Menlo Park Patents Blog:

Here is a list of common terms that you will hear over the course of filing your patent application.  We made this list to give every reader a better understanding of the lingo we use as patent practitioners.

1. Provisional Patent Applications

Provisional patent applications A.K.A provisionals are the first step in the patent process.  They are filed to secure your place in line at the USPTO and obtain a filing date for your invention at a low cost.  Provisionals have a 12 month term and are not examined by the USPTO.  They are simply place holders to get you started toward building your business.  During those 12 months of the provisional, inventors can explore the market opportunity of the invention and/or raise capital to build it.

2. Utility Patent Application

A utility patent application or non-provisional patent application is the next step in the patent process.  Once you file a provisional patent application, you have 12 months to file a utility patent application.  If you do not file the utility before the end of the 12 month term of a provisional then you lose your priority date, and must start the process over to obtain a new priority date.  The deadline to apply for a utility patent application when a provisional has been filed is calculated from the date of filing accorded to the provisional.  Utility patent applications are examined by the USPTO against several criteria and laws before the patent can be issued.  Utilities have several components such as claims, a specification, an abstract, and drawings.

3. Non-Final Office Action

A non-final office action is normally the first response of the USPTO to your utility or design patent application.  Non-final office actions contain the objections and rejections to your patent claims.  The examiner evaluates the application and claims with respect to the USPTO rules and regulations.  In the non-final office action, the examiner will list the rejections and objections to your patent application and explain why it was also rejected or objected to.

4. Final Office Action

A final office action (FOA) is the second that the USPTO can issue with respect to the application and claims with respect to the USPTO rules and regulations.  A final office action is not really final. It means that the examiner has reviewed your application and claims and it is not in condition for allowance.  The common next steps after final consideration are a Request for continued examination or appeal.  The final office action means that the response to the non-final office action did not, in the examiners opinion overcome the grounds for rejection or objections to the claims.  Let’s remember that any action you take must be within the allotted time which is calculated from the mailing date on the FOA. You can ask the examiner for an interview, file a continuation, file a continuation in part, file an appeal only after the examiner finally rejects your response to the FOA and several other procedures.

5. Continuation Application

A continuation patent application is the 2^nd, 3^rd, or 4^th consecutively filed application from a parent application.  A continuation can claim priority to an originally filed provisional.  In a continuation you can file a new set of claims, with the same specification as the parent or earlier filed patent application.  This means after you’ve filed a non-provisional patent application, the same specification must be used and the claims are what are new and are supported by the existing specification.  You cannot add “new matter” or any new ideas into a continuation.  You can add new matter into a continuation in part.

6. Continuation-in-part

A continuation in part, or CIP, is like a continuation but a new idea is added to the continuation in part.  A continuation in part cannot claim priority to an earlier filed application for the new ideas documented into the application.  ONLY those claims that are supported by the originally filed patent application can claim priority to the earlier filed application.  The claims in a continuation in part that are for the new ideas, will be accorded a filing date of whenever you file the application.

7. A Claim of Priority to an Earlier Filed Patent Application.

What does it mean to claim priority to an earlier filed application?  This is a particularly important subject when you talk about patents as patents in the USA are all about dates, and time limits.  Play by the rules and you won’t have a problem.  Miss a date and you will be pulling your hair out.  Let’s say you file a provisional patent application on September 9^th, 2021.  This is your filing date.  Any application for the same invention as described in the provisional that was filed after the September 9, 2021  patent application will be allowed to claim priority to the earlier filed provisional.  Remember how we just mentioned that dates are really important in the USPTO?  This is because when you claim priority to an earlier filed patent application it affords you the right to say that my September 9, 2021  application becomes prior art to any competing patents of the same invention filed after my September 9, 2021  filing date.  This is why claiming priority to an earlier filed patent application is so important.  If you want to exit your company, license or sell your invention then dates will be important to the acquirer. The attorneys or patent agents inspecting your patents will perform a due diligence on your application or patent to make sure it is a strong.  And yes, they will look very hard at your filing date.  This is why practitioners say, file as soon as possible.

8. Specification

You might have heard your patent attorney or patent agent refer to something called a specification.  A specification is the part of a patent application, and yes there are multiple parts, that is used to describe the invention in great detail.  A specification also has several parts such as: the background of the invention, the abstract, a list of the drawings, a detailed description of the invention and sometimes a list of cross-referenced patent applications.  The specification is one of the most important parts of your application as it provides the enablement of the invention which is required to be eligible for the franchise grant to excluded others from making, selling, or buying without your direct permission. This is why at Menlo Park Patents, we focus our efforts to ensure each patent’s specification is substantive, detailed, and broad.

