(203) 809-9490 - Send a Message - Schedule an Inquiry Phone Call - on the Homepage

Signed in as:

filler@godaddy.com

Account

Law Office of John B. Hudak, PLLC

An intellectual property law firm: patents, trademarks, and copyrights.

Nonprovsional Patent Application

A nonprovisional patent application is submitted to obtain a utility patent

A nonprovisional patent application is used to apply for a utility patent.

A utility patent is a patent which protects the functionality or usefulness of an invention. Most people think of a utility patent -- when thinking about the general idea of "I want to get a patent." The reason being is that having a utility patent allows the owner of the patent to exclude others from using the invention for the life of the utility patent, which is 20 years from the filing date of the application. Also, a utility patent can encompass a physical object, chemical, or process -- and the invention can be defined where the patent will protect more than one version of that invention -- or in other words multiple embodiments of the invention. For instance, if an invention is defined as, "An apparatus comprising, a hollow cylindrical member, where the hollow cylindrical member is attached to a writing tip." -- then the patent will protect embodiments of the invention -- or versions of the invention -- such as a very thin cylindrical member or very wide cylindrical member - or a writing tip made from graphite or a writing tip made of chalk.

Two Main Parts of a Nonprovsional Patent Application

Nonprovisional applications include two main parts: (1) a description; and (2) claims

(1) Description of the Invention

The description will include a detailed written description of the invention and drawings.

The detailed written description will normally include 10 to 30 pages of plain English description along with a technical description – in enough detail so someone with ordinary skill in that area of the invention can make and use the invention. The detailed written description will also describe the drawings.
The drawings will include every element included in the claims. The drawings can contain 10 to 20 figures – depending on the complexity of the invention.

(2) Claims

The claims are a written description of the invention – although the claims follow the requirements set forth by the Patent Office.

The claims define what the patent protects.
A patent excludes another from using a technology which includes each and every element within the claims.
The claims are normally in a set of claims, which are arranged with the most broad claims first -- and the more specific claims following -- getting more and more specific down the list. A broad claim encompasses more than a specific claim.
An example of a broad claim is: Claim 1: "An apparatus comprising, a hollow cylindrical member, where the hollow cylindrical member is attached to a writing tip."
An example of a more specific claim related to Claim 1 is -- Claim 2: "The apparatus as in claim 1, wherein the hollow cylindrical member is plastic."
An example of a more specific claim related to Claim 2 is -- Claim 3: "The apparatus as in claim 2, wherein the writing tip is graphite."
A nonprovisional application is allowed 3 independent claims and up to 20 claims overall -- without any extra fees.
An independent claim does not reference another claim. In the example above, Claim 1 is an independent claim.
If a claim references another claim, then that claim referencing another claim is considered a dependent claim. In the example above Claims 2 and 3 are dependent claims (Claim 2 depends on Claim 1; and Claim 3 depends on Claim 2).
The fees can be significant if multiple extra claims are added over the 3 independent claims and total of 20 claims. Therefore a strategy for making the most of claims included -- is important. For a microentity, each independent claim over 3 is $120 per claim - and each claim over 20 claims in total -- is $25 per claim (for a small entity those prices are doubled, and for nondiscounted entities those prices are 4 times the stated price).

Details of All Parts of a Nonprovsional Patent Application

The possible 13 sections of a nonprovisional patent application is detailed in MPEP 608.1(a)

Utility patent applications consist of thirteen main sections. The utility patent application must contain:

The title of the invention
Any cross-references used
A statement about federally sponsored research or development
The names of parties to a joint research agreement
An incorporation-by-reference of material submitted
A statement regarding prior disclosures by the inventor/joint-inventor
The background of the invention
A brief summary of the invention
A brief description of the several views of drawings
A detailed description of the invention
A claim or multiple claims
An abstract of the disclosure
A sequence listing

The sections of a utility patent application must be represented in the order shown above.

Section 1 can also include an introductory portion that states the name, citizenship, and residence of the applicant (unless included in the application data sheet).

The descriptions of these sections are present in the MPEP 608.1(a) under 37 C.F.R 1.77 (b).

Difference of a Nonprovsional vs Other Types of Applications

Nonprovisional applications are different than provisional applications

A nonprovisional application is used to directly apply for a utility patent.
A provisional application is used to gain a priority date. A provisional application requires a description - and no claims are required. A nonprovisional application needs to be filed within 12 months after the filing date of a provisional application - for any patent rights to be obtained.

Extra Reading

From the Law Office of John B. Hudak:

Comparison of a Nonprovisional Application to a Provisional Application

Nonprovisional Patent Applications Versus Provisional Patent Applications - the difference - when and why to use either application

Comparison of a Nonprovisional Patent Application to a Design Patent Application

Attorney Advertising. This website is for informational purposes only and is not legal advice. Using this site or communicating with the Law Office of John B. Hudak, PLLC through this site does not form an attorney-client relationship. An attorney-client relationship shall be formed only after an Attorney Engagement Letter is sent by the law office to the Client. Please do not share any unsolicited confidential information with our law firm by email or phone. This site is legal advertising. Copyright © 2024