For as long as I can remember, in order for a nonprovisional utility patent application to be awarded the all important filing date you had to file a specification that adequately described the invention, at least one patent claim and at least one drawing if a drawing would facilitate in the understanding of the invention. Spec, claim, drawing was beaten into generations of patent attorneys as the requirements for getting a filing date. That all changed on December 18, 2013.
As a result of the Patent Law Treaties Implementation Act of 2012 (PLTIA), nonprovisional utility patent applications (i.e., not design applications) filed on or after December 18, 2013 will receive as a filing date the date on which a specification, with or without claims or drawings, is received by the United States Patent and Trademark Office (USPTO). Many things are wrapped up in that straightforward statement; so let’s unpack them one-by-one.
First, what is written above is the way that the Manual for Patent Examining Procedures (MPEP) articulates the rule. As a general rule it is perfectly fine, particularly given that over 99% of all patent applications today are filed using the Electronic Filing System (EFS) made available by the USPTO. When using the electronic filing system to file an application the filing date will be the date the application is received without benefit of the time zone you are in when you file. In other words, time in Alexandria, Virginia, matters when using the USPTO electronic filing system.
Having said this, it is still possible to mail in an application to the USPTO. If you mail in a patent application via U.S. postal service express mail and use Post Office to Addressee, the application will be deemed filed (and hence a filing date awarded to a complete application) as of the date it is stamped in at the postal counter. If you send your patent application in via any other means (i.e., regular mail or carrier, such as FedEx or UPS) then it will be deemed filed upon receipt. Of course, if something happens and the USPTO never receives your application it was never filed. Thus, the best way to send in an application is either via electronic filing system or US postal service express mail using Post Office to Addressee (instead of Post Office to Post Office).
Second, if you are filing a design patent application you obviously must file drawings given that the design patent covers only the ornamental appearance of what is shown in the drawings. Thus, the filing date for a design application, other than a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification including at least one claim and any required drawings are received in the Office. The filing requirements for a CPA are minimal. In fact, the filing date of a CPA is the date on which a request for a CPA on a separate paper for a CPA is filed. This special type of continuation is only applicable to design patent applications because a CPA is deemed a request to abandon the previous application and have the new application pick up in place of the old application.
Third, despite the fact that you can get a filing date without the presence of at least one drawing, 35 U.S.C. 111(a)(2) continues to require that patent applications include a drawing as required by 35 U.S.C. 113. § 113 specifically requires a drawing where necessary for the understanding of the subject matter sought to be patented. Therefore, any drawings necessary for the understanding of the invention MUST be submitted with the application at the time of filing. This is because it will be practically impossible to submit drawings later without adding new matter, which is prohibited. Therefore, absolutely nothing can be gained by failure to submit a drawing when one will be required, and you should assume at least one drawing is always required.
Only if you are claiming a compound can you safely assume no drawing is required, and that is because the chemical formula will be sufficient without drawing depiction. The USPTO also generally recognizes that methods do not require drawings, but is it possible to depict something associated with a method claim in a drawing? In almost all cases the answer will be yes, so drawings should be filed. Indeed, drawings are worth their weight in gold (and more) because whatever one of skill in the art would understand from looking at the drawing is disclosed whether there is descriptive text associated with the drawing or not. Of course, you should have descriptive text, but drawings provide protection and in my opinion too few drawings are generally filed given their importance. For information on drawings and describing drawings please see:
- Patent Drawings: An economical way to expand a disclosure
- Working with Patent Drawings to Create a Complete Disclosure
- Patent and Invention Drawings: What you need
Finally, patent claims are not required at the time you file a nonprovisional patent application. It is much easier to add claims without adding new matter, so if you want to file a patent application without claims that is fine. You will not run afoul of the new matter prohibition as long as what you originally filed provides support for the patent claims you seek to add after the filing date. Adding patent claims after an application has been filed is something that is done all the time, and not at all worrisome if you have a solid specification. Having said that, it is still probably wise to include at least one patent claim, or a few patent claims, at the time of filing. By including at least one claim you know that at least that claim is supported by what you filed because an original patent claim (i.e., one that arrives at the time of filing) can support itself even if the specification fails to provide an adequate description to support that original claim. For more information on patent claim drafting please see:
- Patent Drafting for Beginners: A prelude to patent claim drafting
- Patent Strategy: Advanced patent claim drafting for inventors
- Patent Applications: Drafting method claims
- An Introduction to Patent Claims
- Understanding Patent Claims
- Patent Claim Drafting 101: The Basics
When you file your patent application the Office of Patent Application Processing (OPAP) reviews application papers to determine whether a new application is entitled to a filing date. Once OPAP determines that the application is entitled to a filing date, OPAP then determines whether the application as filed is complete, e.g., includes the required fees, the inventor’s oath or declaration, and all pages of the specification and drawings. If the papers filed are not entitled to a filing date, OPAP will send a “Notice of Incomplete Application” informing applicant of the deficiencies; if the application is entitled to a filing date but it is not complete, an OPAP notice (e.g., a “Notice of Omitted Items”) will be sent indicating that the application papers so deposited have been accorded a filing date and indicating what papers must be filed to complete the application. If you get one of these notices you absolutely MUST respond.
