There are several different types of patent applications that can be filed in the United States. A competent patent attorney must understand when and how to file each type of application.
Provisional Patent Application
The provisional patent application (Provisional) filing type was introduced to U.S. patent law in 1994 by an amendment to the Patent Act of 1952. Provisionals are filed under 35 U.S.C. 111(b). While the practice of filing Provisionals is relatively new, it has now become a ubiquitous industry standard as a way to secure the earliest possible filing date for a patent.
While claims are "the name of the game," so to speak, as discussed in my article on patent claims, They are not actually required in a Provisional. Additionally, an oath or declaration and Information Disclosure Statement (IDS) are not required.
So at this point, you may be asking, why is all this stuff not necessary for a Provisional, and what actually is required? Well, the first thing to understand is the purpose of filing a provisional. Unlike a Utility Patent Application, which I will discuss, a Provisional's purpose is not to be examined by a patent examiner to determine if the requirements to grant a patent are met. Rather, it is simply to secure a filing date—the date for which the invention's novelty is to be established.
To establish the patent application's filing date, no new matter can be added to the Utility Patent Application that was not in the Provisional. Not in the Claims, and not in the Specification. Patentees can and normally will make formal changes to the disclosure's structure to look more like a patent document. The only component that is absolutely required to obtain a filing date for a Provisional is a written specification. For Provisionals filed after December 18, 2013, drawings are not technically required. See 37 C.F.R. Section 1.53. However, because of the requirement that no new matter can be added after the filing date, it is fairly dangerous to file a provisional without drawings. Drawings can convey so much detail that is later used to claim the inventive aspects of the disclosure.
Once a Provisional has been filed, the patentee has 12 months to file a Utility Patent Application to be examined.
Nonprovisional (Utility) Patent Application
A nonprovisional utility patent application (Utility Application) is a type of filing that can ultimately lead to an issued patent after being examined by the United States Patent and Trademark Office (USPTO). A Utility Application can be filed with the USPTO through its electronic filing system (EFS-Web), U.S. mail, or by hand delivery to the Office in Alexandria, Virginia.
The following elements are required for a Utility Application.
Utility Patent Application Transmittal Form or Transmittal Letter
A Utility Patent Application Transmittal Form identifies the items being filed, the applicants, the type of application, the title and contents of the Utility Application, and anything else enclosed in the transmittal.
The filing, search, and examination fees are due upon filing a Utility Application under 35 U.S.C. Section 111(a). Under 37 C.F.R. Section 1.53(f)(2), an applicant who does not pay the required fee on the filing date must correct the insufficiency by paying the basic filing fee along with a surcharge under 37 C.F.R. Section 1.16(f) to avoid abandonment of the application.
At the time of writing this article, the USPTO fee schedule (effective January 2, 2021) prescribes a basic filing fee of $320.00. It should be noted that there are reduced fees required for applicants who qualify under either Small Entity Status (37 C.F.R. Section 1.27(a)) or Micro Entity Status (37 C.F.R. Section 1.29(a) or (d)).
Application Data Sheet
The patent specification is the "meat on the bones" so to speak of the patent document. It must include a written description of the invention and the manner and process of making and using the same. See 37 C.F.R. 1.71(a). Along with formal requirements such as the font, paper size, and language used, there are rules for what should be included in the specification. Under 37 C.F.R. Section 1.77(b), the requirements include, among others, a title, background, summary, description of the drawings, detailed description, a claim or claims, and an abstract.
Under 35 U.S.C. Section 113, the patent application must provide drawings with the Utility Application where they are necessary for an understanding of the subject matter. A vast majority of Utility Applications include drawings to supplement the specification. If drawings are not provided when necessary, the applicant is not accorded a filing date until the drawings are furnished.
Executed Oath or Declaration
Each inventor applying for the patent must make an oath or declaration which includes statements regarding the disclosure. For instance, the inventors must make an oath or declaration that they believe they are the original inventor or original joint inventor of a claimed invention.
Besides the aforementioned requirements, additional components may be necessary for specific circumstances.
Design Patent Application
Design Patent Applications (Design Applications) are filed for visual ornamental characteristics of an article of manufacture. A design patent application may only contain a single claim. See 37 CFR Section 1.153. If two designs are independent and distinct, they must be claimed in separate Design Applications. Separate embodiments with minimal configuration differences may be considered a single design concept and can be included in a single application.
Plant Patent Application
(*This section is coming soon!*)