Applying for Patents

1. Brainstorm description terms for your invention based on its purpose, composition, and use.
2. For utility applications, use these description terms to find relevant Cooperative Patent Classifications (CPC) using the Classification Text Search Tool.
3. Verify CPC classification by reviewing related definitions.
4. Retrieve published application documents and actual U.S. patents using relevant classification resources and our Patent Public Search Tool.
5. Review each relevant document in depth for similarity to your invention.
6. Include non-U.S. patent databases or non-patent literature to find more relevant documents. WIPO search tools include PatentScope and the Global Design Database for designs.

Scientific and Technical Information Center (STIC)

The USPTO STIC, in Alexandria, Virginia, offers to the public more than 120,000 volumes of scientific and technical books in various languages. STIC also holds about 90,000 bound volumes of science and technology periodicals, the official journals of 77 foreign patent organizations, and more than 40 million foreign patents on paper and electronically. The center is open to the public from 8 a.m. to 5 p.m. on weekdays (except federal holidays).

Public Search Facility

The Public Search Facility, also at USPTO headquarters in Alexandria, is where you may search for and examine U.S. patents granted since 1790 using state-of-the-art technology. Publications, manuals, online databases, and other search aids are available. Resources include patent ownership records.

Public workstations provide access to public electronic patent and trademark collections. The public search room enables you to conduct self-directed searches.

The facility is open from 8 a.m. to 8 p.m. weekdays except on federal holidays. Research assistance is offered 8 a.m. to 5 p.m. weekdays, with self-service access from 5-8 p.m.

Regional offices

USPTO regional offices have many public workstations with the same requirements and resources as at the Public Search Facility. Public searching is available from 9 a.m. to 4 p.m. weekdays, except federal holidays. Here are the regional offices:

• Texas Regional Office (Dallas, Texas)
• Rocky Mountain Regional Office (Denver, Colorado)
• Elijah J. McCoy Midwest Regional Office (Detroit, Michigan)
• Silicon Valley USPTO (San Jose, California)

Patent and Trademark Resource Centers (PTRCs)

PTRCs are a nationwide network of public, state, and academic libraries with resources to help you protect your intellectual property. Collections include current issues of U.S. patents along with earlier patents and trademarks. The scope of the collections varies, ranging from only recent patents to most of those issued since 1790.

The USPTO has legal authority to regulate the conduct and recognition of patent attorneys and agents. Those not recognized by the USPTO for this practice are prohibited from representing inventors before the agency.

Patent agents, however, cannot argue patent cases in courts or perform services considered by local jurisdictions as practicing law. For example, a patent agent cannot draw up a patent-related contract, such as for an assignment or a license, if the agent’s state of residence considers drafting contracts as the practice of law.

The USPTO maintains a register of patent attorneys and agents. To be admitted to this register, attorneys and agents must comply with USPTO regulations requiring good moral character and reputation, as well as certain legal, scientific, and technical qualifications. Some qualifications must be demonstrated by passing an exam. Admission to the exam requires a college degree in engineering or physical science, or its equivalent.

Directories of patent attorneys can be found both in print and online, and from the agency. Many large cities have associations of such attorneys. The USPTO cannot recommend or aid in selecting a patent attorney or agent, as by stating, in response to inquiry, that an attorney, agent, or firm is “reliable” or “capable.”

The USPTO has the power to disbar, or suspend from practicing before it, attorneys and agents guilty of gross misconduct. This can only be done after a full hearing, with clear and convincing evidence of misconduct presented. The USPTO will receive and (as appropriate) act upon complaints against attorneys and agents.

Fees charged to you by attorneys and agents for their professional services are not regulated by the USPTO. Definite evidence of overcharging may prompt USPTO action, but the agency rarely intervenes in fee disputes.

Some unregistered individuals and organizations advertise patent search services, and invention marketing and development. They cannot represent you before the USPTO and are not subject to agency discipline, but a public forum for complaints is available.

