Patent FAQs

The patent process can be challenging if you are not familiar with it. The Frequently Asked Questions (FAQs) below will provide useful information from the United States Patent and Trademark Office (USPTO) regarding the patent process.


Patent Basics

A patent is a property right of limited duration relating to an invention, granted by the U.S. Government through the United States Patent and Trademark Office (USPTO) in exchange for public disclosure of the invention.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.
A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks that are used in interstate or foreign commerce may be registered with the USPTO.

Copyright is a form of protection provided to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office at the Library of Congress.
A patent may be applied for only in the name(s) of the actual inventor(s).

According to the law, the inventor, or a person to whom the inventor has assigned or is under an obligation to assign the invention, may apply for a patent, with certain exceptions. If the inventor is deceased, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is legally incapacitated, the application for patent may be made by a legal representative (e.g., guardian). If an inventor refuses to apply for a patent or cannot be found, a joint inventor may apply on behalf of the non-signing inventor.

If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes only a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.
There are three types of patents:

1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;

2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and

3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
Generally, the term of a new patent is twenty (20) years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. The right conferred by the patent grant is effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.
Fees vary depending on the type of patent application you submit. Fees may also vary according to the way you "claim" your invention.

There are three basic fees for utility patents.

  • The filing fee, which is non-refundable whether or not a patent is granted.
  • The issue fee (you pay this only if your claimed invention is allowed).
  • Maintenance fees (paid at 3½, 7½, and 11½ years after your patent is granted - these fees "maintain" your legal protection).
  • Additional fees may be required. Applicants are strongly advised to check the current fee schedule before submitting their applications.

What can be patented: utility patents are provided for a new, nonobvious and useful:

  • Process
  • Machine
  • Article of manufacture
  • Composition of matter
  • Improvement of any of the above

NOTE: In addition to utility patents, encompassing one of the categories above, patent protection is available for (1) ornamental design of an article of manufacture or (2) asexually reproduced plant varieties by design and plant patents.

What cannot be patented:

  • Laws of nature
  • Physical phenomena
  • Abstract ideas
  • Literary, dramatic, musical, and artistic works (these can be Copyright protected).
  • Inventions which are:
  • Not useful (such as perpetual motion machines); or
    Offensive to public morality

Invention must also be:

  • Novel
  • Nonobvious
  • Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
  • Claimed by the inventor in clear and definite terms
An invention must be "novel" in order to be patentable. An invention loses novelty if, before a patent application is filed, the invention is described in any publication or public presentation in sufficient detail to allow a person skilled in the relevant art to reproduce the invention based on that publication (typically referred to as an "enabling publication").

The United States is unique in that it offers a grace period after publication occurs. If a patent application is filed within twelve (12) months of the enabling publication, a patent may still be secured in the United States. Most other countries require "absolute novelty," meaning patent rights are lost as soon as the publication occurs. When determining the date of publication for an academic article, it is important to determine the earliest date the publication became publicly available. Frequently, articles are published on the web in advance of the printed journal. The date it was published on the web would be the publication date under U.S. patent law. If a patentable invention is described under a confidentiality agreement, that description is not considered an "enabling publication" under U.S. patent law.
First, review the list of what can and cannot be patented and determine if your invention falls into one of those categories.
Second, learn the basics of the patenting process.
Next, a search of all previous public disclosures (prior art) including, but not limited to previously patented inventions in the United States may be conducted to determine if your invention has been publicly disclosed and thus is not patentable. A search of foreign patents and printed publications may also be conducted. While a search of the prior art before the filing of an application is not required, it is advisable to do so. A registered attorney or agent is often a useful resource for performance of a patentability search. After an application is filed, the United States Patent and Trademark Office (USPTO) will conduct a search as part of the official examination process. Conducting a thorough patent search is difficult, particularly for the novice. Patent searching is a learned skill. The best advice for the novice is to seek out search experts to help in setting up a search strategy. If you are in the Washington, D.C. area, the USPTO provides public access to collections of patents, trademarks, and other documents at its search facilities located in Alexandria, Virginia.
Inventors may apply for one of two types of patent applications: (1) A non-provisional application, which begins the examination process and may lead to a patent and (2) A provisional application, which establishes a filing date but does not begin the examination process. Both types of patent applications can be filed either electronically by using the Electronic Filing System (EFS) or in writing to the Commissioner for Patents. Inventors can also request that the United States Patent and Trademark Office (USPTO) send informational materials providing a broad overview of the process of obtaining a United States patent, including general requirements and a listing of the depository libraries.
If each person had a share in the ideas forming the invention as defined in the claims (even if only as to one claim), they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.
A provisional application is a patent application, which establishes an official United States patent application filing date for the invention and permits the term "Patent Pending" to be applied in connection with the invention. A provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. A provisional application automatically becomes abandoned when its pendency expires 12 months after the provisional application filing date by operation of law. Therefore, an applicant who files a provisional application must file a corresponding nonprovisional application for patent (nonprovisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.
Once a provisional application is filed, an alternative to filing a corresponding nonprovisional application is to convert the provisional application to a nonprovisional application by filing a grantable petition under 37 C.F.R. § 1.53(c)(3) requesting such a conversion within 12 months of the provisional application filing date.
The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in many countries around the world. Although the PCT system does not provide for the grant of "an international patent," the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in the PCT member countries.
An inventor is free to prepare his or her own patent application (or provisional patent application). However, the USPTO strongly recommends that all prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their patent applications.
Public users may perform preliminary searches of patent information in a variety of formats including on-line, microfilm, and print at the United States Patent and Trademark Office (USPTO) Public Search Facility located in Alexandria, VA. Computer workstations available for use at the search facility provide automated searching of patents issued from 1790 to the current week of issue. Full document text may be searched on U.S. patents issued since 1971 and OCR text from 1920 to 1970. U.S. patent images from 1790 to the present may be retrieved for viewing or printing. Some foreign patent documents are available.
A complete patent backfile in numeric sequence is available on microfilm or in optical disc format. Official Gazettes, Annual Indexes (of Inventors), the Manual of Classification and its subject matter index, and other search aids are available in various formats.
Patent assignment records of transactions affecting the ownership of patents, microfilmed deeds, and indexes are also available.

