What Are the Current Guidelines for Submiting Models with Your Patent Application?
A recent technology trade publication made the suggestion that the United States Patent and Trademark Office (USPTO) should once again, as was done in a time in the early history of the U.S. patent system, require inventors to submit a working model of their invention when applying for a patent. This article has made many inventors ask what the current requirement is regarding working models are, if any, and if they could supply a working model if they thought it would be beneficial for the patent examiner examining their application for patent.
Currently, applicants are neither required nor generally permitted to submit any type of working model with their patent application unless the USPTO deems it necessary for any purpose in examination of the application. See 35 U.S.C. 114 and 37 CFR 1.91(b). In fact, models or exhibits will not be admitted as part of the record of an application unless certain conditions are met including, in some instances, a petition providing a fee and an explanation of why entry of the model or exhibit in the file record is necessary to demonstrate patentability. See 37 CFR 1.91(a). If you submit a model to the USPTO, it should be accompanied by photographs that show multiple views of the material features of the model or exhibit.
The USPTO may return the models, exhibits or specimens once they are no longer necessary USPTO business and if their return is appropriate. See 37 CFR 1.94. When applicants are notified that models, exhibits or specimens are no longer necessary for USPTO business and will be returned, then the applicants must arrange for their return at the applicants' expense, and must retain the actual models, exhibits or specimens for the enforceable life of any patent resulting from the application. Perishable models, exhibits or specimens may be submitted, but applicants must notify the USPTO upon its submission they would like the item returned to them or the USPTO will dispose of the perishable item without notice. When the USPTO notifies applicants that their perishable models, exhibits or specimens are no longer necessary, the applicants must promptly make arrangements for their return.
Lastly, models and exhibits may be presented for demonstration purposes during an interview. The models and exhibits should be taken away by the applicants or their attorneys or agents at the interview's conclusion, since models or exhibits are generally not permitted to be admitted as part of the patent application unless the requirements of 37 CFR 1.91 are satisfied.