Filing Requirements
After a patent application is carefully drafted such that the claimed invention is distinguishable from any known prior art, the patent application may be ready for filing. The particular filing requirements may differ depending on whether the patent application will be filed as a non-provisional patent application, a provisional patent application or a continuing application. Filing an international patent application is beyond the scope of this workbook and will not be discussed herein.
A variety of different forms are required from the initial filing of a patent application to the issuance thereof as a patent, therefore it is encouraged to carefully review section 600 of the MPEP. While several of the basic filing requirements are discussed below, it is important to note that the following discussion is by no means exhaustive.
For the purposes of this article, the types of applications of concern are: nonprovisional patent applications, provisional patent applications and continuing applications.
Provisional Patent Applications
A provisional application is typically used as a placeholder to secure a particular effective filing date for the subject matter disclosed therein. A provisional application must include a written description of the inventive subject matter and any drawings necessary to understand said subject matter to obtain a filing date. While not required to obtain a filing date, a complete provisional application also includes a cover sheet, which may be an application data sheet (ADS) or a cover letter identifying the application as a provisional application, and the applicable fee. If a provisional application is filed without a cover sheet and/or a fee, the applicant will be given two months from the date of notification of the missing part(s) to provide the missing cover sheet and/or fee. This two month time period is extendible under 37 C.F.R. 1.136(a).
Provisional applications are unique in that they: (1) do not require claims; (2) do not require an oath or declaration; (3) are not examined for patentability; and (4) are not entitled to claim priority from any earlier filed foreign and national applications. Moreover, a provisional application will automatically be abandoned 12 months after its filing date. Accordingly, if a nonprovisional application wishes to claim priority to a provisional application, the later filed nonprovisional application must be filed no later than 12 months after the provisional application’s filing date.[1]See, e.g., MPEP § 201.04(III).
Nonprovisional Patent Applications
A nonprovisional application may include any original or continuing application.
Original Applications
A nonprovisional, original application must include a written description, at least one claim, and any drawings necessary to understand the claimed invention to secure a filing date. While not required to secure a filing date, a complete nonprovisional application also includes a search fee, examination fee and the oath or declaration. If the nonprovisional application does not include the aforementioned fees upon filing, the applicant is given a time period (typically two months) from the date of notification of the missing part(s) in which to provide the missing fees. Applicants may postpone filing the oath or declaration until the application is in condition for allowance. It is advisable to submit a cover sheet, such as the USPTO’s designated Utility Patent Application Transmittal Sheet, upon filing the nonprovisional, original application.
Continuing Applications
A continuing application is a divisional, continuation, or continuation-in-part application. A divisional application is filed when an applicant wants to pursue claims directed to subject matter “carved out” of a prior nonprovisional application that has not yet issued or been abandoned. Such subject matter is often “carved out” due to a restriction requirement made by the patent examiner. The divisional application should include the same written description (specification and drawings) as the prior nonprovisional application, or at least the portion of said written description that is germane to the invention as claimed in the divisional application. Moreover, the divisional application is entitled to, and must claim, priority to the prior nonprovisional application.[2]See, e.g., MPEP § 201.06.
A continuation application is filed when an applicant wants to pursue additional claims to an invention disclosed in a prior nonprovisional application that has not yet issued or been abandoned. The prior nonprovisional application and the continuation application must have the same written description (specification and drawings) and at least one inventor in common. Additionally, the continuation application is entitled to, and must claim, priority to the prior nonprovisional application.[3]See, e.g., MPEP § 201.07.
A continuation-in-part (CIP) application is filed when an applicant wants to repeat a substantial portion of a prior non provisional applicant, as well as add additional subject matter not previously disclosed therein. The prior nonprovisional application and the CIP application must be copending, i.e., the prior nonprovisional must not have issued or been abandoned prior to filing the CIP application and must also have at least one inventor in common. Furthermore, the CIP application is entitled to, and must claim, priority to the prior nonprovisional application. Claims in the CIP application that are directed to subject matter disclosed in the prior nonprovisional application are entitled to the priority date of the nonprovisional application; whereas claims directed to the newly added subject matter are entitled to the actual filing date of the CIP application.[4]See, e.g., MPEP § 201.08.
Similar to nonprovisional original applications, continuing prosecution applications (i.e., continuation, divisional and CIP applications) must include a written description, at least one claim, and any drawings necessary to understand the claimed invention to secure a filing date. While not required to secure a filing date, a complete nonprovisional, continuing application also includes a search fee, examination fee and the oath or declaration. If the nonprovisional application does not include the aforementioned fees upon filing, the applicant is given a time period (typically two months) from the date of notification of the missing part(s) in which to provide the missing fees. Applicants may postpone filing the oath or declaration until the continuing application is in condition for allowance. However, for a continuation or divisional application filed by all or fewer than all of the inventors named in the prior nonprovisional application, a new oath or declaration may not be needed provided: (1) a proper oath or declaration was filed with respect to the prior nonprovisional application; and (2) a copy of said oath or declaration is included with the continuation or divisional application.[5]See, e.g., MPEP § 602.01(a). Finally, it is also advisable to submit a cover sheet, such as USPTO’s designated Utility Patent Application Transmittal Sheet, upon filing the nonprovisional continuing application.