Users can access the full-text searchable database containing patent information for all U.S. patents granted since 1976 and all patent application publications (first published in March 2001), on the USPTO web site at www.uspto.gov/go/pats.

Inventors may retain a patent attorney or agent to conduct a complete search.

Inventors can also perform a preliminary search of patents at one of the Patent and Trademark Depository Libraries (PTDLs) established throughout the United States. These libraries have copies of patents in microfilm and/or optical disc format arranged in numerical order. They have classification search tools, automated search aids, and photocopy facilities available to the public.
In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:

"(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention" or


"(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention."


There are certain limited patent law exceptions to patent prohibitions (1) and (2) above. Notably, an exception may apply to a "disclosure made 1 year or less before the effective filing date of the claimed invention," but only if "the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed … from the inventor or a joint inventor."

In patent prohibition (1), the term "otherwise available to the public" refers to other types of disclosures of the claimed invention such as, for example, an oral presentation at a scientific meeting, a demonstration at a trade show, a lecture or speech, a statement made on a radio talk show, a YouTube™ video, or a website or other on-line material.

Effective filing date of the claimed invention: This term appears in patent prohibitions (1) and (2). For a U.S. nonprovisional patent application that is the first application containing the claimed subject matter, the term "effective filing date of the claimed invention" means the actual filing date of the U.S. nonprovisional patent application. For a U.S. nonprovisional application that claims the benefit of a corresponding prior-filed U.S. provisional application, "effective filing date of the claimed invention" can be the filing date of the prior-filed provisional application provided the provisional application sufficiently describes the claimed invention. Similarly, for a U.S. nonprovisional application that is a continuation or division of a prior-filed U.S. nonprovisional application, "effective filing date of the claimed invention" can be the filing date of the prior filed nonprovisional application that sufficiently describes the claimed invention. Finally, "effective filing date of the claimed invention" may be the filing date of a prior-filed foreign patent application to which foreign priority is claimed provided the foreign patent application sufficiently describes the claimed invention.

Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.
The applicant for a patent will be required by law to furnish a drawing of the invention whenever the nature of the case requires a drawing to understand the invention. However, the Director may require a drawing where the nature of the subject matter admits of it; this drawing must be filed with the application. This includes practically all inventions except compositions of matter or processes, but a drawing may also be useful in the case of many processes. The drawing must show every feature of the invention specified in the claims, and is required by the USPTO rules to be in a particular form. The USPTO specifies the size of the sheet on which the drawing is made, the type of paper, the margins, and other details relating to the making of the drawing. The reason for specifying the standards in detail is that the drawings are printed and published in a uniform style when the patent issues, and the drawings must also be such that they can be readily understood by persons using the patent descriptions.
These terms are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.
For patents, if the owner of the invention qualifies as a small entity or micro entity, the filing, issue, and maintenance fees are reduced by 50 percent or 75 percent, respectively.
Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file. After the patent is issued, the USPTO Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone, and copies of these files may be purchased from the USPTO Office.
A file history of a patent or a published application for patent may also be obtained in person through the File Information Unit (FIU). The FIU is on the third floor of the Randolph Square Building, 2800 S. Randolph St., Arlington, Virginia. You may contact the FIU through their direct line at 703-756-1100.
The USPTO cannot act or advise concerning the business transactions or arrangements that are involved in the development and marketing of an invention. The USPTO, however, will publish for a fee, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. In addition, the Office of Independent Inventor Programs (OIIP) was established in March 1999 in order to meet the special needs of independent inventors. The OIIP establishes new mechanisms to better disseminate information about the patent and trademark processes and to foster regular communication between the USPTO and independent inventors.
Copies of patents or patent application publications, shipped via the U.S. Postal Service, may be purchased for $3.00 each. To order a patent copy, you must provide the patent number. To order a copy of a patent application publication, you must provide the publication number.
The United States Patent and Trademark Office (USPTO) provides PAIR - Patent Application Information Retrieval System. PAIR has a private site that provides a USPTO/Internet infrastructure capability to securely provide patent application status information to USPTO customers with a customer number associated with the correspondence address for their application and the appropriate software tools. Contact the Patent Electronic Business Center (PEBC) at 571-272-4100 to learn more about the tools necessary to access private PAIR.
PAIR also has a public side to provide the same information to the public once an application has issued as a patent or published as a patent application publication. Once you receive a patent filing receipt containing the application number of your application, you may check on the status of a pending application once you obtain the appropriate tools.
To find out information on PAIR, visit the PEBC website at: http://www.uspto.gov/ebc/newusers.html. You may also call the examiner assigned to your patent application, and if this information is not known, you may call the File Information Unit at 703-308-2733. For additional information, you may contact the USPTO Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time.