The specification of a nonprovisional utility patent application should have the following sections in order:

1. Title of the invention  — should be as short and specific as possible (no more than 500 characters), should appear as a heading on the first page of the specification (if not otherwise appearing at the beginning of the application).
2. Cross-reference to related application, if any (may be listed on a data sheet, either instead of or along with being listed in the specification).
3. Statement of federally sponsored research or development (if any)  — for an invention made with U.S. government support and for which the U.S. government has certain rights, 35 U.S.C. 202(c)(6) and 37 CFR 401.14(f)(4) require the specification to contain a statement that the invention was made with such support. Here’s a sample wording: “This invention was made with government support under [identify the contract] awarded by [identify the federal agency]. The government has certain rights in the invention.”
4. Names of the parties to a joint research agreement, if the claimed invention resulted from activities within the scope of such an agreement.
5. Reference to a “sequence listing,” table, or computer program listing appendix submitted on an optical disc or via the USPTO electronic filing system and an incorporation by reference of the material on the optical disc. The total number of discs, including duplicates and the files on each disc, must be specified.
6. Background on the invention.
7. Brief summary of the invention — indicating its nature and substance (which may include a statement of the object of the invention), preceding the detailed description. The summary should be commensurate with the invention as claimed, and any object recited should be that of the invention as claimed.
8. Brief description of views of the drawing (if any)  — a description of the drawing views by specifying the numbers of the figures.
9. Detailed description of the invention — description of the invention including the manner and process of its making and use;
   1. Required in full, clear, concise, and exact terms so that anyone skilled in the technology area to which the invention belongs or is most nearly connected to, can make and use it.
   2. Set forth the precise invention for which a patent is requested, distinguishing 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 best mode of carrying out the invention.
   3. For an improvement, the specification must point out the part(s) of the process, machine, manufacture, or composition of matter to which the improvement relate(s). The description should be confined to the specific improvement and to the parts that necessarily cooperate with it or are necessary to a complete understanding or description.
10. At least one claim — particularly pointing out and distinctly claiming the subject matter regarded as the invention. The portion of the application setting forth the claims defines the scope of the patent protection and which questions of infringement are judged by the courts.
    1. More than one claim may be presented (they must differ substantially and not unduly multiplied). One or more claims may be presented in dependent form, referring back to and further limiting other claims in the same application. Any dependent claim referring back to more than one other claim is called a “multiple dependent claim.”
    2. Multiple dependent claims shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for another multiple dependent claim. Claims in dependent form will be understood to include all limitations of the claim referenced by the dependent claim. A multiple dependent claim will be considered to incorporate all the limitations of each of the particular claims in relation to which it is being considered.
    3. The claims must conform to the invention as set forth in the rest of the specification, and any wording in the description must be clearly supported so that their meaning may be understood in reference to the description.
11. Brief abstract of the disclosure — must appear on a separate page (preferably following the claims), should be a single paragraph (150 words or less) under the heading “Abstract of the Disclosure.”
12. Sequence listing (if any).

Drawings are required to be filed when necessary to understand the subject matter of the patent sought. This generally includes all inventions except compositions of matter or processes, though drawings may be useful with many processes.

The drawing must show every feature of the invention specified in the claim, and is required to be in a particular form. For specific details about drawing standards, including numbering, margins, views, legends, and shading, see MPEP § 608.02 and 37 CFR 1.84.

Two generally acceptable categories exist for presenting drawings in utility and design patent applications:

• Black-and-white drawings are normally required. India ink, or an equivalent that secures solid black lines, must be used.
• Color drawings are permitted in design applications. On rare occasions, color may be necessary in utility applications as the only practical method to disclose the intended subject matter. The quality of color drawings must be sufficient for reproduction in black-and-white in the printed patent.

The specification must also include a brief description of each drawing.

