201 Types of Applications
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Section Frequency Chart
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Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
201.01 National Applications
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[Editor Note: Applicable to any patent application filed on or after December 18, 2013. See 35 U.S.C. 111 (pre-PLT (AIA)) or 35 U.S.C. 111 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.(3) FEE, OATH OR DECLARATION, AND CLAIMS.—The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—The application shall be accompanied by the fee required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e), and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119, 365(a), or 386(a) or to the benefit of an earlier filing date in the United States under section 120, 121, 365(c), or 386(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
(c) PRIOR FILED APPLICATION.—Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless—
(1) the application is revived under section 27; and
(2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012, and before December 18, 2013. See 35 U.S.C. 111 or 35 U.S.C. 111 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.(3) FEE AND OATH OR DECLARATION.—The application must be accompanied by the fee required by law. The fee and oath or declaration may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.—Upon failure to submit the fee and oath or declaration within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath or declaration was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—(A) The application must be accompanied by the fee required by law.
(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.(4) FILING DATE.—The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e), and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
I. APPLICATIONS FILED UNDER 35 U.S.C. 111
Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).
Notable changes due to the Patent Law Treaties Implementation Act of 2012 (PLTIA) include the filing date requirements for nonprovisional applications filed under 35 U.S.C. 111(a).
Unless the application is for a design patent, nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, are no longer required to include at least one claim or any drawings in order to receive a filing date for the application.
- The filing date of an application for a design patent is the date on which the Office receives the specification including at least one claim and any required drawings.
- In addition, as provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application.
Applications filed under 35 U.S.C. 111(b) are provisional applications for patent and are filed under 37 CFR 1.53(c).
Significant differences between nonprovisional applications filed under 35 U.S.C. 111(a) and provisional applications filed under 35 U.S.C. 111(b) include the following:
- No claim is required in a provisional application.
- No oath or declaration is required in a provisional application.
- Provisional applications will not be examined for patentability.
- A provisional application is not entitled to claim priority to any foreign application or the benefit of any earlier filed national application.
- A design patent application is not entitled to claim the benefit of a provisional application
II. INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES
37 CFR 1.9(a)(1) defines a national application as a U.S. application which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
Note that 37 CFR 1.9(b) defines an international application for patent as one filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.
Treatment of a national application under 35 U.S.C. 111 and a national stage application (a national application which entered the national stage from an international application in which the conditions of 37 CFR 1.9(a)(1) have been satisfied) are similar but not identical.
Note in particular the following examples of differences:
- Restriction practice is applied to national applications under 35 U.S.C. 111(a) while unity of invention practice is applied to national stage applications.
- National nonprovisional applications filed under 35 U.S.C. 111(a) without an executed oath or declaration, basic filing fee, search fee, or examination fee are governed by the notification practice set forth in 37 CFR 1.53(f), as are utility and plant patent applications filed on or after December 18, 2013, without a claim.
- Incomplete national stage applications are governed by the notification practice set forth in 37 CFR 1.495.
- Incomplete national stage applications are governed by the notification practice set forth in 37 CFR 1.495.
III. INTERNATIONAL DESIGN APPLICATION DESIGNATING THE UNITED STATES
The Hague Agreement is an international agreement that enables an applicant to file a single international design application which may have the effect of an application for protection for the design(s) in countries and/or intergovernmental organizations that are parties to the Hague Agreement (the “Contracting Parties”) designated in the application.
- The United States is a Contracting Party to the Hague Agreement, which took effect with respect to the United States on May 13, 2015.
201.02 General Terms Used to Describe Applications
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“Original” application is used in the patent statutes and rules to refer to an application which is not a reissue application.
- An original application may be a first filing or a continuing application.
A continuing application is a continuation, divisional, or continuation-in-part application.
A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application.
- A substitute application does not obtain the benefit of the filing date of the prior application.
