Patent It Yourself - PDF Archive

274 | Patent it YOURSELF
of the application. Under no circumstances should you
name your financier, your boss, or anyone else who was
not an actual inventor. If you are not a U.S. citizen or are
living outside the U.S., your rights are as good as a U.S.
citizen-resident. The PTO will correspond with you in any
country. If you’re filing from abroad, you may bypass U.S.
mail delays by filing from and using a U.S. correspondence
address or by filing via EFS-Web.
If joint inventors receive a patent, under Section 262 of
the patent statutes, each joint patentee or owner of a patent
can practice the invention without accounting to the other
owners. Since this can be unfair, I have provided a Joint
Owners’ Agreement (Form 16-2, discussed in Chapter 16,
Section C) to protect each owner. I strongly recommend
that all joint owners sign this form to prevent injustice
later.
Also, under PTO Rule 48, if the claims are changed
or cancelled so that the original joint inventorship is
no longer correct, the inventor who is improperly listed
should be removed from the application. To record and
preserve the contributions of the respective inventors, I
have provided a Statement of Respective Contributions
form as Form 16-1 (also discussed in Chapter 16, Section
C). All joint applicants should fill out this form and sign
and keep a copy so that inventorship can be changed with
confidence later.
3. The Essential and Optional
Parts of Your Application
A basic patent application filed by mail consists of a set of
minimal but necessary parts. (I’ve marked with an asterisk
those elements not required when using the EFS-Web filing
system. For more information, read Section F.) However, for
the reasons indicated below, you may wish to file additional
or optional parts with your application. The following
is a list of the minimal and necessary parts and also the
additional and optional parts to get you familiar with them
before I discuss them in detail later.
i. Minimal and Necessary Parts
• Receipt Postcard.* This is stamped by the PTO and
returned to you to let you know when your application
was filed and its serial number.
• Patent Application Transmittal Letter.* This tells the PTO
what parts you’re sending for your patent application.
• Fee Transmittal.* This makes it easy for the PTO to
compute and verify your filing fee.
• Credit Card Payment Form, Check, or Money Order.* This
pays your fees to the PTO.
• Drawings. These are required if the invention can be
illustrated with a drawing.
• Specification, Including Claims, and Abstract. These parts
are discussed in detail in Chapters 8 and 9.
• Patent Application Declaration. This states who the
inventors are, that they’ve read the application, that they
will disclose all material information, and that they
understand that they can be charged with perjury if they
lie on this form.
ii. Additional and Optional Parts
• Request for Claim Drafting by Examiner Under MPEP
707.07(j). This asks the examiner to draft claims for you if
your application contains allowable subject matter.
• Nonpublication Request (NPR). This instructs the PTO
not to publish your application (all applications are
normally published 18 months after filing unless they’ve
issued before then) so as to save you the publication fee
and preserve your trade secret rights. If you foreign file
the application, you must file a revocation of the NPR
within 45 days of the date you foreign-file. If you’re filing
by EFS-Web, the NPR is included on the Application Data
Sheet (ADS).
• Assignment and Transmittal. This transfers ownership of
your application to another individual or company.
• Information Disclosure Statement, PTO Forms PTO/SB/08
(A and B), and Copies of Any Non-U.S. Patent References.
This cites prior art of which you are aware.
• Application Data Sheet, PTO Form PTO/SB/14. This
provides data about the application and the inventors. If
you file via EFS-Web the PTO can extract your data from
this form electronically, thereby obviating errors.
This book provides copies of actual PTO forms, most of
which are now available in editable PDF format and can be
completed and printed on your computer. (The PTO prefers
that inventors use PTO forms.)
CAUTION
Although most PTO forms provided in PDF format
can be completed and printed on your computer, the free
Adobe Acrobat Reader program which you need to display
and complete these forms currently does not permit saving
any completed PDF forms. Therefore, you should always print
out any PDF forms you have prepared, since the information
you enter on the forms will be lost once you turn off your
computer. Alternatively you can save a computer file of a
completed PDF form by “printing” it to a new PDF using the
free CutePDF program and printing out the new PDF.