Patent Search

The U.S. Patent and Trademark Office (USPTO) Patent and Trademark Resource Centers Program (PTRCP) administers a nationwide network of public, state and academic libraries designated as Patent and Trademark Resource Centers (PTRCs).
PTRCs are located in 48 states, the District of Columbia and Puerto Rico where collections of patents may be examined. PTRCs are open to the public and provide access to automated search systems to assist with your search. Call the resource center before visiting to determine hours of operation, services, and fees. For additional information on the nearest PTRC, visit the PTRC web pages. You may perform preliminary searches of patent information on the USPTO website.
It is common for a patent searcher to use the U.S. patent classification system, in addition to keyword searching, to find relevant U.S. patent publications prior art (issued U.S. patents and U.S. published patent applications). A comprehensive prior art search would also include foreign patents and non-patent literature (newspapers, magazines, dissertations, conference proceedings, and websites).
A common search strategy begins with a keyword search, which is used to identify relevant patents. The classification numbers and cited references used in the patents identified are then investigated to find other patents and information.
The Cooperative Patent Classification (CPC) effort is a joint partnership between the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) where the Offices have agreed to harmonize their existing classification systems (European Classification (ECLA) and United States Patent Classification (USPC) respectively) and migrate towards a common classification scheme.
Use the USPTO and EPO bi-lateral Cooperative Patent Classification (CPC) informational site, or you can start browsing the CPC scheme available online.

Information resources available on the USPTO Office of Patent Classification (OPC) site are described below.

  • The Cooperative Patent Classification (CPC) scheme and definitions. For Cooperative Patent Classification (CPC) frequently asked questions (FAQ) and training related information, visit the bi-lateral CPC information page or start browsing the CPC scheme.
  • The United States Patent Classification (USPC) schedules, definitions, and the Index to the USPC. For information about USPC (e.g., Patent Examiner's Handbook for USPC, etc.) browse the USPC resources section and the Documents and Reports related to the USPC Manual of Classification on the Classification Standards and Development Home Page.
  • The International Patent Classification (IPC) scheme, definitions, and catchword index. For information about IPC (e.g., IPC Guide, Nice Agreement, Locarno Agreement, etc.) visit the International Classification Resources page on the USPTO website.

Patent Assignment

A patent is intellectual property that may be sold or bequeathed to heirs of a deceased patentee or patent owner. The patent law provides for the transfer or sale of a patent or patent application by means of a legal document called an assignment. A properly executed assignment transfers all rights from the existing owner to another person. When the patent is transferred, the assignee becomes the new owner of the patent and has the same rights as the original owner. The U.S. Patent and Trademark Office (USPTO) records all assignment documents and any document that affects title. Documents that affect title are, but are not limited to, mergers, changes of names, security agreements, various liens, licenses, probate documents, and bankruptcy petitions. For information on filing a patent assignment or documents affecting title, please call the Assignment Recordation Branch at 571-272-3350 between 8:30 a.m. and 5 p.m. ET Monday through Friday, except Federal holidays. To search patent assignment records online, you can use Patent Assignment Search.
The USPTO Public Search Facility maintains assignment ownership records. Located on the first floor of the Madison East building at 600 Dulany St., Alexandria, VA 22313. Assignment information is also available at the Patent and Trademark Resource Centers throughout the United States.
For additional patent assignment information, visit the USPTO website at http://www.uspto.gov/patents-maintaining-patent/patents-assignments-change-search-ownership.
Yes, when the patent owner/respondent identifies its real party in interest or files a power of attorney, the USPTO will check the information with the assignment record (if any) to verify that the information is correct and that the paper is signed properly, if the patent or application has been assigned.
Therefore, patent owners/respondents are encouraged to keep assignment records up to date.

