Nonprovisional Patent Applications: Your Comprehensive Guide
Non–provisional patents might sound like a complicated version of patents, but they are actually just referring to the application one files to secure a utility patent. It is thus named to distinguish it from another category of applications called the provisional applications which are useful in establishing an earlier filing date. Read on to learn more about the nonprovisional application and what it entails.
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What Is A Nonprovisional Patent?
A nonprovisional patent application is filed by an applicant with the United States Patent and Trademark Office (USPTO) in order to seek a utility patent grant. The USPTO examines the application and grants a patent if all the requirements are met. If an applicant has previously filed a provisional patent application, then the nonprovisional patent application must be submitted within 12 months of filing it.
Checklist For Nonprovisional Application
Below is the checklist for the nonprovisional patent application listing the elements required for your application to be considered complete:
Utility Patent Application Transmittal Form
It contains a list of the elements of a patent application. The form must be duly signed by the inventor/s.
Fee Transmittal Form
The basic filing, search, and examination fees are to be submitted at the time of filing. In case the applicant does not pay the required fee at this time then a late surcharge fee is levied. This form identifies the fee that has been paid by the applicant.
Application Data Sheet
The bibliographic data of the invention including inventor information, applicant information, application, domestic benefit, correspondence address, foreign priority, and assignee information is mentioned in this form. If the applicant seeks nonpublication of the application, then it needs to be stated in this form.
Small And Micro Entity Status
The USPTO has listed certain criteria to categorize a business as a small or micro entity. Qualifying businesses can tick the SME box provided in the fee transmittal form and earn a discount on some nonprovisional patent application fees.
A specification is a document written in clear and concise terms describing the invention and the way it is to be used. It is to be written in a manner that makes it legible to a person from the same scientific or technological domain.
The Specification Consists Of The Following Elements
- Title of The Invention: The title must describe the invention within the character limit of 500. It is not the brand name of the product but rather what technically describes it.
- Cross References: Any claimed benefits from earlier provisional or nonprovisional applications may be identified after the title.
- Background: A background that offers context to the invention and the subject matter to which it pertains.
- Summary: A concise writeup that states the general idea of the invention, the problems it solves, its purpose, etc.
- Brief Description of Drawings: An explanation of each figure accompanying the invention.
- Detailed Description of Invention: A clear description of the invention, the process of making it, and its distinguishing factor from other similar products form the structure of a detailed description. It must be mentioned with absolute clarity and completeness allowing a person working in that technology to be able to make and use the invention easily.
- Claim/s: A Claim gives a comprehensive explanation of the subject matter of the invention. In doing so, it defines the scope of the legal protection that a patent will confer upon the invention. Each provisional application must contain at least one and up to three independent claims. A claim set contains an independent claim followed by dependent claims that reference either the independent claim or a prior dependent claim.
- Abstract of Disclosure: An abstract of the disclosure is a 150-words paragraph that explains what is new about the invention.
Drawings are to be included in the patent application wherever they are necessary to elucidate the subject matter. These drawings must comply with the stringent requirements of the USPTO and explain the invention as clearly as possible.
Applicants are required to file an oath or declaration with the application establishing that they are the original inventors. An oath requires to be sworn before a notary, while a declaration is neither notarized nor requires a witness.
Cost Of A Nonprovisional Patent Application
It is difficult to provide an exact amount that a nonprovisional application may cost due to the various ancillary activities involved. While the USPTO website provides the exact fees involved, there are other overhead costs to factor in. These include the costs for the attorney fee, patentability search, patent drafting, illustrations, etc. The budget for these is variable and depends on the experience of the firm, the complexity of the patent matter, etc. On average, the total spending would range from a few thousand to over ten thousand dollars.
Factors To Consider Before Filing Nonprovisional Patent Application
Securing a utility patent is a long and expensive process that can take up to 4 years to complete. In this scenario it is prudent to ask yourself the following:
- Do you need a patent or will other forms of IP like trade secrets, copyrights, etc., be sufficient to protect the invention?
- Should a patentability search be conducted before filing?
- Should you seek a provisional patent to establish prior art and get an earlier filing date before submitting a nonprovisional patent application?
Remember to align your IP goals with the business strategy before taking crucial decisions. The ROI from patenting, maintenance fees, potential infringement lawsuits, attorney expenses, etc., should be considered before you apply for a patent.
Patents can be difficult to obtain, maintain, and enforce. It is, therefore, necessary to take into account all the pros and cons as well as alternatives available. Seek the assistance of an experienced firm to help you assess your IP goals and objectives and navigate the complex terrain of filing a nonprovisional patent application.
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