An oath or declaration is a formal statement you must make in a design, plant, nonprovisional utility, or reissue application. Either form PTO/AIA/01 or PTO/AIA/08 may be used for the required declaration in a utility application. We prefer form PTO/AIA/01, which must be filed together with an application data sheet.

You must sign an oath or declaration including certain statements required by law and USPTO rules, including a statement of belief that you are the original or joint inventor of a claimed invention, and a statement that you either made the application or authorized its making (see 35 U.S.C. 115 and 37 CFR 1.63). An oath must be sworn to before a notary public. A declaration may be submitted in lieu of an oath, and does not need notarization.

The specification of a design application is short, and only one claim is permitted, following a set form referring to the drawings. Specification should include the following sections in order:

1. Preamble — stating your (the inventor’s) name, the title of the design, and a brief description of the nature and intended use of the article embodied by the design
2. Cross-reference to related applications (unless included in the application data sheet)
3. Statement regarding federally sponsored research or development
4. Description(s) of the figure(s) of the drawings
5. Feature description
6. A single claim 

A design patent application may only include a single claim. It 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 (see MPEP § 1503.01, subsection I).

When the specification includes a proper descriptive statement of the design (see MPEP § 1503.01, subsection II), or a proper showing of modified forms of the design or other descriptive matter, the words "and described" must be added to the claim following the term "shown." In other words, the claim must read, "The ornamental design for (the article that embodies the design or to which it is applied) as shown and described."

The drawing of the design patent conforms to the same rules as other drawings, except no reference characters are allowed. Also, the drawing should clearly depict the appearance, since the drawing defines the scope of patent protection.

The specification should include a complete, detailed description of the plant and the characteristics distinguishing it from related known varieties, and its antecedents. These should be expressed in botanical terms in the general form followed in standard botanical texts covering the varieties of the kind of plant involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad non-botanical characterization such as commonly found in nursery or seed catalogs.

In addition, the specification should include the origin (parentage) of the plant variety sought to be patented, and must identify where and in what manner the plant has been asexually reproduced. The Latin name of the genus and species should be stated.

Where color is a distinctive feature of the plant, it should be identified by a designated color as given by a recognized color dictionary. Where the plant originated as a newly found seedling, the conditions (cultivation, environment, etc.) under which the seedling was found growing must be fully described, to establish it was not found in an uncultivated state.

The plant patent specification should include these sections in order:

1. Title of the invention, which may include an introduction stating your name, citizenship, and residence
2. Cross-reference to related applications (unless included in the data sheet)
3. Statement regarding federally-sponsored research or development
4. Latin name of the genus and species of the plant claimed
5. Variety denomination
6. Background of the invention
7. Brief summary of the invention
8. Brief description of the drawing
9. Detailed botanical description
10. A single claim
11. Abstract of the disclosure

More about a single claim for plant patent application

A plant patent is granted only on the entire plant. Only one claim is necessary and permitted; a method claim is improper in a plant patent application.

The claim shall be in formal terms to the new and distinct variety of the specified plant as described and illustrated, and may also recite the principal distinguishing characteristics. An example of a proper claim would be "[a] new and distinct variety of hybrid tea rose plant, substantially as illustrated and described herein."

Plant patent drawings are not mechanical drawings and should display artistic competence. The drawings must disclose all distinctive characteristics of the plant capable of visual representation. When color is a distinguishing characteristic, drawings must be in color, with applications filed on paper requiring two duplicate copies. The drawing should conform to the same rules as other drawings, except that view numbers and reference characters are unnecessary unless required by the examiner. All color drawings should include a 1-inch margin at the top for office marking.

Specimens of the plant variety, and its flower or fruit, should not be submitted unless specifically requested by the examiner.

The required oath or declaration and the statements required for other applications must include a statement that you, the inventor, have asexually reproduced the new plant variety. For a newly found plant, the oath or declaration must also state that the plant was found in a cultivated area. A Plant Patent Application Declaration, Form PTO/AIA/09 or PTO/AIA/03, may be used for a declaration.