Foreign Filing License from the USPTO

In the language of the statute, "[a] license from the Commissioner for Patents under 35 U.S.C. § 184 is required before filing any application for patent including any modifications, amendments, or supplements thereto or divisions thereof or for the registration of a utility model, industrial design, or model, in a foreign country, foreign patent office, foreign patent agency, or any international agency (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications [], if the invention was made in the United States, and:
(1) An application on the invention has been filed in the United States less than six months prior to the date on which the application is to be filed, or
(2) No application on the invention has been filed in the United States."
If an expedited decision is not needed, the mere filing of a provisional, design, utility or PCT (in the United States receiving office) is considered a petition for a foreign filing license. See 37 CFR § 5.12(a).
If expedited processing is required, then a separate petition must be submitted to the USPTO Office of Licensing and Review pursuant to 37 CFR § 5.12(b).
The role of Licensing and Review (L&R) is to administer the Patent Secrecy Act as defined by 35 U.S.C. § 181-186 and 37 CFR part 5 ("the Act"). The primary function of the Act is to prevent publication of an application as a patent or a patent application publication where such disclosure would be detrimental to U.S. national security. Additionally, the Act provides for the licensing of applications for export for the purposes of filing for patents abroad.

The duties of L&R include:

  • Reviewing all applications for patent (provisional, utility, design, PCT (where the U.S. is the receiving office)) to determine whether a foreign filing license may be granted;
  • Managing all existing secrecy orders pursuant to 35 U.S.C. § 181 and 37 CFR part 5;
  • Treating all petitions for expedited foreign filing licenses pursuant to 37 CFR § 5.12-5.14; and
  • Policing the property rights of the National Aeronautics and Space Administration (NASA) and the Department of Energy (DOE) by administering a portion of the NASA Act as provided for in 42 U.S.C. § 2457, and a portion of the Atomic Energy Act as provided for in 42 U.S.C. § 2181 and § 2182.
A foreign filing license only covers a filing in a foreign country and activities related to such filing. See 37 CFR § 5.15(a) and § 5.15(b) for the various license scopes.
NOTE: A foreign filing license from the USPTO does not authorize applicants to outsource invention information to a foreign country for the purposes of preparing U.S. patent applications. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.
It is not the role of Licensing and Review to determine the need for a license. Rather, the need for a license is a legal decision that lies with the applicant.
A foreign filing license from the USPTO is not country specific. However, applicant must also abide by the various regulations and restrictions related to sending information to certain countries. For more information, please contact the Bureau of Foreign Assets at the Department of Treasury, the Bureau of Industry and Security at the Department of Commerce, or both.
A petition for an expedited foreign filing license based on a pending patent application (37 CFR § 5.14), or for material not related to any pending application (37 CFR § 5.13), may be mailed, faxed, hand-delivered or filed thru EFS-Web (provided an application is on file).
Facsimiles must be sent to: 571-273-0185
Hand delivery: Room 4B31, 501 Dulany Street (Knox Building), Alexandria Virginia 22314.
Regular mail: Mail Stop: L&R
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
All licenses will be mailed to the appropriate correspondence address, however, a courtesy copy may be provided by facsimile if such notification is requested.
Licensing and Review (L&R) strives to process petitions for expedited license within three business days of receipt and all petitions are treated in the order in which they are received. In limited instances, licenses may be processed quicker upon a showing that a bar date is imminent. It is suggested that after filing the petition, applicant alert L&R to the need for special handling.

Initial Patent Examination

All applications with drawings need to be reviewed in OIPE to determine whether the drawings are capable of reproduction (can be copied and/or scanned in black and white) and are in the English language. Further compliance with 37 CFR § 1.84 will not be required by OIPE. Reproducable drawings are required even if an application is not going to be published, so that the Office will be able to provide a certified copy of the application for foreign priority and other purposes. Furthermore, since applicants may rescind a non-publication request, all applications need to be reviewed according to the same standards regardless of whether they are to be published. In addition, an English translation of the application is required pursuant to 37 CFR § 1.52(d)(1). Aside from the non-English text and for the need to have a black and white copy of color drawings/photographs in plant applications (see 37 CFR § 1.165(b)), this drawing review during scanning is the same review that has been performed for several years.
When an application is originally filed with an abstract having more than 150 words, the Office of Initial Patent Examination (OIPE) will send applicant a notice to correct the abstract (with a period for reply of two months). The application file will be held in OIPE and not released to the assigned Technology Center for examination until an acceptable abstract is filed. The mere presence of an abstract which fails to comply with amended § 1.72 will not prevent an application from being accorded a filing date. It will, however, delay the initiation of the examination. Failure to comply to the notice within 3 months, in an application subject to Patent Term Adjustment, may cause a reduction of any patent term adjustment.

