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Nonprovisional Application – Parts, Form and Content

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Nonprovisional Application – Parts, Form and Content

  1. Filing date requirements
    1. Required parts to obtain filing date:
      1. Specification
      2. At least one claim
      3. Drawing if necessary to understand the invention
    2. Required parts to maintain a filing date:
      1. Oath or declaration
      2. Filing fee
  2. Method of transmitting patent application
    1. USPS express mail to addressee: f/d = received by USPS (date stamp) MPEP513
      1. Should retain mailing label number to facilitate proof if lost
      2. Petition to correct USPS express mail error: copy of mailing label, copy of express-mailed paper showing mailing label number, PTO-returned postcard, declaration/affidavit if label is faulty
      3. Use drop box at own risk
      4. Express mail to post office does not count!
    2. Regular US mail: f/d = actually received by PTO
    3. Hand delivery: f/d = actually received by PTO
    4. Electronic filing
    5. No fax!
  3. Specification: format, requirement
    1. Parts
      1. Title
      2. Cross reference to related applications (such as continuation, divisional, CIP, etc.)
      3. Statement re federally sponsored research
      4. Parties to joint research agreement (avoid obviousness rejection)
      5. Reference to sequence listing
      6. Background of invention
      7. Brief summary of invention
      8. Brief description of views of the drawing
      9. Detailed description of the invention
      10. Claim(s)
      11. Abstract of the disclosure
      12. Sequence listing, if on paper
    2. Specification requirements
      1. Specification must support all claims; §112¶1
      2. Must not contain drawings or flow diagrams (should be in the drawings), but chemical and mathematical formulas are allowed
      3. Actual work in past tense, non-actual work (simulated, predicted) in present tense
      4. Non-English application is permitted, but with a translation and fee
      5. Trademarks allowed; hyperlinks not allowed
    3. Incorporation by reference MPEP608.01(p)
      1. Incorporate by reference only essential material including only:
        1. Issued US patent
        2. Pending US application commonly owned with the current application
      2. Priority claim ≠ incorporation by reference, but may claim priority and incorporate by reference in one sentence (this application claims priority to and hereby incorporate by reference …)
      3. Improper incorporation by reference: may later file amendment with a statement that the added material includes no new matter.
      4. Continuing application often frequently incorporate by reference the parent application or patent.
    4. Deposit of biological material
      1. Must be finished no later than 3 months after the notice of allowance
      2. No new matter
    5. Nucleotide and amino acid sequence: no new matter
  4. Claim: numbering, arrangement, multiple dependent claim (MDC)
    1. Claim numbering
      1. Preserved throughout the prosecution, even when old claims are cancelled
      2. Renumbered after prosecution closes and before publication
    2. Claim arrangement
      1. Dependent claim follows immediately the claim it depends on
      2. No line crossing, but claim addition or deletion during prosecution may disrupt this
    3. Multiple dependent claim wording MPEP608.01(n)
      1. Only refers to preceding claim(s)
      2. Only in the alternative
      3. Must not depend on another multiple dependent claim, even indirectly!
    4. Multiple dependent claim fee calculation MPEP608.01(n)
      1. MDC fee = number of claims that the MDC directly depends on
      2. Claim that depends on an MDC: fee = same as that mdp
      3. Improper MDC and subsequent claims it spawns: treated as single dependent claims only
  5. Drawings
    1. Drawings necessary for understanding the invention: required to obtain f/d
    2. Drawings only helpful for understanding the invention: not required to obtain f/d, may be submitted later
  6. Oath or declaration
    1. Must identify application and inventor(s)
    2. Must state that invention is original and first
    3. Must acknowledge duty to disclose
    4. If foreign priority is claimed, then must identify the priority foreign application(s) and all earlier-filed related foreign application, unless these applications are identified in application data sheet (ADS)
    5. CIP: acknowledge duty to disclose
  7. Abstract of the disclosure MPEP608.01(b): purpose is to facilitate searching
    1. Required to complete the application, but not for f/d
    2. Word limit: 150
  8. Small entity status
    1. Small entity includes
      1. Independent inventor or other individual (e.g., assignee)
      2. Small business with 500 or fewer employees, including all affiliates
      3. Non-profit organization that has not sold the rights to a non-small entity
    2. Some (but not all) fees are reduced to 50%
    3. Status may be asserted with a written statement of entitlement, signed by inventor/assignee/agent
    4. New determination of status will be done upon patent issue and for maintenance fees.
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