Join the Discussion
10 comments so far.
AnonMarch 3, 2017 06:57 am
Absolutely correct Gene – and again I wish to thank you for these types of articles. They are informative and very helpful, and do reflect a spectrum of knowledge in the innovation arena that is sometimes forgotten in some of the more contentious points of debate.
Louis @ 8,
I am not sure how to take your comment. Can you add to it?
Gene QuinnFebruary 26, 2017 10:12 am
There is no doubt that a quick and dirty filing of any kind can be a hinderance to claim strategy later on.
You and I should really be having this conversation in some context though. I think you would agree that merely having claims is not enough and what I see frequently with a first filing by inventors, and many times by patent professionals, are claims that are quite broad. In fact, sometimes broad to a rather silly level.
I don’t think we really disagree here, or if we do it is because the glass is half empty versus half full. I just don’t want newbie readers to think, however, that including claims is any kind of guarantee.
Louis IselinFebruary 25, 2017 08:13 pm
Sorry, but PHOSITA understanding does not always meet the written description requirement.
AnonFebruary 19, 2017 11:16 am
What you heard is partially true.
There are in fact many ways to write an application, and no one way is iron-clad “the best.”
Personally, I find having the figures first to be the best way for me.
This seems to be a more universal manner of “speaking” (a picture tells a thousand words) and lets me make sure that I am on the same page as the inventor.
But yes, I do agree that a properly written application needs all three elements (as may be required – my first post here deals with the legal requirement aspect, and the fact that figures may in fact NOT be legally required to understand the invention – hence the apparent disparity between my first post and this post).
This is why I view those that consider the provisional to be satisfactorily done in a quick and dirty manner – with no thoughts as to what will be later claimed – to be a bane.
I cannot tell you how much re-education of inventors I have provided as to exactly why any efforts that do not take into consideration the final legal element of actual claims is a waste of those efforts.
Inventor WoesFebruary 19, 2017 09:33 am
I heard that the best advice is to draft the claims first, and then write the specification. The claims are a broad mental outline of how you will write your specification. That solves the problem of insufficient disclosure and laziness. I think filing without including the claims is a deceptive move, not to mention really stupid. I really hope that this isn’t taught in patent courses, especially ones promoted by this site.
AnonFebruary 19, 2017 08:45 am
Gene @ 3,
Your restatement is almost there.
As is said: the claim is the name of the game.
That also being said, a provisional drafted “quick and dirty” without a notion of what claims may be desired to be followed is a recipe for disaster.
What peeves me is that people advocate for “quick and dirty” and in so doing, do not do the mental work of tying that quick and dirty (sans claims) in the provisional, and then bemoan the fact that a year later when claims may be considered (for the first time), that the “quick and dirty” is either a hindrance or is not useful to really tie the claim into the earlier date.
Ely ErlichFebruary 19, 2017 05:51 am
I have seen a few European colleagues state quite unequivocally on LinkedIn blogs that a priority document in Europe without claims is inadequate.
So it seems at least out of international considerations one should put at least one claim in.
Gene QuinnFebruary 18, 2017 08:11 pm
All of the items necessary to support the later nonprovisional must be in place in the provisional, that is true. That does not, however, mean that claims must be filed. Claims can be and are always added later without incident when the specification is drafted appropriately. So filing a claim at the time of filing is not necessary. It may well be best practice, but it is extremely common for new claims to be added during the course of prosecution which were not filed at the time of original filing. So your pet peeve seems to be with inadequate specifications that won’t allow for claims to be supported or added.
AnonFebruary 18, 2017 11:38 am
Secondly,, I would dissuade from your advice of “Finally, patent claims are not required at the time you file a nonprovisional patent application. It is much easier to add claims without adding new matter, so if you want to file a patent application without claims that is fine.”
While perhaps technically true (that being not required per se), if one files a provisional application with any thought of being able to use that date as support for a later nonprovisional, ALL of the items necessary TO support that later nonprovisional must be in place in the provisional.
It remains one of my pet peeves the advice of “quick and dirty” given to people in regards to provisional filings. To the extent that your article supports that here – that is the extent to which I raise my objection.
Keep up your excellent work.
AnonFebruary 18, 2017 11:34 am
What does “where necessary for the understanding of the subject matter sought to be patented.” actually mean?
To whom is the “necessary” being addressed to? The applicant? PHOSITA?
I would suggest that a necessary (even if unforeseen) consequence of the Supreme Court super-enabling PHOSITA must carry with it that same super enabling when it comes to “understanding” here – if indeed that the understanding here is to be met by PHOSITA.
Mind you, this is not a comment directed against any type of “best practices” which of course would include the inclusion of excellent figures at the time of filing.