Prioritized Patent Examination

Prioritized examination is a procedure for expedited review of a patent application for an additional fee. The goal is to provide patent applicants who file under the program with a final disposition within twelve months of prioritized status being granted. The rule applicable to prioritized examination is 37 C.F.R. § 1.102(e). Prioritized examination of newly filed applications is also known as "Track One" or "Track I".
Original nonprovisional utility and plant patent applications filed under 35 U.S.C. § 111(a), having no more than four (4) independent claims, thirty (30) total claims, and no multiple dependent claims, and filed on or after September 26, 2011, are eligible for prioritized examination (Track One). The term "original application" includes both first filings and continuing applications; see MPEP § 201.04(a). Thus, continuation, continuation-in-part, and divisional applications are eligible for prioritized examination, but reissue applications are not.
The request for prioritized examination may be filed using form PTO/AIA/424, which is available on EFS-Web and on the USPTO's Internet Web site at http://www.uspto.gov/forms/index.jsp. Failure to use form PTO/AIA/424 could result in the USPTO not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination, applicant's form should be an equivalent to the USPTO's form.
Consult the current fee schedule, available at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp, for the correct fee amounts. The fees required to be paid upon filing for Prioritized Examination are:
i. Basic filing fee, as set forth in 37 CFR § 1.16(a), or for a plant application, 37 CFR § 1.16(c).
ii. Search fee, as set forth in 37 CFR § 1.16(k), or for a plant application, 37 CFR § 1.16(m).
iii. Examination fee, as set forth in 37 CFR § 1.16(o), or for a plant application, 37 CFR § 1.16(q).
iv. Publication fee, as set forth in 37 CFR § 1.18(d). However, since this fee is currently set to $0, no publication fee is due at this time for a request for prioritized examination. The prioritized examination rule still contains the publication fee as a requirement in the event that changes to the publication fee are made in the future.
v. Track One processing fee, as set forth in 37 CFR § 1.17(i)(1).
vi. Track One prioritized examination fee of $4,000.00 ($2,000.00 for small entities, or $1,000.00 for micro entities). If any of the above fees are unpaid at the time of filing of the application, the Request for Prioritized Examination will be dismissed. However, if an explicit authorization to charge any of the missing fees has been provided in the papers accompanying the application and the request, those fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees. It is recommended that applicant include an authorization to charge any additional fees under 37 CFR § 1.16 and § 1.17 to ensure that a Track One request is not dismissed for failure to pay the required fees.
Yes, but only if the follow-on EFS-Web submission is submitted on the same day that the utility application and the prioritized examination request form are filed. For example, if the filing fees are inadvertently omitted when the application is filed via EFS-Web, then applicant may submit the filing fees as a follow-on submission directly into the application on the same day the filing date of the application. Applicants are also reminded that only registered users of EFS-Web can submit follow-on as documents via EFS-Web and that follow-on documents are documents filed after the initial submission of the application. Thus, applicant would need to be a registered user of EFS-Web to submit such a follow-on document on the same day the application was filed. See also MPEP § 502.05, III, D. for examples describing implications raised when applicant inadvertently omits an item when filing an application electronically via EFS-Web.
Yes. Although the publication fee set forth in 37 CFR § 1.18(d) is required by the rule, this fee currently is $0, so no fee is due. However, if the fee is set to a different amount in the future, that fee amount must be submitted with the request for prioritized examination (along with the other required fees), even though nonpublication is being requested.
Yes. An applicant may file a U.S. application under 35 U.S.C. § 111(a), and in that application, claim the benefit of the earlier international application under 35 U.S.C. § 365(c), or claim the right of priority of the earlier international application under 35 U.S.C. § 365(a), subject to the conditions of 35 U.S.C. § 365. Such an application is eligible for prioritized examination. However, an applicant may not request prioritized examination (Track One) of a national stage application (submitted under 35 U.S.C. § 371) of an international application.
Yes. Any original utility or plant nonprovisional application filed under 35 U.S.C. § 111(a) and claiming priority to a foreign application under 35 U.S.C. §§ 119(a)-(d) or (f) is eligible for prioritized examination.
The prioritized examination program grants special status until one of the following occurs:
i. Applicant files a petition for extension of time to extend the time period for filing a reply.
ii. Applicant files an amendment to amend the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim.
iii. Applicant files a request for continued examination (RCE).
iv. Applicant files a notice of appeal.
v. Applicant files a request for suspension of action.
vi. A notice of allowance is mailed.
vii. A final Office action is mailed.
viii. The application is abandoned.
ix. Examination is completed as defined in 37 CFR § 41.102.
Only the Track One prioritized examination fee, set forth in 37 CFR § 1.17(c), will be refunded upon the dismissal of the original request for prioritized examination. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The Track One processing fee, set forth in 37 CFR § 1.17(i), will be retained to cover the cost of processing the request. In accordance with 37 CFR § 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded. Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR § 1.138(d). Furthermore, applicant may request a refund of the publication fee in accordance with MPEP § 1126 if the application is not published under 35 U.S.C. § 122(b).
Applicant may file a petition under 37 CFR § 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the USPTO in not granting the request before filing such a petition under 37 CFR § 1.181.

