How to File a Non-Provisional Patent Application

Jun 7, 2022

INTRODUCTION

Technological innovations in the 21st century have increased in leaps and bounds. Every day, enterprising and daring innovators solve problems in novel and ingenious ways. The Unitewd States is a powerhouse of innovation and scientific discovery. The foundation of this was established by the United States constitution. The Founding Fathers recognized the unique role of inventors in scientific progress. They set into motion special protections and exclusive rights over intellectual creations. Article I, section 8 of the US Constitution 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.”

The cost and effort of developing an invention can be very high. Therefore, IP rights act as an incentive for inventors (or applicants) by ensuring they can benefit from their own work by excluding others from replicating their invention. This is known as a “negative right” since the patent owner has a right to keep others from doing what only the patent owner is permitted. Rights are granted to the applicant for a period depending on the type of patent and other variables.

There are various types of Intellectual Property (IP) rights such as trademarks, copyrights, and patents (utility patents, design patents and plant patents). Here, we focus on patents – particularly Non-provisional Utility Patent Applications within the United States.

Patents only apply to inventions and innovations but not all inventions can receive patent protection.

A patent must:

  1. a) be novel and non-obvious;
  2. b) provide a technical solution to a problem;
  3. c) be capable of industrial application; and
  4. d) result from an inventive activity.

Our Vision at Dana Legal Services is to help creative minds to tackle the world’s problems. In this effort, this article outlines the sections of a non-provisional patent application and the differences from a provisional patent application. For a more detailed outline of the difference between provisional and non-provisional patent applications check out this blog. We also highlight the required documents and steps to file a patent application without a patent agent or attorney.

WHAT CONSTITUTES AS A NON-PROVISIONAL PATENT APPLICATION?

A non-provisional patent application is a formal patent application that includes a specification (detailed description of the invention, figures, claims, abstract), a signed declaration from the inventor, and payment of relevant fees. If the basic requirements are met, the application is assigned to a patent examiner who then corresponds back and forth with the applicant regarding amendments and arguments. If the examiner determines the application has inventive subject matter, a patent can be issued, allowing the patent owner to restrict other parties from benefiting from the invention. This process is referred to as patent prosecution.

Non-provisional patent applications are contrasted with provisional patent applications which is a type of “pre-application” to secure a filing date for an invention, pending the decision to file a non-provisional application. Provisional applications are often used to secure the invention while the applicant finalizes details or funding for the official application. A provisional patent application does not become an enforceable patent. Instead, a Non-provisional patent application must be filed within a year from the filing date of the provisional, claiming priority to the provisional.  

WHY DO YOU NEED A PATENT?

If you intend to make a profit off your invention, you should have a patent. If you do not have a patent, your revenue stream is not safe from infringers or third parties who might even try to block you from producing your own invention. The information age has resulted in online resources being readily available to both inventors and the general public. As a result, it is important that after inventing a new product, device, or unique technology, legal protection is obtained, prohibiting others from commercializing the patented invention. This provides the inventor an exclusive right to produce, sell, use or license their creation and generate profit.

Secondly, investors are attracted to business opportunities that have protected core ideas. This legal backing provides reassurance that the investor’s capital into the product or research is safe. It could also result in increased valuation and leverage in the transaction process.

Lastly, a patent is particularly important because the American system is not a “first to invent” system. Instead, emphasis is placed on the “first inventor to file.” Essentially, this places a premium on the speedy filing of new inventions in order for an inventor to beat all others who may try to claim a similar invention or features.

WHAT ARE THE TYPES OF PATENTS RECOGNIZED WITHIN THE USA?

There are 3 categories of patents to which all new inventions must fall. They include Plant Patents, Design Patents, and Utility Patents. Plant patents cover asexual reproductions of new plants. Design patents protect the unique appearance, and structure of a manufactured object. Utility patents, which are the most common type of patents, protect the function, method or system of doing something. Both provisional and non-provisional filings fall under the umbrella of utility patents, which are the subject of this article.

HOW LONG DOES A PATENT LAST WHEN GRANTED?

Generally, a non-provisional Utility Patent in the United States lasts for 20 years after the earliest priority date. This time frame is adjusted based on calculations from the USPTO. This duration is usually applicable to many countries around the world, albeit with slight variations.

APPLICATION REQUIREMENTS FOR A NON-PROVISIONAL PATENT APPLICATION

After deciding to file a non-provisional patent application, several steps must be taken to ensure that the process is successful. First off, the following documents need to be prepared.

  • Patent Application Transmittal Form, which identifies the applicant’s type of application, and general contents of the application.
  • Application Data Sheet
  • Specification, which is a written description of the invention, containing the claims sought to be protected and the process of making/using the invention. Note: The claims are sometimes seen as a separate part of the application.
  • Black and white line figures of the inventions.
  • Executed Declaration, which is a formal statement made by the inventor asserting that he/she is the original inventor of the claimed invention.

Armed with the above documents in the correct file format, an inventor can proceed to the USPTO website and file a patent application through the Electronic Filing System, called EFS-Web. This portal allows anyone with a web-enabled computer to file patent applications by submitting the required documents.

ACTUAL FILING PROCESS FOR A NON-PROVISIONAL PATENT APPLICATION

Here is a step-by-step description of how to file a non-provisional patent application with the USPTO.

