Chapter I: Part 1

PATENTS
AND HOW TO GET ONE
A PRACTICAL HANDBOOK

U.S. Department of Commerce

DOVER PUBLICATIONS, INC.
Mineola, New York

_Bibliographical Note_

This Dover edition, first published in 2000, is an unabridged and unaltered republication of the work originally published by the Patent and Trademark Office, Washington, D.C., in 1997 under the title _General Information Concerning Patents_.

_International Standard Book Number: 0–486–41144–3_

Manufactured in the United States of America
Dover Publications, Inc., 31 East 2nd Street, Mineola, N.Y. 11501

Contents

─────────────────────────────────────────────────────────────────────── Functions of the Patent and Trademark Office 5 ─────────────────────────────────────────────────────────────────────── Purpose of this booklet 6 ─────────────────────────────────────────────────────────────────────── What is a patent? 7 ─────────────────────────────────────────────────────────────────────── Patent laws 9 ─────────────────────────────────────────────────────────────────────── What can be patented 10 ─────────────────────────────────────────────────────────────────────── Novelty and other conditions for obtaining a patent 12 ─────────────────────────────────────────────────────────────────────── The United States Patent and Trademark Office 13 ─────────────────────────────────────────────────────────────────────── Publications of the Patent and Trademark Office 15 ─────────────────────────────────────────────────────────────────────── General information and correspondence 19 ─────────────────────────────────────────────────────────────────────── Library, search room services and Patent and Trademark Depository Libraries 21 ─────────────────────────────────────────────────────────────────────── Attorneys and agents 28 ─────────────────────────────────────────────────────────────────────── Disclosure Document 31 ─────────────────────────────────────────────────────────────────────── Who may apply for a patent 33 ─────────────────────────────────────────────────────────────────────── Application for patent 34 ─────────────────────────────────────────────────────────────────────── Oath or declaration, signature 37 ─────────────────────────────────────────────────────────────────────── Filing Fees 38 ─────────────────────────────────────────────────────────────────────── Specification (description and claims) 40 ─────────────────────────────────────────────────────────────────────── Drawing 43 ─────────────────────────────────────────────────────────────────────── Models, exhibits, specimens 54 ─────────────────────────────────────────────────────────────────────── Examination of applications and proceedings in the Patent and Trademark Office 55 ─────────────────────────────────────────────────────────────────────── Amendments to application 58 ─────────────────────────────────────────────────────────────────────── Time for response and abandonment 61 ─────────────────────────────────────────────────────────────────────── Appeal to the Board of Patent Appeals and Interferences and to the courts 62 ─────────────────────────────────────────────────────────────────────── Interferences 63 ─────────────────────────────────────────────────────────────────────── Allowance and issue of patent 65 ─────────────────────────────────────────────────────────────────────── Nature of patent and patent rights 66 ─────────────────────────────────────────────────────────────────────── Maintenance Fees 68 ─────────────────────────────────────────────────────────────────────── Correction of patents 69 ─────────────────────────────────────────────────────────────────────── Assignments and licenses 70 ─────────────────────────────────────────────────────────────────────── Infringement of patents 73 ─────────────────────────────────────────────────────────────────────── Patent marking and “patent pending” 74 ─────────────────────────────────────────────────────────────────────── Design patents 75 ─────────────────────────────────────────────────────────────────────── Plant patents 76 ─────────────────────────────────────────────────────────────────────── Treaties and foreign patents 79 ─────────────────────────────────────────────────────────────────────── Foreign applicants for United States patents 82 ─────────────────────────────────────────────────────────────────────── Answers to questions frequently asked 84 ───────────────────────────────────────────────────────────────────────

Functions of the Patent and Trademark Office

The Patent and Trademark Office (PTO) is an agency of the U.S. Department of Commerce. The role of the Patent and Trademark Office is to grant patents for the protection of inventions and to register trademarks. It serves the interest of inventors and businesses with respect to their inventions and corporate products, and service identifications. It also advises and assists the bureaus and offices of the Department of Commerce and other agencies of the Government in matters involving “intellectual property” such as patents, trademarks and semiconductor mask works. Through the preservation, classification, and dissemination of patent information, the Office aids and encourages innovation and the scientific and technical advancement of the nation.

In discharging its patent related duties, the Patent and Trademark Office examines applications and grants patents on inventions when applicants are entitled to them; it publishes and disseminates patent information, records assignments of patents, maintains search files of U.S. and foreign patents, and maintains a search room for public use in examining issued patents and records. It supplies copies of patents and official records to the public. Similar functions are performed relating to trademarks.

Purpose of this Booklet

The purpose of this booklet is to give users some general information about patents and the operations of the Patent and Trademark Office. It attempts to answer many of the questions commonly asked of the Patent and Trademark Office but is not intended to be a comprehensive textbook on patent law or a guide for the patent attorney. It is hoped that this information will be useful to inventors and prospective applicants for patents, to students, and to others who may be interested in patents by giving them a brief general introduction to the subject.

Additional information may be obtained from the publications listed under the sections “Publications of the Patent and Trademark Office” and “General information and correspondence.” Also, information is available on the U.S. Patent and Trademark Office’s Web site at: _http://www.uspto.gov_. The Patent and Trademark Office does not publish any textbooks on patent law, but a number of such works for the specialist and for the general reader have been published by private concerns.