Alternately, applicant may file a new request for prioritized examination for that same request for continued examination. The new request must include the proper fees and be timely, i.e., be filed prior to the mailing of a first Office action after the filing of the request for continued examination.
A preliminary amendment filed in an application that includes a request for prioritized examination will not result in dismissal of a pending request, or termination of special status if a request has already been granted, so long as the preliminary amendment does not cause the application to contain more than four (4) independent claims, more than thirty (30) total claims, or a multiple dependent claim.
The Request for Prioritized Examination must be filed prior to the mailing of a first Office action after the filing of a request for continued examination, and either be filed concurrently with, or subsequently to, the filing of a request for continued examination.
Original nonprovisional utility and plant patent applications filed under 35 U.S.C. § 111, or having entered the national stage under 35 U.S.C. § 371, in which a proper request for continued examination (RCE) has been filed, or is concurrently being filed, are eligible for prioritized examination. A proper RCE can only be filed if prosecution in the application is closed (e.g., the last Office action is a final action, a notice of allowance, or an action that otherwise closes prosecution in the application). See 37 CFR § 1.114(b). A Request for Prioritized Examination must be made before an Office action responsive to the RCE has been mailed. The application must contain, or be amended to contain, no more than four independent claims, thirty total claims, and no multiple dependent claims. Requests for Prioritized Examination of utility patent applications must be filed using EFS-Web. Requests for Prioritized Examination of plant patent applications must be filed in paper.
Yes. The prioritized examination program permits a single request to be granted upon filing a new application under 35 U.S.C. § 111(a), and a single request to be granted upon filing a request for continued examination under 37 CFR § 1.114.

eOffice Action Program

The e-Office Action program is a USPTO initiative available through Private PAIR. The e-Office Action program is designed to notify applicants, via e-mail, that new USPTO communication is available for viewing and downloading in Private PAIR. Applicants who opt-in to the program will receive a daily e-mail notification that will replace the daily POSTAL MAILED PAPER DELIVERY of USPTO communication.
NOTE: The e-Office Action program is based on applications associated to a Customer Number. Applicants with multiple Customer Numbers must opt-in each Customer Number to receive separate e-mail notifications.
Minimizes the risk of delayed or lost USPTO communication sent by mail.
E-mail notification expedites the availability of USPTO communication up to three days faster than communication sent by postal mail. Eliminates receipt of paper copies thus reducing paper communication processing errors and docketing time.
Effective on June 29, 2009, any registered attorney or agent of record, and pro se inventor who is a named inventor, in a patent application associated with a Customer Number through which Private PAIR is accessed, may participate in the e-Office Action program. To access Private PAIR, the participant must have a Public Key Infrastructure (PKI) certificate linked to the participant's Customer Number.
A few steps make it simple and easy to begin participating in the USPTO's e-Office Action program.
1. Log-in to Private PAIR and select View Customer Number Details from the menu list. This will take you to the Details for Customer Number screen so you can review current Customer Number details.
2. Next, select the "Request Customer Data Change(s)" button near the bottom of the web page to enter the Edit Customer Details screen.
3. In the heading section on the Edit Customer Details screen, select: Receive Correspondence Notification via e-mail.
4. Finally, enter up to a maximum of three e-mail addresses where the notifications will be sent, preview your changes, then submit your change request to the USPTO.
5. After completing this process, PAIR will send a test email to each modified or new e-mail address.

Patent Application Information Retrieval (PAIR)

The Patent Application Information Retrieval (PAIR) system provides USPTO customers a safe, simple, and secure way to retrieve and download information regarding patent application status. There are two PAIR applications, Public PAIR, and Private PAIR. Public PAIR provides access to issued patents and published applications. Private PAIR provides secure real-time access to pending application status and history using digital certificates.

To access Private PAIR you must:

  • be a registered patent attorney/agent, an independent inventor, or a person granted limited recognition;
  • have a customer number; and
  • have a digital PKI certificate.
  • Instructions on how to apply for a Customer Number and digital PKI certificate can be found on the Patent EBC Web site.
In the private side of PAIR, the applicant should choose the Publication Review button, and then the Request Data Change button on the screen. The instructions will then be brought up, with a data entry box in which the changes can be inserted. For instance, the following text should be typed in the box: "An inventor has been omitted. John Doe should be added with a residence of Arlington, VA." Once the entry has been checked for accuracy, the Transmit Request button should be selected, and the information will be electronically sent to the USPTO. A copy of the request will not be placed in the patent application file, and applicant should only submit a request through PAIR to correct information where the computer records show information that is different from the application file.
Requests filed through PAIR will come into the Electronic Business Center (EBC) Customer Support Center, where the data will be changed in the USPTO's computer database, and, once the data is corrected, the changes can be displayed in PAIR, and the EBC will mail the applicant a corrected filing receipt. The Customer Support Center of the Electronic Business Center can be reached by telephone at 703-305-3028. A request for a corrected filing receipt should not be submitted if the request is submitted through PAIR, since the PAIR request will result in the same correction being made.
Yes. Although applicants may request publication of the name of the assignee of an application (if the assignment has already been recorded or is being submitted for recordation) on the patent application publication by the use of the PAIR system, this does not replace recordation of the assignment documents. The assignment documents should continue to be forwarded with the cover sheet and fee to the Assignment Division. A corrected filing receipt will be mailed to applicant once the request for entry of the assignment has been processed by the Electronic Business Center.