Navigating the EFS-Web

The first step is to go to the USPTO website (USPTO.gov). Hover your cursor over the tab called “Patent” on the top menu. When the drop-down menu appears, click “Patent Center.” This takes you to the official filing platform containing various options for making new submissions, looking up an application’s status using a serial number, filing petitions, or opening a patent center account.

Opening an Account with the USPTO or Filing as an Unregistered User

Here, you can choose to click on “open a patent center account.” As an alternative, you have the option to file your patent as an unregistered user. Click on “Open EFS-Web unregistered.” This takes you to another page where you can begin filing your patent application. Fill in your first and last name as well as your preferred email address for correspondence. Moving on, you can either select “New application” or “Existing application.”

Clicking on “New Application” brings a drop-down menu where you must select if your application is a utility, design, or international design application. If you choose “Utility patent”, you must decide whether it is a provisional or non-provisional utility patent application. Click on “Non-Provisional” and “Continue” at the bottom corner of the page to proceed to the next stage.

Title of the Invention

The next page asks for the title of the invention. Capitalize the title of the invention. Next, fill in the name of the inventor. Lastly, fill out the correspondence mailing address where documents can be sent in physical form if necessary. When complete, click “Continue” at the bottom corner of the page to proceed to the next stage.

Uploading the Specification of the Invention

Next, you will upload the application documents onto the website. Click on “choose file.” This button opens up your PC for you to select the prepared documents which you want to upload. Refer to the documents needed at this stage which have already been listed in detail above. It is also important to ensure that they are in the required format. This is because the USPTO only accepts documents in .pdf and .docx format. Any other document format will show  a warning “error – file attached cannot be other than .pdf or text.”

For each document uploaded, you must specify that it is for the “Application part” and then in the menu of “Document Description,” select whether it contains Specification, Abstract, or Claims and fill in the exact page number on the document where this information starts and where it ends. This has to be done correctly in order to prevent an error message.

After this, add other supporting documents like your Drawings/Figures (these must be in black and white to prevent an extra fee), Application Data Sheets, Oath/Declaration. Also, note that when saving these documents, there should be no spaces left in the title. Instead, use an underscore (_) or hyphen (-) if there is a need for a gap. Likewise, only upper and lower case letters or numbers can be used, as special characters are prohibited in file names.

Having uploaded all the appropriate documents and matched them up to their “document description” as provided on the USPTO website, click on “Upload and Validate.” This launches a preliminary check through all your documents to see that everything is in order. If your application contains any errors, a red triangle symbol will appear near the document. If all documents are accepted, the filing portal shows a blue triangle, and you can proceed to payment.

Payment Stage

There are 3 kinds of fees to be paid. They are the search fee, examination fee, and filing fee. The amount to be paid for each of these fees is dependent on whether the applicant is a micro-entity, a small entity, or a large entity.

  1. A micro-entity is one that’s usually based on individual income, and the entity must not have 4 or more patent applications. Alternatively, the applicant can qualify by being an Institution of High Education( or receiving a majority of their income from an Institution of Higher Education. More information on Micro Entity Status. To certify these, a document known as the Micro Entity Status Form must to be filled and submitted with the initial application.
  2. Small entities are companies with less than 500 employees.
  3. Large entities are companies/corporations with more than 500 employees or any applicant that licenses to a company with more than 500 employees.

Large entities pay double the fees that small entities pay. However, problems can arise if insufficient fees are paid. Therefore, it is vital to select the correct entity size when paying fees to prevent future complications. 

If you initially filed a paper application via airmail, you would have to pay an additional paper filing fee. Likewise, you must pay for each claim exceeding twenty total claims or three independent claims. There is also a surcharge if you file your Oaths and Declarations late.

After adding all the relevant fees, click on “Calculate” at the end of the page. This gives you the estimated total payment for your patent application. Now, you can click “Continue” to proceed.

Final Landing Page

Here, all the uploaded documents uploaded are displayed again for the applicant to verify that they are correct and have been processed correctly. Also displayed is the fee worksheet showing the total amount due. It is essential to carefully review all the information that appears at this stage as this may be the last opportunity to correct anything.

When you have carefully reviewed every page, click “Submit” in the bottom corner of the page. This officially files your application and generates a serial number that can be used to track its status. Next, you will be taken to the page where the fees can be paid electronically either using a debit or a credit card. If the fees are not paid immediately, at the time when the filing is done, extra charges are incurred. Completing the fee payments in one sitting is the best practice. After payment, download and save the receipt of the transaction from the “Receipts” tab.

CONCLUSION

Society thrives on progress made possible by technology and innovation, and the patent system incentivizes and encourages inventors with exclusivity over the commercial exploitation of their creations. When it comes to non-provisional patent applications, there is a lot of planning involved. We’ve provided step-by-step instructions for submitting; if you want to learn more about the why and how browse through our blog library!

If you prefer to learn this info in a different format, you can check out our YouTube video on this topic CLICK HERE.

If you have any questions or wish for professional assistance in drafting and filing a patent application, we would be happy to discuss how we can help you. Our team at Dana Legal Services consists of patent gurus with decades of experience in the field. Do reach out to us at info@danalegalservices.com, or alternatively, drop your question on our website at www.danalegalservices.com/contact/.

 

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