What Is a Patent?

A patent for an invention is a grant of a property right by the Government to the inventor (or his or her heirs or assigns), acting through the Patent and Trademark Office. The term of the patent shall be 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), from the date the earliest such application was filed, subject to the payment of maintenance fees. The right conferred by the patent grant extends only throughout the United States and its territories and possessions.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Most of the statements in the preceding paragraphs will be explained in greater detail in later sections.

Some persons occasionally confuse patents, copyrights, and trademarks. Although there may be some resemblance in the rights of these three kinds of intellectual property, they are different and serve different purposes.

Copyrights

A copyright protects the writings of an author against copying. Literary, dramatic, musical and artistic works are included within the protection of the copyright law, which in some instances also confers performing and recording rights. The copyright protects the form of expression rather than to the subject matter of the writing. A description of a machine could be copyrighted as a writing, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered in the Copyright Office in the Library of Congress. Information concerning copyrights may be obtained from the Register of Copyrights, Library of Congress, Washington, D.C. 20559. (Telephone 202–707–3000)

Trademarks/Servicemarks

A trademark or servicemark relates to any word, name, symbol or device which is used in trade with goods or services to indicate the source or origin of the goods or services and to distinguish them from the goods or services of others. Trademark rights may be used to prevent others from using a confusingly similar mark but not to prevent others from making the same goods or from selling them under a non-confusing mark. Similar rights may be acquired in marks used in the sale or advertising of services (service marks). Trademarks and service marks which are used in interstate or foreign commerce may be registered in the Patent and Trademark Office. The procedure relating to the registration of trademarks and some general information concerning trademarks is given in a separate pamphlet entitled “Basic Facts About Trademarks.”

Patent Laws

The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads “Congress shall have power ... to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The law now in effect is a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code.

The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the Patent and Trademark Office to administer the law relating to the granting of patents, and contains various other provisions relating to patents.

What Can Be Patented

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person who “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,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles which are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything which is made by man and the processes for making the products.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.

The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

Interpretations of the statute by the courts have defined the limits of the field of subject matter which can be patented, thus it has been held that the laws of nature, physical phenomena and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Novelty and Other Conditions for Obtaining a Patent

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:

“(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States ...”

If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost.

Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another, or changes in size, are ordinarily not patentable.

The United States Patent and Trademark Office

Congress established the United States Patent and Trademark Office to issue patents on behalf of the Government. The Patent and Trademark Office as a distinct bureau may be said to date from the year 1802 when a separate official in the Department of State who became known as “Superintendent of Patents” was placed in charge of patents. The revision of the patent laws enacted in 1836 reorganized the Patent and Trademark Office and designated the official in charge as Commissioner of Patents and Trademarks. The Patent and Trademark Office remained in the Department of State until 1849 when it was transferred to the Department of Interior. In 1925 it was transferred to the Department of Commerce where it is today.

The Patent and Trademark Office administers the patent laws as they relate to the granting of patents for inventions, and performs other duties relating to patents. It examines applications for patents to determine if the applicants are entitled to patents under the law and grants the patents when they are so entitled; it publishes issued patents and various publications concerning patents, records assignments of patents, maintains a search room for the use of the public to examine issued patents and records, supplies copies of records and other papers, and the like. Similar functions are performed with respect to the registration of trademarks. The Patent and Trademark Office has no jurisdiction over questions of infringement and the enforcement of patents, nor over matters relating to the promotion or utilization of patents or inventions.

The head of the Office is the Assistant Secretary of Commerce and Commissioner of Patents and Trademarks, and his staff includes the Deputy Assistant Secretary of Commerce and Deputy Commissioner of Patents and Trademarks, several assistant commissioners, and other officials. As head of the Office, the Commissioner superintends or performs all duties respecting the granting and issuing of patents and the registration of trademarks; exercises general supervision over the entire work of the Patent and Trademark Office; prescribes the rules, subject to the approval of the Secretary of Commerce, for the conduct of proceedings in the Patent and Trademark Office, and for recognition of attorneys and agents; decides various questions brought before him by petition as prescribed by the rules; and performs other duties necessary and required for the administration of the Patent and Trademark Office.

The work of examining applications for patents is divided among a number of examining groups, each group having jurisdiction over certain assigned fields of technology. Each group is headed by a group director and staffed by examiners. The examiners review applications for patents and determine whether patents can be granted. An appeal can be taken to the Board of Patent Appeals and Interferences from their decisions refusing to grant a patent, and a review by the Commissioner of Patents and Trademarks may be had on other matters by petition. The examiners also identify applications that claim the same invention and initiate proceedings, known as interferences, to determine who was the first inventor.

In addition to the examining groups, other offices perform various services, such as receiving and distributing mail, receiving new applications, handling sales of printed copies of patents, making copies of records, inspecting drawings, and recording assignments.

At present, the Patent and Trademark Office has about 5,700 employees, of whom about half are examiners and others with technical and legal training. Patent applications are received at the rate of over 200,000 per year. The Patent and Trademark Office receives over five million pieces of mail each year.

Publications of the Patent and Trademark Office

=U.S. Patents.=—The specification and accompanying drawings of all patents are published on the day they are granted and printed copies are sold to the public by the Patent and Trademark Office. Over 6,000,000 patents have been issued.