Provisional application

This quick, inexpensive way for you to establish a U.S. filing date for your invention can be claimed in a later-filed nonprovisional application. A provisional application is automatically abandoned 12 months after its filing date and is not examined.

If you decide to initially file a provisional application, you must file a corresponding nonprovisional application during the 12-month pendency period of the provisional in order to benefit from the earlier provisional filing. Provisionals have fewer requirements than non-provisionals — for example, claims and an oath/declaration are not required.

For more detail, see Provisional Application for Patent and MPEP § 201.04.

Nonprovisional utility application

This may be issued as a patent if all patentability requirements are met. A nonprovisional utility application includes:

• A specification (description and claims) 
• Drawings (when necessary)
• An oath or declaration
• Filing, search, and examination fees

All application documents must be in English, or a translation into English will be required, along with a fee set in 37 CFR 1.17(i).

For more detail, see A Guide to Filing a Utility Patent Application.

The application filing date, other than for design patents or provisional applications, is the date on which the USPTO receives a specification (with or without at least one claim) and any drawings necessary to understand the subject matter, or (with a previously incomplete or defective application) the date on which the last part required for a filing date is received.

Plant or utility applications filed on or after November 29, 2000 may, upon request, not be published. The invention must not have been or become the subject of an application filed in a foreign country requiring publication 18 months after filing (or earlier claimed priority date) or under the Patent Cooperation Treaty. If you filed a nonpublication request and later decide to file a counterpart foreign or international application in another country or under a multilateral agreement that requires 18-month publication, you must either rescind the nonpublication request before foreign or international filing, or notify the USPTO of such filing no later than 45 days after the filing date of the counterpart foreign or international application. Failure to do so will result in abandonment of the application.

As a result of publication, you may assert provisional rights. These rights provide you with the opportunity to obtain a reasonable royalty from a third party that infringes a published application claim. You must notify the third party, and the patent must issue from the application with a substantially identical claim.

Additional fees will be required for more than 20 total claims or more than three independent claims on an application. Claims above these amounts are considered “excess claims.”

For example, if you file 25 claims, including four independent claims, you would have to pay excess fees for five total claims and one independent claim. If you later file an amendment increasing the total claims to 29 and the independent claims to six, you would have to pay fees for the additional four total claims and two independent claims.

In calculating fees, a claim is singularly dependent if it refers to a single preceding claim (either independent or dependent). A multiple dependent claim, or any claim dependent upon it, is considered separate dependent based on the number of claims it refers to. Applications with multiple dependent claims require additional fees for each claim.

If two or more inventions are claimed in a single application, and are regarded to be independent and distinct enough that a single patent should not be issued for both, you will be required to limit (restrict) the application to one of the inventions. The other invention may become the subject of a separate application that, if filed while the first application is pending, will be entitled to the benefit of that application’s filing date. An examiner may restrict the application to one invention before further action.

For more information on restrictions, see MPEP § 801.

You are notified in writing of the examiner’s decision by an office action. This is normally mailed to the attorney or agent of record, or to you directly if not represented by an attorney or agent.

The reasons for any adverse action, objection, or requirement are stated in the office action, and you may receive information or references useful in aiding your judgment of whether to continue prosecution of the application.

If the claimed invention is not directed to patentable subject matter, or if the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may be rejected. Commonly, some or all claims will be rejected on the first office action; relatively few applications are allowed as filed.

A USPTO patent examiner may issue several different types of official letters about your application, including an office action. Carefully read USPTO correspondence to understand the type of response needed and the time period for filing it.

You must request reconsideration in writing, pointing out the supposed errors in the office action, and replying to every objection and rejection. The reply must be a good faith effort to advance the case to final action or allowance. The mere allegation that the examiner has erred is not a proper reason for reconsideration.