Preissuance Submissions

Any member of the public may file a third-party submission, including private persons and corporate entities. However, the third party may not be the applicant or any individual who has a duty to disclose information with respect to the application under 35 U.S.C. § 1.56.
A third party may file any patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application.
A third-party preissuance submission statutorily must be made in a patent application before the earlier of: (a) the date a notice of allowance under 35 U.S.C. § 151 is given or mailed in the application; or (b) the later of (i) six months after the date on which the application is first published under 35 U.S.C. § 122 by the USPTO, or (ii) the date of the first rejection under 35 U.S.C. § 132 of any claim by the examiner during the examination of the application.
A third party may file a submission in any non-provisional utility, design, or plant application, as well as in any continuing application, even if the application to which the submission is directed has been abandoned or has not been published. Third-party submissions may not be filed in any issued patent, reissue application, or reexamination proceeding.
A real party in interest can remain anonymous by having someone else make the third-party submission for them, but the submitter cannot remain anonymous. The signature requirement of 37 CFR § 1.4 for papers filed in a patent application, which require a person's signature, apply to third-party submissions. Third-party submissions must be signed due to statements that are required to be made under 37 CFR § 1.290(d)(5) and 37 CFR § 1.290(g) (if applicable) by the party making the submission. Thus, the identity of the submitter (i.e., the party signing the submission) will be provided to the applicant upon entry of the compliant submission in the application file.

Patent Prosecution Highway (PPH)

The Patent Prosecution Highway (PPH) speeds up the examination process for corresponding applications filed in participating intellectual property offices.
Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.

Certificate of Correction

You should file a request for a Certificate of Correction that contains the following:
1. A transmittal letter or cover letter that includes bibliographic data identifying the: patent number; application number; inventor(s); issue date; and title of invention.
NOTE: The transmittal letter should be signed by the attorney of record or owner of record and should state any facts supporting the requested corrections.
2. A copy of any document supporting the requested correction(s), your search revealed, that are not in the USPTO record or file (e.g., post card receipts, amendment(s), 1449) 3. Form PTO/SB/44 (same as form PTO-1050)
4. Identification of the location of error(s). Identify them by column and line number, using the nearest marginal line number in the printed patent.
Leave 2 inches at the bottom of the last page or first page if only one page. No fee is required to correct errors made by the USPTO Office; however, if it is an applicant's error the required fee for consideration is $100.00.
All requests are to be mailed to:
Commissioner for Patents
Office of Data Management Attention: Certificates of Correction Branch
P.O. Box 1450
Alexandria, VA 22313-1450
The USPTO will not issue a certification of correction under 37 CFR 1.322 without first notifying the patentee (including any assignee of record) at the correspondence address of record as specified in § 1.33(a) and affording the patentee or an assignee an opportunity to be heard.

Electronic Official Gazette - Patents

Published patents are not the only content in the Electronic Official Gazette - Patents (eOG:P). Rather, the eOG:P contains a section called "Patent and Trademark Office Notices" in which, each week, the following information is published:

  • Expired Patents: Patents that expire due to failure to pay required maintenance fees. These patent numbers are published approximately three (3) months after expiration.
  • Patents Reinstated: Patents reinstated due to the acceptance of a late maintenance fee.
  • Reissue Applications: Patents filed as reissues.
  • Reexams: Patents requested to be reexamined.
  • Certificates of Correction: Patents granted certificates to correct previously published material.
  • Summaries of final decisions issued by the Trademark Trial and Appeal Board.

In addition to the information published in the section entitled Patent & Trademark Office Notices, the following is also published in the eOG:P:

  • Errata: Correction of erroneous previously published material.
  • Service by Publication: Notification to cancel a trademark registration within thirty (30) days, pending appearance of a registrant, assignee, or legal representative.
  • Registration to Practice: Names of individuals who have received provisional recognition to prepare and prosecute patent applications.
  • Notices from the Solicitor's Office: Notices to the public regarding changes and updates in Patent rules and regulations and/or other patent-related items.
  • Reclassification Reports: Lists newly established, deleted, or reclassified classes & subclasses, revised every three (3) months.
  • Other Miscellaneous information of interest to the public.

Patent Maintenance Fees

Maintenance fees are required to keep in force all utility and reissue utility patents based on applications filed on or after December 12, 1980. Maintenance fees may be paid without surcharge at 3 to 3.5 years, 7 to 7.5 years, and 11 to 11.5 years after the date of issue. You cannot pay early.
Maintenance fees may also be paid with a surcharge during the "grace periods" at 3.5 to 4 years, 7.5 to 8 years, and 11.5 to 12 years after the date of issue.
Maintenance fees are not required for a design or plant patent, or for statutory invention registrations.
Maintenance fees and any necessary surcharges may be paid by the patentee or by any person or organization on behalf of a patentee. A maintenance fee and any necessary surcharge must be submitted in the amount due on the date the maintenance fee and any necessary surcharge are paid. View the current fee amounts on the USPTO Fee Schedule. When you pay online, the fees due are automatically calculated based on the current entity status on file for your patent. Payment of less than the required amount will not constitute payment of a maintenance fee or surcharge on a patent. If the last day for paying a maintenance fee without surcharge, or the last day for paying a maintenance fee with surcharge, falls on a Saturday, Sunday, or a federal holiday, the maintenance fee and any necessary surcharge may be paid on the next succeeding day that is not a Saturday.