Printed copies of any patent, identified by its patent number, may be purchased from the Patent and Trademark Office. Current fee schedule is available by calling the PTO General Information Services at 1–800–786–9199 or 703–308–4357 or by accessing PTO’s Web site at _http://www.uspto.gov_.

Future patents classified in subclasses containing subject matter of interest may be obtained, as they issue, by prepayment of a deposit and a service charge. For the cost of such subscription service, a separate inquiry should be sent to the Patent and Trademark Office.

=Official Gazette of the United States Patent and Trademark Office.=—The Official Gazette of the United States Patent and Trademark Office is the official journal relating to patents and trademarks. It has been published weekly since January 1872 (replacing the old “Patent Office Reports”), and is now issued each Tuesday in two parts, one describing patents and the other trademarks. It contains a claim and a selected figure of the drawings of each patent granted on that day; notices of patent and trademark lawsuits; indexes of patents and patentees; list of patents available for license or sale; a list of Patent and Trademark Depository Libraries (PTDLs); and much general information such as orders, notices, changes in rules, changes in classification, etc. The Official Gazette is sold on subscription and by single copies by the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402.

The illustrations and claims of the patents are arranged in the Official Gazette according to the Patent and Trademark Office classification of subject matter, permitting ready reference to patents in any particular technology. Copies of the Official Gazette are available in the PTDLs and public libraries of other cities.

=Index of Patents.=—A two-part publication which summarizes for a given calendar year the classification and inventor/assignee information at the time of issue for utility, Design, Reissue, and Plant Patents; Reexamination Certificates, and Statutory Invention Registrations published weekly in the Official Gazette. Part I, List of Patentees comprises an alphabetical listing of every patentee and assignee recorded at the time the patent document was issued. Part II, Index to Subjects of Inventions comprises a listing of all patents for the year according to U.S. Patent Classification class and subclass designation at the time the patent document was issued—it is not an index of subjects, per se. Sold by the Superintendent of Documents.

=Index of Trademarks.=—An annual index of registrants of trademarks. Sold by the Superintendent of Documents.

=Index to the U.S. Patent Classification System.=—An alphabetical list of approximately 65,000 common, informal headings or terms which refer to specific classes and subclasses in the Manual of Classification used to categorize patents. It is intended as a means for initial entry into the Classification System and should be especially useful for persons not familiar with the system as well as those who may not be familiar with any particular technology under study. Sold by the Superintendent of Documents.

=Manual of Classification.=—A loose-leaf manual containing a list of all the classes and subclasses of inventions in the Patent and Trademark Office classification systems, a subject matter index, and other information relating to U.S. patent classification system. Each subclass has a short, descriptive title often arranged in a specific hierarchical order designated by dots for indentation levels. Substitute pages are issued from time to time. Annual subscription includes the basic manual and substitute pages. Sold by the Superintendent of Documents.

=Classification Definitions.=—Gives a detailed definition for each class and official subclass included in the Manual of Classification. The definitions indicate the subject matter to be found in or excluded from a class or subclass; they limit or expand in precise manner the meaning intended for each subclass title; they serve as a guide to users of the Manual of Classification to refer to the same subclass for patents on a particular technology by eliminating, as much as possible, subjective and varying interpretations of the meanings of subclass titles. The “notes” illustrate the kinds of information that can be found in a subclass and direct the searcher to other related subclasses which may contain relevant information. Subscription service consists of a basic full set of definitions and semiannual sets of updated definitions for an indeterminate period. Sold by the Superintendent of Documents.

=Title 37 Code of Federal Regulations.=—Includes rules of practice for Patents, Trademarks, and Copyrights. Available from the Superintendent of Documents.

=Basic Facts about Trademarks.=—Contains general information for the layman about applications for, and registration of, trademarks and service marks. Sold by the Superintendent of Documents.

=Attorneys and Agents Registered to Practice Before the U.S. Patent and Trademark Office.=—An alphabetical and geographical listing of patent attorneys and agents registered to practice before the U.S. Patent and Trademark Office. Sold by the Superintendent of Documents.

=Manual of Patent Examining Procedure (MPEP).=—A loose-leaf manual which serves primarily as a detailed reference work on patent examining practice and procedure for the Patent and Trademark Office’s Examining Corps. Subscription service includes basic manual, periodic revisions, and change notices. Sold by the Superintendent of Documents. (The MPEP is also available in electronic form from the PTO’s Office of Electronic Information and as an Internet information file.)

=Guide for the Preparation of Patent Drawings.=—A collection of the most pertinent rules from Title 37 of the Code of Federal Regulations pertaining to patent drawings with interpretations of those rules and examples. Sold by the Superintendent of Documents.

=PTO Products and Services Catalog, Information Dissemination Organizations (IDO).=—This compendium describes the products and services available from the Patent and Trademark Office (PTO) and provides ordering information. Many items are available free of charge from the Information Dissemination Organizations (IDOs). The catalog lists products and services available from the three IDO offices responsible for public records; electronic products/services; general information; PTO’s public search facilities in Arlington, Virginia; and the network of 80 Patent and Trademark Depository Libraries (PTDLs) in 49 states, the District of Columbia, and Puerto Rico. Included is detailed descriptions of data available on magnetic tape, diskette, or CD-ROM. A number of products can be ordered in paper form, including PTO forms and patent or trademark copies, as well as Technology Assessment and Forecast (TAF) statistical reports and research publications. Available from the PTO General Information Services at 1–800–786–9199 or 703–308–4357.

