosure.

DRAWING

The applicant for a patent will be required by law to furnish a drawing of the invention whenever the nature of the case requires a drawing to understand the invention. However, the Commissioner may require a drawing where the nature of the subject matter admits of it; this drawing must be filed with the application. This includes practically all inventions except compositions of matter or processes, but a drawing may also be useful in the case of many processes.

The drawing must show every feature of the invention specified in the claims and is required by the Office rules to be in a particular form. The Office specifies the size of the sheet on which the drawing is made, the type of paper, the margins, and other details relating to the making of the drawing. The reason for specifying the standards in detail is that the drawings are printed and published in a uniform style when the patent issues, and the drawings must also be such that they can be readily understood by persons using the patent descriptions.

No names or other identification will be permitted within the 'sight' of the drawing, and applicants are expected to use the space above and between the hole locations to identify each sheet of drawings. This identification may consist of the attorney’s name and docket number or the inventor’s name and case number and may include the sheet number and the total number of sheets filed (for example, 'sheet 2 of 4'). The following rule, reproduced from title 37 of the Code of Federal Regulations, relates to the standards for drawings: 1.84 Standards for drawings.

(a) Paper and ink. Drawings must be made upon paper which is flexible, strong, white, smooth, non-shiny and durable. India ink, or its equivalent in quality, is preferred for pen drawings to secure perfectly black solid lines. The use of white pigment to cover lines is not normally acceptable.

(b) Size of sheet and margins. The size of the sheets on which drawings are made may either be exactly 81/2 by 14 inches (21.6 by 35.6 cm.) or exactly 21.0 by 29.7 cm. (DIN size A4). All drawing sheets in a particular application must be the same size. One of the shorter sides of the sheet is regarded as its top.

(1) On 81/2 by 14 inch drawing sheets, the drawings must include a top margin of 2 inches (5.1 cm.) and bottom and side margins of 1/4 inch (6.4 mm.) from the edges, thereby leaving a 'sight' precisely 8 by 113/4 inches (20.3 by 29.8 cm.). Margin border lines are not permitted. All work must be included within the 'sight'. The sheets may be provided with two 1/4 inch (6.4 mm.) diameter holes having their centerlines spaced 11/16 inch (17.5 mm.) below the top edge and 23/4 inches (7.0 cm.) apart, said holes being equally spaced from the respective side edges.

(2) On 21.0 by 29.7 cm. drawing sheets, the drawing must include a top margin of at least 2.5 cm., a left side margin of 2.5 cm., a right side margin of 1.5 cm., and a bottom margin of 1.0 cm. Margin border lines are not permitted. All work must be contained within a sight size not to exceed 17 by 26.2 cm.

(c) Character of lines. All drawings must be made with drafting instruments or by a process which will give them satisfactory reproduction characteristics. Every line and letter must be durable, black, sufficiently dense and dark, uniformly thick and well defined; the weight of all lines and letters must be heavy enough to permit adequate reproduction. This direction applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. All lines must be clean, sharp, and solid. Fine or crowded lines should be avoided. Solid black should not be used for sectional or surface shading. Freehand work should be avoided wherever it is possible to do so.

(d) Hatching and shading. (1) Hatching should be made by oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. (2) Heavy lines on the shade side of objects should preferably be used except where they tend to thicken the work and obscure reference characters. The light should come from the upper left-hand corner at an angle of 45 degrees. Surface delineations should preferably be shown by proper shading, which should be open.

(e) Scale. The scale to which a drawing is made ought to be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction, and views of portions of the mechanism on a larger scale should be used when necessary to show details clearly; two or more sheets should be used if one does not give sufficient room to accomplish this end, but the number of sheets should not be more than is necessary.

(f) Reference characters. The different views should be consecutively numbered figures. Reference numerals (and letters, but numerals are preferred) must be plain, legible and carefully formed, and not be encircled. They should, if possible, measure at least one-eighth of an inch (3.2 mm.) in height so that they may bear reduction to one twenty-fourth of an inch (1.1 mm.); and they may be slightly larger when there is sufficient room. They should not be so placed in the close and complex parts of the drawing as to interfere with a thorough comprehension of the same, and therefore should rarely cross or mingle with the lines. When necessarily grouped around a certain part, they should be placed at a little distance, at the closest point where there is available space, and connected by lines with the parts to which they refer. They should not be placed upon hatched or shaded surfaces but when necessary, a blank space may be left in the hatching or shading where the character occurs so that it shall appear perfectly distinct and separate from the work. The same part of an invention appearing in more than one view of the drawing must always be designated by the same character, and the same character must never be used to designate different parts. Reference signs not mentioned in the description shall not appear in the drawing, and vice versa.

(g) Symbols, legends. Graphical drawing symbols and other labeled and labeled representation are used must be adequately identified in the specification. While descriptive matter on drawings is not permitted, suitable legends may be used, or may be required in proper cases, as in diagrammatic views and flow sheets or to show materials or where labeled representations are employed to illustrate conventional elements. Arrows may be required, in proper cases, to show direction of movement. The lettering should be as large as, or larger than, the reference characters.

(h) [Reserved]

(i) Views. The drawing must contain as many figures as may be necessary to show the invention; the figures should be consecutively numbered if possible in the order in which they appear. The figures may be plain, elevation, section, or perspective views, and detail views of portions of elements, on a larger scale if necessary, may also be used. Exploded views, with the separated parts of the same figure embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When necessary, a view of a large machine or device in its entirety, may be broken and extended over several sheets if there is no loss in facility of understanding the view. Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets should be so arranged that the complete figure can be understood by laying the drawing sheets adjacent to one another. The arrangement should be such that no part of any of the figures appearing on the various sheets are concealed and that the complete figure can be understood even though spaces will occur in the complete figure because of the margins on the drawing sheets. The plane upon which a sectional view is taken should be indicated on the general view by a broken line, the ends of which should be designated by numerals corresponding to the figure number of the sectional view and have arrows applied to indicate the direction in which the view is taken. A moved position may be shown by a broken line superimposed upon a suitable figure if this can be done without crowding, otherwise a separate figure must be used for this purpose. Modified forms of construction can only be shown in separate figures. Views should not be connected by projection lines nor should center lines be used.

(j) Arrangement of views. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views longer than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet with the appropriate top margin is on the right-hand side. One figure must not be placed upon another or within the outline of another.

(k) Figure for Official Gazette. The drawing should, as far as possible, be so planned that one of the views will be suitable for publication in the Official Gazette as the illustration of the invention.

(l) Extraneous matter. Identifying indicia (such as the attorney’s docket number, inventor’s name, number of sheets, etc.) not to exceed 2 3/4 inches (7.0 cm.) in width may be placed in a centered location between the side edges within three-fourths inch (19.1 mm.) of the top edge. Authorized security markings may be placed on the drawings provided they are outside the illustrations and are removed when the material is declassified. Other extraneous matter will not be permitted upon the face of a drawing.

(m) Transmission of drawings. Drawings transmitted to the Office should be sent flat, protected by a sheet of heavy binder’s board, or may be rolled for transmission in a suitable mailing tube; but must never be folded. If received creased or mutilated, new drawings will be required. (See 1.152 for design drawing, 1.165 for plant drawings, and 1.174 for reissue drawings.)

The requirements relating to drawings are strictly enforced, but a drawing not complying with all of the re