701 Statutory Authority for Examination
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The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.
The main conditions precedent to the grant of a patent to an applicant are set forth in 35 U.S.C. 101, 102 , 103, and 112.
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.
[Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only applicable to patent applications and patents subject to the first inventor to file provisions of the AIA (35 U.S.C. 100 (note)). See pre-AIA 35 U.S.C. 100(e) for paragraph (e) as applicable to patent applications and patents not subject to the first inventor to file provisions of the AIA.]
When used in this title unless the context otherwise indicates -
(a) The term “invention” means invention or discovery.
(b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
(c) The terms “United States” and “this country” mean the United States of America, its territories and possessions.
(d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.
(e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 who is not the patent owner.
(f) The term "inventor" means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
(g) The terms "joint inventor" and "coinventor" mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
(h) The term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
(i)
(1) The term "effective filing date" for a claimed invention in a patent or application for patent means—
(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).(2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
(j) The term "claimed invention" means the subject matter defined by a claim in a patent or an application for a patent.
Editor Note: Pre-AIA 35 U.S.C. 100(e) as set forth below is not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)).]
When used in this title unless the context otherwise indicates -
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(e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.
702 Requisites of the Application
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As a result of the Patent Law Treaties Implementation Act of 2012 (PLTIA), December 18, 2012, and specifically, the amendments to the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II of the PLTIA, the filing date requirements for applications filed on or after December 18, 2013 are different from the filing date requirements for applications filed prior to December 18, 2013.
Except for design applications, the filing date for nonprovisional applications filed on or after December 18, 2013 is the date on which a specification, with or without claims, is received in the Office.
Provisional applications filed on or after December 18, 2013 may receive a filing date even if the application is filed without drawings.
The filing date for a design application, except for a continued prosecution application (CPA), is the date on which the specification, including at least one claim, and any required drawings are received in the Office.
Also, for applications filed on or after December 18, 2013, an application (other than an application for a design patent) is not required to include any drawings to be entitled to a filing date.
- 35 U.S.C. 111(a)(2) continues to require the application to include a drawing, which requires a drawing where necessary for the understanding of the subject matter sought to be patented.
- Any drawings necessary for the understanding of the invention should be submitted with the application on filing.
The minimal formal requirements resulting from the implementation of the PLTIA and PLT should not be viewed as prescribing a best practice for the preparation and filing of a patent application.
- The preparation of claims to any claimed invention for which patent protection is desired and the inclusion of such claims with the application on filing will help ensure that the application satisfies the disclosure requirements of 35 U.S.C. 112(a) for any such claimed invention.
While the absence of any drawing on the filing of an application no longer raises a question as to whether the application is entitled to a filing date, the preparation of drawings for a provisional or nonprovisional application is prudent where a drawing is necessary for the understanding of the subject matter sought to be patented, and inclusion of such drawing(s) with the application on filing will help ensure that the requirements of 35 U.S.C. 113 are satisfied for any such claimed invention.
If an application (other than an application for a design patent) is filed on or after December 18, 2013, without any claims, OPAP will issue a notice giving the applicant a time period within which to submit at least one claim in order to avoid abandonment.
- An application will not be placed on an examiner’s docket unless and until the application includes a specification including at least one claim.
For applications filed under pre-PLT (AIA) 35 U.S.C. 111 prior to December 18, 2013, a filing date is assigned to a nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the U.S. Patent and Trademark Office (Office).
Once OPAP determines that the application is entitled to a filing date, OPAP then determines whether the application as filed is complete, e.g., includes the required fees, the inventor’s oath or declaration, and all pages of the specification and drawings.
- If the papers filed are not entitled to a filing date, OPAP will send a “Notice of Incomplete Application” informing applicant of the deficiencies; if the application is entitled to a filing date but it is not complete, an OPAP notice (e.g., a “Notice of Omitted Item(s)”) will be sent indicating that the application papers so deposited have been accorded a filing date and indicating what papers must be filed to complete the application.