Many publications listed above, as well as other Patent and Trademark Office products and services are available electronically from IDO or on the PTO’s Web site. Call General Information Services for more information at 800–786–9199 or 703–308–4357.

General Information and Correspondence

All business with the Patent and Trademark Office should be transacted in writing and all correspondence relating to patent matters should be addressed to “ASSISTANT COMMISSIONER FOR PATENTS, WASHINGTON, D.C. 20231.” Correspondents should be sure to include their full return addresses, including zip codes. The principal location of the PTO is Crystal Plaza 3, 2021 Jefferson Davis Highway, Arlington, Virginia. The personal presence of applicants at the PTO is unnecessary.

Applicants and attorneys are required to conduct their business with decorum and courtesy. Papers presented in violation of this requirement will be returned.

Separate letters (but not necessarily in separate envelopes) should be written for each distinct subject of inquiry, such as assignments, payments, orders for printed copies of patents, orders for copies of records, and requests for other services. None of these inquiries should be included with letters responding to Office actions in applications.

When a letter concerns a patent application, the correspondent must include the application number, filing date, and Group Art Unit number. When a letter concerns a patent, it must include the name of the patentee, the title of the invention, the patent number, and the date of issue.

An order for a copy of an assignment must give the book and page, or reel and frame of the record, as well as the name of the inventor; otherwise, an additional charge is made for the time consumed in making the search for the assignment.

Applications for patents are not open to the public, and no information concerning them is released except on written authority of the applicant, his/her assignee, or his/her attorney, or when necessary to the conduct of the business of the PTO. Patents and related records, including records of any decisions, the records of assignments other than those relating to assignments of patent applications, books, and other records and papers in the Office are open to the public. They may be inspected in the Patent and Trademark Office Search Room or copies may be ordered.

The Office cannot respond to inquiries concerning the novelty and patentability of an invention in advance of the filing of an application; give advice as to possible infringement of a patent; advise of the propriety of filing an application; respond to inquiries as to whether, or to whom, any alleged invention has been patented; act as an expounder of the patent law or as counselor for individuals, except in deciding questions arising before it in regularly filed cases. Information of a general nature may be furnished either directly or by supplying or calling attention to an appropriate publication.

Library, Search Room Services and Patent and Trademark Depository Libraries

The Scientific and Technical Information Center of the Patent and Trademark Office located at Crystal Plaza 3, 2C01, 2021 Jefferson Davis Highway, Arlington, VA, has available for public use over 120,000 volumes of scientific and technical books in various languages, about 90,000 bound volumes of periodicals devoted to science and technology, the official journals of 77 foreign patent organizations, and over 40 million foreign patents on paper, microfilm, microfiche, and CD-ROM. The Scientific and Technical Information Center is open to the public from 8:30 a.m. to 5:00 p.m., Monday through Friday except federal holidays.

The Patent Search Room located at Crystal Plaza 3, 1A01, 2021 Jefferson Davis Highway, Arlington, VA, is provided where the public may search and examine United States patents granted since 1790. Patents are arranged according to the U.S. Patent Classification System of over 400 classes and over 136,000 subclasses. By searching in these classified groupings of patents, it is possible to determine, before actually filing an application, whether an invention has been anticipated by a United States patent, and it is also possible to obtain the information contained in patents relating to any field of endeavor. The Patent Search Room contains a set of United States patents arranged in numerical order and a complete set of the Official Gazette.

A Files Information Room also is maintained where the public may inspect the records and files of issued patents and other open records. Applicants, their attorneys or agents, and the general public are not entitled to use the records and files in the examiners’ rooms.

The Patent Search Room is open from 8 a.m. to 8 p.m. Monday through Friday except on Federal holidays.

Since a patent is not always granted when an application is filed, many inventors attempt to make their own search of the prior patents and publications before applying for a patent. This may be done in the Patent Search Room of the Patent and Trademark Office, and in libraries, located throughout the U.S., which have been designated as Patent and Trademark Depository Libraries (PTDLs). An inventor may make a preliminary search through the United States patents to discover if the particular invention or one similar to it has been shown in the prior patent. An inventor may also employ patent attorneys or agents to perform the preliminary search. This search is not always as complete as that made by the Patent and Trademark Office during the examination of an application, but only serves, as its name indicates, a preliminary purpose. For this reason, the Patent and Trademark Office examiner may, and often does, reject claims in an application on the basis of prior patents or publications not found in the preliminary search.

Those who cannot come to the Patent Search Room may order from the Patent and Trademark Office copies of lists of original patents or of cross-referenced patents contained in the subclasses comprising the field of search, or may inspect and obtain copies of the patents at a Patent and Trademark Depository Library. The Patent and Trademark Depository Libraries (PTDLs) receive current issues of U.S. Patents and maintain collections of earlier issued patents and trademark information. The scope of these collections varies from library to library, ranging from patents of only recent years to all or most of the patents issued since 1790.

These patent collections are open to public use. Each of the PTDLs, in addition, offers the publications of the U.S. Patent Classification System (e.g., Manual of Classification, Index to the U.S. Patent Classification System, Classification Definitions, etc.) and other patent documents and forms, and provides technical staff assistance in their use to aid the public in gaining effective access to information contained in patents. The collections are organized in patent number sequence.

