Checklist for Your U.S. Patent Application
Checklist
- Specification
- Application Data Sheet
- Utility Patent Application Transmittal
- Oath or Declaration
- Information Disclosure Statement
- Small and Micro Entity Status
- Fee Transmittal
๐น Specification
The specification forms the core of the application. The specification should clearly and fully describe the invention so that others in the field can understand, make, and use the invention. It must be detailed enough to satisfy legal requirements and support the claims made about the invention.
Written Specification
- Title of the Invention: A brief but technical title that accurately reflects the nature of the invention.
- Cross-Reference to Related Applications: If applicable, references to any related patent applications.
- Background of the Invention: Discusses the field of the invention and describes the background information and problems that the invention aims to solve.
- Summary of the Invention: A concise summary of the invention, highlighting its main aspects and advantages.
- Brief Description of the Drawings: If drawings are included, a brief description of each figure.
- Detailed Description: This is the most substantial part, providing a thorough explanation of how the invention works and how it is made. This section often includes examples and embodiments of the invention.
- Claims: Define the scope of the patent protection being sought. Claims are the legally operative part of the application and are critical in determining the extent of patent rights.
- Abstract of the Disclosure: A brief summary of the invention intended to provide a quick understanding of its nature and substance.
Drawings
Drawings, though part of the specification, should ideally be submitted as separate files when filing a patent application. This separation into two distinct files โ the written specification and the drawings โ addresses potential formatting challenges. The written specification is now required to be submitted as a Word DOCX document. Meanwhile, drawings, which visually illustrate and complement the written description, can still be submitted in a format suited for visual content, such as PDF. This method ensures that both aspects of the application are presented clearly and avoids formatting issues that might arise from combining them into a single Word file.
๐น Application Data Sheet
The Application Data Sheet (ADS) is a significant document in the U.S. patent application process, providing a consolidated overview of pertinent data regarding the patent application. The form should be carefully filled out to avoid any errors or inaccuracies. Note that this PDF form is only readable with Adobe PDF Reader and may not be compatible with most third-party PDF readers or browser-integrated PDF viewers..
https://www.uspto.gov/sites/default/files/documents/aia0014.pdf
๐น Oath or Declaration
The Oath or Declaration is a formal statement that must be made by the inventor(s) as part of the patent filing process. Applicants can create their own Declaration; however, it’s common for companies to use a combined declaration and assignment form for this purpose. Generally, applicants may use the USPTO-provided PTO/AIA/01 form to serve as this official statement. Although the Oath or Declaration can be submitted later, it is highly recommended to include it at the time of the initial patent application filing.
https://www.uspto.gov/sites/default/files/documents/aia0001.pdf
๐น Information Disclosure Statement
An Information Disclosure Statement (IDS) is a document submitted to the U.S. Patent and Trademark Office that provides prior art and relevant information for the examination of a patent application.
Individuals involved in preparing and prosecuting a U.S. patent application are required to continuously maintain candor and good faith by informing the U.S. Patent and Trademark Office (USPTO) of any prior art or information potentially โmaterialโ to the application’s examination.
๐น Utility Patent Application Transmittal
The “Utility Patent Application Transmittal” form, also known as the USPTO PTO/AIA/15, is an official document used in the United States when filing a utility patent application. This form serves as a cover sheet and provides a structured way to organize and submit the necessary components of a utility patent application.
http://www.uspto.gov/forms/aia0015.pdf
๐น Small and Micro Entity Status
Applicants with small or micro entity status are eligible for fee discounts. If you qualify as a small entity, no special form is needed to claim reduced fees; simply check the appropriate box on the fee transmittal form or application data sheet and pay the exact small entity fee. Micro entity status applies to individuals, small businesses, or nonprofit organizations that meet small entity criteria and additional requirements. To qualify as a micro entity and claim further discounts, individuals must complete form PTO/SB/15A or 15B.
For PTO/SB/15A, an individual must:
- Qualify as a small entity.
- Have been named an inventor in no more than four U.S. nonprovisional patent applications.
- Have a gross income in the prior year not exceeding three times the median household income, without assigning or licensing rights in a way that disqualifies as a micro entity.
For PTO/SB/15B, the individual must:
- Qualify as a small entity.
- Be primarily employed by a higher education institution, as defined in the Higher Education Act of 1965, without assigning or licensing patent rights in a way that disqualifies as a micro entity.
For more details, refer to 37 CFR 1.29 and MPEP ยง 509.03. Links for certification based on gross income and employment by an institution of higher learning are available at www.uspto.gov/forms/sb0015a.pdf and www.uspto.gov/forms/sb0015b.pdf, respectively.
๐น Fee Transmittal
The Fee Transmittal form or PTO/SB/17 form is utilized to specify the fees accompanying the patent application. For nonprovisional patent applications, the initial filing, search, and examination fees must be paid at the time of filing by all applicants, including those with small or micro entity status. Failure to pay these fees at filing will result in a late filing surcharge. Additionally, excess claims fees and an application size fee may be applicable if certain thresholds are surpassed.
For applicants claiming micro entity status, a different form is required, as further detailed below.
http://www.uspto.gov/forms/sb0017.pdf
Note: PCT US national stage applications require the PTO-1390 transmittal letter instead of PTO/SB/17 fee transmittal. Fee rates for PCT applications vary.