Patents

Nonprovisional Patent Application

A nonprovisional patent application is a standard patent application--which will result in a "utility" patent. The U.S. Patent and Trademark Office requires nonprovisional applications to have a specification section, drawings, an oath signed by the inventor(s), and the filing, search, and examination fees. The specification section must include an adequate disclosure (see the following paragraph) and one or more claims.

35 U.S.C. § 112 details some of the disclosure requirements for nonprovisional applications. These disclosure requirements are known as the written description, enablement, and best mode requirements. To satisfy the written description requirement, the applicant must disclose the idea in sufficient detail so that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. For the enablement requirement, the application must disclose the "manner and process of making and using the invention in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the invention." For the best mode requirement, the application must "set forth the best mode contemplated for carrying out the invention."

The claims define the scope of protection of the patent. Accordingly, the claims section should be given high priority during the preparation of a patent application. Most of the examination proceedings in the USPTO are focused on whether the claims describe patentable material that is novel and nonobvious.

Provisional Patent Application

A provisional patent application is a type of placeholder application that allows the applicant to obtain a filing date without filing an application that satisfies all the formalistic requirements of a nonprovisional patent application. A provisional application expires after one year, so the applicant must file a nonprovisional application within that year in order to gain the benefit of the earlier filing date. The U.S. Patent and Trademark Office does not evaluate provisional applications. A provisional application is beneficial to applicants who don't have the financial resources to pay attorneys' fees for a nonprovisional application, but believe that they will within the year-long grace period.

Applicants typically file a provisional application and use the subsequent year to attempt to begin production and sales, find investors, raise funds, or otherwise develop their idea. Even though a provisional application does not require all the formalities of a nonprovisional application, it must contain a complete disclosure that adequately supports the subject matter that will be claimed in the subsequent nonprovisional application--no new matter can be added later. Thus, an important consideration in preparing a provisional patent application is whether it has a sufficient disclosure.

Design Patent Application

A design patent covers the ornamental characteristics in or on an object. A design patent application includes a claim, which refers to figures depicting the ornamental design. A design patent cannot cover structural or utilitarian features of an object.

Technical Experience

We have experience drafting and prosecuting patent applications in a wide range of technology areas, including:

  • chemical compositions
  • mechanical devices
  • software
  • electrical devices

For our current fee levels and additional information, please see our Services. To discuss how we can protect your ideas, please email us or contact us here. For additional information, read some of our blog posts about patents.