Available in all PTDLs is the Cassis CD-ROM system. With various files, it permits the effective identification of appropriate classifications to search, provides numbers of patents assigned to a classification to facilitate finding the patents in a numerical file of patents, provides the current classification(s) of all patents, permits word searching on classification titles, and on abstracts, and provides certain bibliographic information on more recently issued patents.

Facilities for making paper copies from microfilm, the paper bound volumes or CD-ROM are generally provided for a fee.

Due to variations in the scope of patent collections among the PTDLs and in their hours of service to the public, anyone contemplating the use of the patents at a particular library is advised to contact that library, in advance, about its collection, services, and hours, so as to avert possible inconvenience.

──────────────────────────────────────────────────────────────────────
State Name of Library Telephone #
──────────────────────────────────────────────────────────────────────
Alabama * Auburn: Ralph Brown 334–844–1747
Draughon Library, Auburn
University
Birmingham Public Library 205–226–3620
──────────────────────────────────────────────────────────────────────
Alaska Anchorage: Z. J. Loussac 907–562–7323
Public Library,
Anchorage Municipal
Libraries
──────────────────────────────────────────────────────────────────────
Arizona * Tempe: Noble Science and 602–965–7010
Engineering
Library, Arizona State
University
──────────────────────────────────────────────────────────────────────
Arkansas * Little Rock: Arkansas 501–682–2053
State Library
──────────────────────────────────────────────────────────────────────
California * Los Angeles Public Library 213–228–7220
Sacramento: California State 916–654–0069
Library
San Diego Public Library 619–236–5813
* San Francisco Public 415–557–4500
Library
** Sunnyvale Center for 408–730–7290
Innovation, Invention and
Ideas
──────────────────────────────────────────────────────────────────────
Colorado Denver Public Library 303–640–6220
──────────────────────────────────────────────────────────────────────
Delaware Newark: University of 302–831–2965
Delaware Library
──────────────────────────────────────────────────────────────────────
District of Columbia Washington: Founders 202–806–7252
Library, Howard University
──────────────────────────────────────────────────────────────────────
Florida * Fort Lauderdale: Broward 954–357–7444
County Main Library
* Miami-Dade Public Library 305–375–2665
Orlando: University of 407–823–2562
Central Florida Libraries
Tampa Campus Library, 813–974–2726
University of South
Florida
──────────────────────────────────────────────────────────────────────
Georgia Atlanta: Library and 404–894–4508
Information Center,
Georgia Institute of
Technology
──────────────────────────────────────────────────────────────────────
Hawaii * Honolulu: Hawaii State 808–586–3477
Library
──────────────────────────────────────────────────────────────────────
Idaho Moscow: University of Idaho 208–885–6235
Library
──────────────────────────────────────────────────────────────────────
Illinois Chicago Public Library 312–747–4450
Springfield: Illinois State 217–782–5659
Library
──────────────────────────────────────────────────────────────────────
Indiana Indianapolis-Marion County 317–269–1741
Public Library
West Lafayette: Siegesmund 317–494–2872
Engineering Library,
Purdue University
──────────────────────────────────────────────────────────────────────
Iowa Des Moines: State Library of 515–281–4118
Iowa
──────────────────────────────────────────────────────────────────────
Kansas * Wichita: Ablah Library, 316–978–3155
Wichita State University
──────────────────────────────────────────────────────────────────────
Kentucky * Louisville Free Public 502–574–1611
Library
──────────────────────────────────────────────────────────────────────
Louisiana Baton Rouge: Troy H. 504–388–8875
Middleton Library,
Louisiana State University
──────────────────────────────────────────────────────────────────────
Maine Orono: Raymond H. Fogler 207–581–1678
Library, University of
Maine
──────────────────────────────────────────────────────────────────────
Maryland College Park: Engineering & 301–405–9157
Physical Sciences Library,
University of Maryland
──────────────────────────────────────────────────────────────────────
Massachusetts Amherst: Physical Sciences 413–545–1370
and Engineering Library,
University of
Massachusetts
* Boston Public Library 617–536–5400
Ext. 265
──────────────────────────────────────────────────────────────────────
Michigan Ann Arbor: Media Union 313–647–5735
Library, The University of
Michigan
Big Rapids: Abigail S. Timme 616–592–3602
Library, Ferris State
University
** Detroit: Great Lakes 313–833–3379
Patent and Trademark
Center, Detroit Public
Library
──────────────────────────────────────────────────────────────────────
Minnesota * Minneapolis Public Library 612–372–6570
and Information Center
──────────────────────────────────────────────────────────────────────
Mississippi Jackson: Mississippi Library 601–359–1036
Commission
──────────────────────────────────────────────────────────────────────
Missouri * Kansas City: Linda Hall 816–363–4600
Library
St. Louis Public Library 314–241–2288
Ext. 390
──────────────────────────────────────────────────────────────────────
Montana Butte: Montana Tech of the 406–496–4281
University of Montana
Library
──────────────────────────────────────────────────────────────────────
Nebraska * Lincoln: Engineering 402–472–3411
Library, University of
Nebraska-Lincoln
──────────────────────────────────────────────────────────────────────
Nevada Reno: University Library, 702–784–6500
University of Nevada-Reno Ext. 257
──────────────────────────────────────────────────────────────────────
New Hampshire Concord: New Hampshire State 603–271–2239
Library
──────────────────────────────────────────────────────────────────────
New Jersey Newark Public Library 201–733–7782
Piscataway: Library of 908–445–2895
Science and Medicine,
Rutgers University
──────────────────────────────────────────────────────────────────────
New Mexico Albuquerque: Centennial 505–277–4412
Science and Engineering
Library, The University of
New Mexico
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New York Albany: New York State 518–474–5355
Library
* Buffalo and Erie County 716–858–7101
Public Library
New York: Science, Industry 212–592–7000
and Business Library, New
York Public Library
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North Carolina * Raleigh: D.H. Hill 919–515–3280
Library, North Carolina
State University
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North Dakota Grand Forks: Chester Fritz 701–777–4888
Library, University of
North Dakota
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Ohio Akron-Summit County Public 330–643–9075
Library
Cincinnati: The Public 513–369–6936
Library of Cincinnati and
Hamilton County
* Cleveland Public Library 216–623–2870
Columbus: Ohio State 614–292–6175
University Libraries
* Toledo/Lucas County Public 419–259–5212
Library
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Oklahoma * Stillwater: Oklahoma State 405–744–7086
University
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Oregon * Portland: Lewis & Clark 503–768–6786
College
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Pennsylvania * Philadelphia: The Free 215–686–5331
Library of Philadelphia
Pittsburgh: The Carnegie 412–622–3138
Library of Pittsburgh
University Park: Pattee 814–865–4861
Library, Pennsylvania
State University
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Puerto Rico Mayaguez: General Library, 787–832–4040
University of Puerto Rico Ext. 3459
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Rhode Island Providence Public Library 401–455–8027
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South Carolina Clemson: R.M. Cooper 864–656–3024
Library, Clemson
University
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South Dakota Rapid City: Devereaux 605–394–1275
Library, South Dakota
School of Mines &
Technology
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Tennessee Memphis & Shelby County 901–725–8877
Public Library and
Information Center
Nashville: Stevenson Science 615–322–2717
and Engineering Library,
Vanderbilt University
──────────────────────────────────────────────────────────────────────
Texas Austin: McKinney Engineering 512–495–4500
Library, The University of
Texas at Austin
* College Station: Sterling 409–845–3826
C. Evans Library, Texas
A&M University
* Dallas Public Library 214–670–1468
Houston: The Fondren 713–527–8101
Library, Rice University Ext. 2587
Lubbock: Texas Tech 806–742–2282
University Library
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Utah * Salt Lake City: Marriott 801–581–8394
Library, University of
Utah
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Vermont Burlington: Bailey Howe 802–656–2542
Library, University of
Vermont
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Virginia * Richmond: James Branch 804–828–1104
Cabell Library, Virginia
Commonwealth University
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Washington * Seattle: Engineering 206–543–0740
Library, University of
Washington
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West Virginia Morgantown: Evansdale 304–293–2510
Library, West Virginia Ext. 113
University
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Wisconsin Madison: Kurt F. Wendt 608–262–6845
Library, University of
Wisconsin-Madison
Milwaukee Public Library 414–286–3051
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Wyoming Casper: Natrona County 307–237–4935
Public Library
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_Note: * Denotes APS-Text access; ** denotes partnership PTDL.
Partnership Libraries have access to APS-Text, APS-Image, and
X-Search._