On the second or later consideration, the rejection or other action may be made final. Your reply is then limited to appeal in the case of rejection of any claim, and further amendment is restricted. After the final action, you may amend claims, appeal rejections, or file a request for continued examination (RCE).

Amendments to application

You may amend the application as specified by rule or as required by the examiner.

Amendments received on or before the mail date of the first office action are called “preliminary amendments,” governed by 37 CFR 1.115. Amendments replying to a non-final office action are governed by 37 CFR 1.111. Any amendments filed after final action are governed by 37 CFR 1.116 and 37 CFR 41.33, and are not entered as matter of right, as are supplemental and after-allowance amendments.

The specification, claims, and drawings must be amended and revised when required. This is to correct inaccuracies of description and definition or unnecessary words, and to provide substantial correspondence between the claims, description, and drawings.

All amendments and additions to the drawings or specification must not include new matter beyond the original disclosure. Matter not found in either, involving a departure from or addition to the original disclosure, cannot be added, even if supported by a supplemental oath or declaration, and can be shown or claimed only in a separate application.

Your reply to an office action must be made within a time limit specified in the action. The maximum period for reply is six months (see 35 U.S.C. 133), though the USPTO Director may shorten it to not less than 30 days. The usual reply period is three months, although the time may be extended up to the maximum six months.

An extension-of-time fee is normally required, the amount depending on the length of the extension. Such extensions are generally unavailable after an application has been allowed.

If no reply is received within the time period, the application is considered abandoned and no longer pending. But if the failure to prosecute is shown to be unintentional, the application may be revived upon approval of a request to the USPTO Director.

The revival requires a petition to the Director establishing that the entire delay in filing the reply and petition was unintentional, along with a petition fee. The proper reply must also accompany the petition if not yet filed. If the petition is filed more than two years from the date of abandonment, an additional explanation of the circumstances surrounding the delay must be provided, to establish it was unintentional.

Appeal to the Patent Trial and Appeal Board (PTAB) and the courts

If the examiner persists in rejecting any claims in an application, or if the rejection has been made final, the applicant may appeal to the PTAB in the USPTO. The PTAB consists of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, the Deputy for the aforementioned Under Secretary and Director, the Commissioner for Patents, and the administrative patent judges. Normally, each appeal is heard by only three of these members.

An appeal fee is required, and you must file a brief to support your position. An oral hearing will be held if requested upon paying the additional fee.

As an alternative to appeal, when you desire consideration of different claims or further evidence, you may file a request for continued examination (RCE) or a continuation application. For the requirements for filing an RCE, see 37 CFR 1.114. An RCE is not available in a design patent application, but a continuation of a design application may be filed as a Continued Prosecution Application (CPA) under 37 CFR 1.53(d).

If the PTAB decision is still adverse, you may appeal to the Court of Appeals for the Federal Circuit, or file a civil action in the U.S. District Court for the Eastern District of Virginia. The Court of Appeals will review the office action and may affirm or reverse. In a civil action, you may present testimony, and the court will rule.

For more information, visit the PTAB page.

If, on examination or later reconsideration, the patent application is found allowable, a Notice of Allowance and Fee(s) Due will be sent to you or (if any) your attorney or agent of record. A fee for issuing the patent and (if applicable) for publishing the application (see 37 CFR 1.211-1.221) is due within three months from the date of the notice.

If timely payment of fees is not made, the application will be regarded as abandoned (see the current USPTO fee schedule). Late fees may be accepted if the delay is shown on petition to be unintentional. When fees are paid, the patent issues after the date of payment, dependent upon the volume of printing on hand.

The patent is published on the day of its grant. On that date, the patent file becomes open to the public, unless the application was opened earlier due to prior publication.

When publication of an application or granting of a patent would be detrimental to national security, the Commissioner for Patents will order it be kept secret and withhold publication or granting as long as required. The owner of an application under a secrecy order has the right to appeal to the Secretary of Commerce (35 U.S.C. 181).