Inventors Assistance Center

The Inventors Assistance Center (IAC) provides patent information and services to the public. The IAC is staffed by former supervisory patent examiners, experienced primary patent examiners, various intellectual property specialists, and attorneys who can answer general questions concerning patent examining policy and procedure.

What the Inventors Assistance Center can do for you

  • Answer general questions regarding patent examining policy.
  • Answer questions concerning necessary formats and items needed for your patent application.
  • Assist you with forms needed and with filling out the forms.
  • Direct your calls to appropriate USPTO personnel or www.USPTO.gov web pages, as necessary.
  • Provide you with general information concerning patent examining rules, procedures, and fees.
  • Send you patenting information and forms via USPS mail or facsimile.

What the Inventors Assistance Center cannot do for you

  • Cannot give an opinion as to whether an invention is patentable.
  • Cannot provide legal advice or legal interpretations.
  • Cannot provide patent searches or other intellectual property research.
  • Cannot provide specific line-by-line completion of forms (but can provide directions).
  • Hours: Monday — Friday, 8:30 AM — 8:00 PM (EST), except federal holidays
  • Toll-free: 800-PTO-9199 (800-786-9199)
  • Local: 571-272-1000
  • TDD/TTY customers can dial 800-877-8339 for customer assistance.
Upon dialing either of the above telephone numbers, you will first reach an automated information system. Often, the information sought can be obtained without speaking to an Inventors Assistance Center (IAC) representative. If you do not find the necessary information using the automated information system, your call will be forwarded to a USPTO Contact Center (UCC) operator. The UCC operator will provide answers to basic, non-technical questions and transfer calls to the IAC as necessary. So that we may assist all of our customers, we ask that you limit your calls to a reasonable length of time. A review of the materials available by mail or on the USPTO Web Site prior to your call will make your questions more meaningful and should provide the IAC staff with a better opportunity to properly answer your questions.
  • The IAC will not be staffed during Government holidays. When the USPTO closes early (for example, due to weather conditions) the IAC will also cease operations.

Intellectual Property (IP) Awareness Assessment Tool

The Intellectual Property (IP) Awareness Assessment, developed under the joint efforts of United States Patent and Trademark Office (USPTO) and National Institute of Standards and Technology/Manufacturing Extension Partnership (NIST/MEP), allows participants to assess their intellectual property awareness. Following the completion of the assessment, participants will receive a customized training material.

The Intellectual Property (IP) Awareness Assessment has ten categories covering various aspects of IP and the questions in each category have been formulated to discover the participant�s overall IP awareness. The IP Assessment includes the below five general categories, that are included in all assessments.

  • IP Strategies & Best Practices
  • International IP Rights
  • IP Asset Tracking
  • Licensing Technology to Others
  • Using Technology of Others

There are five additional categories that all can take or, which may be customized through a Pre-assessment. These five categories include:

  • Copyrights
  • Design Patents
  • Trademarks
  • Trade Secrets
  • Utility Patents

Not all businesses have all categories of IP Assets so they have an opportunity to opt out of certain categories by using the customizer or Pre-assessment or may opt to take the full assessment of ten categories containing 62 questions. The full assessment typically requires about 20-30 minutes to complete. The customizer or Pre-assessment can reduce the required time by 10-15 minutes.

Patent Infringement

Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States of any patented invention during the term of the patent. If a patent is infringed, the patentee may sue for relief in the appropriate federal court. The patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court for an award of damages because of the infringement. In such an infringement suit, the defendant may raise the question of the validity of the patent, which is then decided by the court. The defendant may also aver that what is being done does not constitute infringement. Infringement is determined primarily by the language of the claims of the patent and, if what the defendant is making does not fall within the language of any of the claims of the patent, there is no literal infringement.

Suits for infringement of patents follow the rules of procedure of the federal courts. From the decision of the district court, there may be an appeal to the Court of Appeals for the Federal Circuit. The Supreme Court may thereafter take a case by writ of certiorari. If the United States Government infringes a patent, the patentee has a remedy for damages in the United States Court of Federal Claims. The government may use any patented invention without permission of the patentee, but the patentee is entitled to obtain compensation for the use by or for the government.
The United States Patent and Trademark Office (USPTO) has no jurisdiction over questions relating to infringement of patents. In examining applications for patent, no determination is made as to whether the invention sought to be patented infringes any prior patent. An improvement invention may be patentable, but it might infringe a prior unexpired patent for the invention improved upon, if there is one.
Patent infringement analysis requires two separate inquiries. The first is "claim construction," a determination, as a matter of law, of the scope of the properly interpreted patent claim without reference to the accused product or method. The second inquiry is "claim coverage over the accused matter," the factual findings of whether the properly construed claim encompasses the accused matter made, sold, or used without authority. See, e.g., Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1280, 230 USPQ 45 (Fed. Cir. 1986); Read Corp. v. Portec, Inc., 970 F.2d 816, 821, 23 USPQ2d 1426 (Fed. Cir. 1992).