Attorneys and Agents

The preparation of an application for patent and the conducting of the proceedings in the Patent and Trademark Office to obtain the patent is an undertaking requiring the knowledge of patent law and rules and Patent and Trademark Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.

Inventors may prepare their own applications and file them in the Patent and Trademark Office and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.

Most inventors employ the services of registered patent attorneys or patent agents. The law gives the Patent and Trademark Office the power to make rules and regulations governing conduct and the recognition of patent attorneys and agents to practice before the Patent and Trademark Office. Persons who are not recognized by the Patent and Trademark Office for this practice are not permitted by law to represent inventors before the Patent and Trademark Office.

The Patent and Trademark Office maintains a register of attorneys and agents. To be admitted to this register, a person must comply with the regulations prescribed by the Office, which require a showing that the person is of good moral character and of good repute and that he/she has the legal, and scientific and technical qualifications necessary to render applicants for patents a valuable service. Certain of these qualifications must be demonstrated by the passing of an examination. Those admitted to the examination must have a college degree in engineering or physical science or the equivalent of such a degree.

The Patent and Trademark Office registers both attorneys at law and persons who are not attorneys at law. The former persons are now referred to as “patent attorneys” and the latter persons are referred to as “patent agents.” Insofar as the work of preparing an application for a patent and conducting the prosecution in the Patent and Trademark Office is concerned, patent agents are usually just as well qualified as patent attorneys, although patent agents cannot conduct patent litigation in the courts or perform various services which the local jurisdiction considers as practicing law. For example, a patent agent could not draw up a contract relating to a patent, such as an assignment or a license, if the state in which he/she resides considers drafting contracts as practicing law.

Some individuals and organizations that are not registered advertise their services in the fields of patent searching and invention marketing and development. Such individuals and organizations cannot represent inventors before the Patent and Trademark Office. They are not subject to Patent and Trademark Office discipline, and the Office cannot assist inventors in dealing with them.