Petitions concerning relevant matters are administered by the Office of Petitions. Petitionable matters include, but are not limited to:

• Filing of patent applications
• Revival of abandoned applications
• Reinstatement of expired patents
• Withdrawal of patent applications from issue
• Small entity entitlement
• Review of previous decisions by TCs (Technology Centers)
• Suspension of regulations
• Questions not specifically covered by regulations

Differences of opinion about the denial of patent claims because of prior art or other patentability issues related to the merits of the application are resolved by appeal to the PTAB. All other issues are petitionable to the USPTO Director. Ordinarily, objections are petitionable and rejections appealable. The PTAB will not ordinarily hear an issue that should be decided by the Director, and vice versa. See MPEP § 1201 for more information.

Each petition has these five general requirements:

• Be in writing (37 CFR 1.2)
• Contain a statement of facts involved, points to be reviewed, and the action requested (37 CFR 1.181[b])
• Be accompanied by a fee, if required, to avoid summary dismissal (37 CFR 1.181[d])
• Be timely filed, as required in 37 CFR 1.181(f) or in a specific statute or regulation
• Comply with any specific requirements of a statute, regulation, or USPTO policy

For more information, visit the Petitions page.

The Patents petitions timeline provides you access to petitions that can be submitted during each stage of prosecution, and information related to each specific petition and deciding office. Also, the timeline provides information on the historical grant rates and how long it takes for petitions to be decided.

Correspondents should include their full return addresses, including ZIP codes. The principal location of the USPTO is 600 Dulany Street, Alexandria, VA 22313-1450. Your personal presence at the USPTO is unnecessary.

You do not have to be a registered eFiler to file a patent application via EFS-Web. Only registered eFilers may try to file follow-on correspondence via EFS-Web, though. Follow-on correspondence by unregistered eFilers must be postal-mailed, faxed or hand-delivered to the address specified above.

If you receive a Notice of Incomplete Application that an application number has been assigned but no filing date granted, become a registered eFiler and file your reply via EFS-Web to avoid the $400 non-electronic filing fee. To file follow-on correspondence, become a registered eFiler or call the Electronic Business Center at 866-217-9197.

Visit the USPTO Mailing and hand-carry addresses page for a full mail-stop list. For example, mail after-final correspondence to:

Mail Stop AF
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Requests for a corrected filing receipt and replies to notices such as for omitted items, filing corrected papers, incomplete applications, compliance with nucleotide sequence requirements, filing missing application parts, and associated papers and fees should be mailed to Mail Stop Missing Parts. Petitions to be decided by the Office of Petitions, including to revive an application and accept late payment of issue or maintenance fees, should be mailed to Mail Stop Petition.

When a letter concerns a patent application, you must include the application number (series code and serial number, such as 12/123,456) or the serial number and filing date assigned to that application, or the international application number. Letters concerning a patent (other than for paying a maintenance fee) should include the name of the patentee, title of the invention, patent number, and date of issue.

An order for a copy of an assignment should identify the reel and frame number where the assignment or document is recorded. Otherwise, an additional charge applies to the time spent searching for the assignment.

Applications not published or issued as patents are not generally open to the public, with no information released except on written authority of you the applicant, your assignee or attorney, or when necessary to USPTO business. Applications and related records — including of any decisions, assignments other than unpublished applications, patent applications relied upon for priority, books, and other agency papers — are open to the public. They may be inspected in the USPTO Search Room, or copies ordered.

The USPTO cannot perform these functions:

• Respond to inquiries concerning the novelty and patentability of an invention prior to filing an application
• Give advice on possible patent infringement
• Advise on propriety of filing an application
• Respond to inquiries on whether or to whom an invention has been patented
• Expound on patent law or provide counsel, except when answering questions in regularly filed cases

General information may be furnished directly, or by supplying or calling attention to an appropriate publication. Visit the USPTO Contact page for more information.