9. Patent Claims

Patent applications are evaluated on a claim by claim basis.  The claims of a patent are what is used to define the scope and extent of protection of the patent.  This is the most important part of the patent because it lays out the intellectual property that is claimed by the inventor. A common misconception is that claims are important in a provisional patent application.  You can actually file a provisional patent application at the USPTO without writing any claims.  This is because the claims are not examined in a provisional patent application.  However, Menlo Park Patents recommends filing at least one claim with every provisional patent.

10. Amendment

An amendment to a patent application is just like the word describes: amending the claims of the patent application to capture the claimed invention.  If an amendment is filed in response to an office action it is important to remember that the new set of claims or modified specification cannot be broadened or include new matter.  New matter would be considered a new invention that is not part of the original filing, since amendments are done AFTER the application is filed and normally after the first office action.  Any new invention for a patent application would need to be filed in a continuation in part, or new provisional patent application.

11. Inventor Disclosure

An inventor disclosure is a document produced by the inventor that describes the invention in as much detail as possible.  Inventor disclosures are very important documents in the patenting process as they convey and communicate what are the unique aspects of the invention. Patent agents and patent attorneys do not know what the invention is because they did not invent it.  So, this is why every law firm or patent firm will ask the inventor to submit a disclosure.  Writing a detailed disclosure will certainly save any inventor time and money in the patent process.

12. New Matter

New matter is anything that is not part of the original or parent application when it is filed at the patent office.  In other words, if you invented a pencil that included a LED light for night time writing and filed a provisional covering that invention, then a new invention and application would need to be filed for new matter that is outside of the scope of that invention.

13. Request for Continued Examination

A request for continued examination is a procedure used after the close of prosecution but before abandonment of the application.  Also known as a RCE, it is a procedure where the examiner has sent a final rejection and rejected the response to the final rejection.  The options after a response is filed to a FOA and still rejected by the examiner, is to file a RCE or file an appeal.  A RCE allows the inventor or applicant to submit an amendment with respect to a final office action to the patent examiner which the inventor believes will place the application  in condition for allowance.

14. Patent Term

A patent term is the length of patent protection of the invention which is calculated from the filing date of the earliest U.S. or PCT application filed in the U.S.  Utility patent applications have a patent term of 20 years while design patent terms are for 14 years.

15. Issue Fee

An issue fee is a great thing to pay.  It means your patent has been allowed and you now need to pay a fee to complete the process.  The issue fees normally occur after the examiner has examined the patent application against the rules and regulations of the MPEP and has decided that the application is entitled to patent protection.  The issue fees must be paid for an application within three months from the notice of allowance. If you do not pay the issue fee then the application within the allotted timeframe then you risk abandonment of the application.

16. Maintenance Fees

Maintenance fees are the fees you owe to the USPTO after your patent application has been allowed.  Maintenance fees must be paid 3.5, 7.5 and 11.5 years after a grant.

17. USPTO Fees

Uncle Sam loves fees.  The fees associated with the USPTO are fees that are collected during certain submissions to the USPTO.  For instance there is a fee for filing a provisional patent application and a fee for filing a utility patent application.

18. PCT

PCT, formally known as the Patent Cooperation Treaty is an international patent treaty that came about in 1970.  The PCT allows inventors to protect inventions in those countries or contracting states that participate in the PCT.  A patent application filed under the PCT is also known as an international application or PCT application.  Following the PCT procedures will allow you to obtain patent protection for your invention internationally.  This is particularly important if you have plans to sell your product or service in several different countries.

19. Patent Agent

A patent agent is a registered practitioner that is licensed by the USPTO to file, draft, and prosecute patent applications for inventors.  A patent agent can do everything a patent attorney can do except provide legal advice outside of patent law.  Agents cannot provide litigation services for instance.  It is a common misconception but Patent Agents are not registered with a local state bar association like patent attorneys but are registered to practice at the USPTO.  To be registered at the USPTO as a licensed patent practitioner, patent agents and patent attorneys must pass the same patent exam.  So, when you need to file a patent application, or prosecute it in response to an office action, a patent agent can very well handle the task at hand.

20. Abandonment

Patent applications can be abandoned.  This means that the application or patent either was not pursued or the maintenance fees were not paid.  When the maintenance fees are not paid for an allowed patent in the allotted timeframe, the patent can be marked as abandoned.  In other instances, when a response to an office action is not timely filed to the patent office, the application can also be considered abandoned.  To save money and time, it is always best to just be on time at the USPTO to avoid your patent from becoming abandoned.  As we mentioned before, sticking to the USPTO limits of time for submissions is key to saving cost during the patent process.

Contact us anytime if you have questions about any patent procedure or just to tell us about a new idea you have!