The Patent and Trademark Office cannot recommend any particular attorney or agent, or aid in the selection of an attorney or agent, as by stating, in response to inquiry that a named patent attorney, agent, or firm, is “reliable” or “capable.” The Patent and Trademark Office publishes a directory of all registered patent attorneys and agents who have indicated their availability to accept new clients, arranged by states, cities, and foreign countries. The Directory may be purchased in paper form from the Government Printing Office or from the PTO’s Office of Electronic Information on the Cassis ASSIST CD-ROM disc. It is also available on the PTO Web site.

The telephone directories of most large cities have, in the classified section, a heading for patent attorneys under which those in that area are listed. Many large cities have associations of patent attorneys.

In employing a patent attorney or agent, the inventor executes a power of attorney or authorization of agent which must be filed in the Patent and Trademark Office and is usually a part of the application papers. When an attorney or agent has been appointed, the Office does not communicate with the inventor directly but conducts the correspondence with the attorney or agent since he/she is acting for the inventor thereafter although the inventor is free to contact the Patent and Trademark Office concerning the status of his/her application. The inventor may remove the attorney or agent by revoking the power of attorney or authorization of agent.

The Patent and Trademark Office has the power to disbar, or suspend from practicing before it, persons guilty of gross misconduct, etc., but this can only be done after a full hearing with the presentation of clear and convincing evidence concerning the misconduct. The Patent and Trademark Office will receive and, in appropriate cases, act upon complaints against attorneys and agents. The fees charged to inventors by patent attorneys and agents for their professional services are not subject to regulation by the Patent and Trademark Office. Definite evidence of overcharging may afford basis for Patent and Trademark Office action, but the Office rarely intervenes in disputes concerning fees.

Disclosure Document

One of the services provided for inventors is the acceptance and preservation by the Patent and Trademark Office for a two year period of papers signed by the inventor(s) disclosing an invention. This disclosure is accepted as evidence of the dates of conception of the invention. The Disclosure Document will be retained for two years and then be destroyed unless it is referred to in a separate letter in a related patent application within those two years.

Disclosure Documents may also be filed at selected Patent and Trademark Depository Libraries (PTDLs), presently including the Sunnyvale (CA) Center for Innovation, Invention and Ideas and Great Lakes Patent and Trademark Center at the Detroit (MI) Public Library. A listing of PTDLs is included in this pamphlet under the heading “Library, Search Room Searches and Patent and Trademark Depository Libraries.” One copy of the document is kept at the PTDL and the original documents are sent to the Patent and Trademark Office for fee collection, processing and retention. Disclosure Documents are kept in confidence by the PTO.

The Disclosure Document is not a patent application and the date of its receipt in the PTO does not become the effective filing date of any patent application subsequently filed. The benefits provided by the document will depend upon the adequacy of the disclosure and therefore, it is recommended that the Disclosure Document be a clear and complete explanation of the manner and process of making and using the invention. When the nature of the invention permits, a drawing or sketch should be included.

A fee must accompany the disclosure. See the current fee schedule. To facilitate the PTO’s electronic data capture and storage of the Disclosure Document, it must be on white paper having dimensions not to exceed 8½ x 11 inches (21.6 X 28.0 cm) with each page numbered. Text and drawings must be sufficiently dark to permit reproduction with commonly used office copying machines. Oversized papers, even if foldable to the above dimensions will not be accepted.

Attachments such as videotapes and working models will not be accepted and will be returned.

The Disclosure Document must be accompanied by a separate signed cover letter stating that it is submitted by, or on behalf of, the inventor(s) and requesting that the material be received into the Disclosure Document Program. The original submission will not be returned. A notice with an identifying number and date of receipt in the PTO will be mailed to the customer, indicating that the Disclosure Document may be relied upon only as evidence and that a patent application should be diligently filed if patent protection is desired.

A brochure on Disclosure Documents is available by calling the PTO General Information Services at 1–800–786–9199 or 703–308–4357.

Who May Apply for a Patent

According to the law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If the inventor is dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is insane, the application for patent may be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or a person having a proprietary interest in the invention may apply on behalf of the non-signing inventor.

If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.

Officers and employees of the Patent and Trademark Office are prohibited by law from applying for a patent or acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent.

Application For Patent

Non-Provisional Application for a Patent

A non-provisional application for a patent is made to the Assistant Commissioner for Patents and includes:

(1) A written document which comprises a specification (description and claims), and an oath or declaration;

(2) A drawing in those cases in which a drawing is necessary; and

(3) The filing fee. See the fee schedule.

All application papers must be in the English language or accompanied by a verified translation into the English language along with the required fee set forth in 37 CFR 1.17(k). All application papers must be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable and white paper.

The papers must be presented in a form having sufficient clarity and contrast between the paper and the writing to permit electronic reproduction. The application papers must all be the same size—either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8½ by 11 inches), with a top margins of at least 2.0 cm (¾ inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (¾ inch) and a bottom margin of at least 2.0 cm (¾ inch) with no holes made in the submitted papers. It is also required that the spacing on all papers be 1½ or double spaced and the application papers must be numbered consecutively (centrally located above or below the text) starting with page one.

The application for patent is not forwarded for examination until all required parts, complying with the rules related thereto, are received. If any application is filed without all the required parts for obtaining a filing date (incomplete or defective), the applicant will be notified of the deficiencies and given a time period to complete the application filing (a surcharge may be required)—at which time a filing date as of the date of such a completed submission will be obtained by the applicant. If the omission is not corrected within a set, specified time period, the application will be returned or otherwise disposed of; the filing fee if submitted will be refunded less a handling fee as set forth in the fee schedule.

It is desirable that all parts of the complete application be deposited in the Office together; otherwise each part must be signed and a letter must accompany each part, accurately and clearly connecting it with the other parts of the application.

All applications received in the PTO are numbered in serial order and the applicant will be informed of the application serial number and filing date by a filing receipt.

The filing date of an application for patent is the date on which the names of the inventors, a specification (including claims) and any required drawings are received in the PTO; or the date on which the last part completing the application are received in the case of a previously incomplete or defective application.

Provisional Application for a Patent

Since June 8, 1995, the PTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. Provisional applications may not be filed for design inventions. The filing date of a provisional application is the date on which a written description of the invention, drawings if necessary, and the name of the inventor(s) are received in the PTO. To be complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. Applicant would then have up to twelve months to file a non-provisional application for patent as described above. The claimed subject matter in the later filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application.

Provisional applications are not examined on their merits. A provisional application will become abandoned by the operation of law twelve months from its filing date. The twelve month pendency for a provisional application is not counted toward the 20 year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.

A surcharge is required for filing the basic filing fee or the cover sheet on a date later than the filing of the provisional application.

A brochure on Provisional Application for Patent is available by calling the PTO General Information Services at 1–800–786–9199 or 703–308–4357 or by accessing PTO’s Web site at _http://www.uspto.gov_.

Oath or Declaration, Signature

The oath or declaration of the applicant is required by law for a non-provisional application. The inventor must make an oath or declaration that he/she believes himself/herself to be the original and first inventor of the subject matter of the application, and he/she must make various other allegations required by law and various allegations required by the Patent and Trademark Office rules. The oath must be sworn to by the inventor before a notary public or other officer authorized to administer oaths. A declaration may be used in lieu of an oath as part of the original application for a patent involving designs, plants, and other patentable inventions; for reissue patents; when claiming matter originally shown or described but not originally claimed; or when filing a divisional or continuing application. A declaration does not need to be notarized.

The oath or declaration must be signed by the inventor in person, or by the person entitled by law to make application on the inventor’s behalf. A full first and last name with middle initial or name, if any, of each inventor are required. The post office address and citizenship of each inventor are also required.

Sample forms are available by calling the PTO General Information Services at 800–786–9199 or 703–308–4357 or by accessing PTO Web site at _http://www.uspto.gov_ under the section titled “PTO Forms.”

The papers in a complete application will not be returned for any purpose whatsoever, nor will the filing fee be returned. If applicants have not preserved copies of the papers, the Office will furnish copies for a fee.

Filing Fees[1]

Footnote 1:

Please Note: The fees are current as of the revision date. Fees are
subject to change in October of each year and should therefore be
verified before submission to the PTO. A fee schedule may be obtained
by writing to Commissioner of Patents and Trademarks, Washington, D.C.
20231—Attention: General Information Services or by calling the
General Information Services at 800–786–9199 or 703–308–4357 or from
the PTO Web site at _http://www.uspto.gov_.

The filing fee of a non-provisional application, except in design and plant cases, consists of a basic fee and additional fees. The basic fee entitles the applicant to present twenty (20) claims, including not more than three (3) in independent form. An additional fee is required for each claim in independent form which is in excess of three (3) and an additional fee is required for each claim (whether independent or dependent) which is in excess of a total of twenty (20) claims. If the application contains multiple dependent claims, additional fees are required.

If the owner of the invention is a small entity, (an independent inventor, a small business concern or a non-profit organization), the filing fees are reduced by half if the small entity files a verified statement claiming small entity status.

To avoid errors in the payment of fees it is suggested that the table in the enclosed patent application transmittal letter be utilized to calculate the fee payment.

In calculating fees, a claim is in singularly dependent form if it incorporates by reference a single preceding claim which may be an independent or a dependent claim. A multiple dependent claim or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference is made.

The law also provides for the payment of additional fees on presentation of additional claims after the application is filed. When an amendment is filed which presents additional claims over the total number already paid for, or additional independent claims over the number of independent claims already accounted for, it must be accompanied by any additional fees due.

Specification (Description and Claims)

The following order of arrangement should be observed in framing the application:

(a) Application transmittal form.

(b) Fee transmittal form.

(c) Title of the Invention.

(d) Cross Reference to related applications (if any).

(e) Statement of federally sponsored research/development (if any).

(f) Reference to a microfiche appendix (if any).

(g) Background of the Invention.

(h) Brief Summary of the Invention.

(i) Brief description of the several views of the drawing (if any).

(j) Detailed Description of the Invention.

(k) Claim or claims.

(1) Abstract of the disclosure.

(m) Drawings (if any).

(n) Executed oath or declaration.

(o) Sequence listing (if any).

(p) Plant Color Coding Sheet (applicable in plant patent applications).

The specification must include a written description of the invention and of the manner and process of making and using it, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the technological area to which the invention pertains, or with which it is most nearly connected, to make and use the same.

The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter, or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor for carrying out the invention must be set forth.