Patent It Yourself - PDF Archive

282 | Patent it YOURSELF
number assigned to your application and mail it back to you
as soon as they open your letter (which can take two weeks).
If you’re filing from abroad, be sure that your return
postcard has sufficient U.S. postage. You can confirm the
postcard postage to any nation at the U.S. Postal Service
website (www.usps.gov) and you can usually buy U.S.
stamps abroad at a philatelic store.
6. Maintain an Orderly File
I often consult with “pro se” inventors (that is, those who
have prepared and filed their own patent applications).
Usually they bring me their “application” in the form of a
sloppy, loose stack of mixed-up—and occasionally missing—
papers. You’ll avoid this problem, and the serious trouble it
can get you into, if you’ll heed Inventor’s Commandment 19,
shown at the beginning of this chapter, which admonishes
you to mount all official papers (those sent to and received
from the PTO) in a separate folder. It’s good practice to write
the date received on every paper you receive connected with
your invention and also date every outgoing paper.
You should have a two-part folder or jacket for (a) your
application, and (b) correspondence to and from the PTO.
Keep your prior-art references in a large envelope loose
inside the folder. To avoid confusion, I recommend that you
keep other nonofficial papers concerning your invention in
a separate folder.
7. Assembly and Mailing of Your
Application—Final Checklist
Congratulations. You’re now ready to mail your patent
application to the PTO, unless you want to include
an Information Disclosure Statement (Section G), an
Assignment (Section H), and/or a Petition to Make Special
(Section I). If you do want to include any of these with
your application (optional), consult the indicated sections,
complete your paperwork, and then come back to this point.
Assemble in the following order—and carefully check
—the following items, which are the third part of the
checklist I started in Chapter 8; please do this carefully
and methodically, as “haste makes waste,” especially when
applying for a patent.
I suggest that you file a good photocopy of your signed
application and keep the original of your application. In
this way you can make copies later if the application is lost
in the mail, or if you need to send them to manufacturers
when you market your invention. (See Chapter 11.)
Staple the pages of the specification, claims, abstract, and
declarations together. Attach the drawings with a paper clip
or other temporary fastener. Only one copy need be filed.
If you mail the application by Express Mail, the papers
should be transmitted in an Express Mail envelope. If the
application doesn’t have more than about eight pages, you
should include one or two sheets of cardboard or internal
envelopes to protect the drawing from bending.
You may send the application to the PTO by first-class
mail, but if it’s lost in the mail, you will lose your filing date
I strongly recommend that you use Express Mail (see next
section).
8. Using Express Mail to Get an
Instant Filing Date
I strongly recommend you send your application to the
PTO by Express Mail (EM). This will provide strong
protection against loss of your application, secure full legal
rights in case it is lost, give you an “instant” filing date (the
date you actually mail your application), and will enable
you to make absolutely sure your application is on file
before the one-year period expires if a PPA was filed or the
invention was put on sale, sold, or published. You must use
“Express Mail Post Office to Addressee” service and you
must indicate that you’re using this service by completing
the EM section at the top of your transmittal letter (Form
10-2, Fig. 10J). Type the EM number in the box at the top
right, fourth line of Form 10-2.
The PTO’s Rule 10 (37 CFR 1.10) states, in effect, that
mailing any paper to the PTO by EM, with the EM number
on the transmittal letter, is the same as physically delivering
the paper directly to the PTO. Thus you can consider
and call your application “patent pending” as soon as the
postal clerk hands you the EM receipt, and your filing date
will be the date on this receipt, provided all papers of the
application are present and are properly completed. Since
postal clerks often don’t press hard enough when they date
the EM receipt, I recommend you ask the clerk to stamp the
receipt also with their rubber date stamp. If you’ve followed
the final checklist above, your application will now be
properly on file, i.e., patent pending.
CAUTION
You should NOT send your application by
registered mail, certified mail, or private courier (Federal
Express, etc.), and you should NOT use any “Certificate of
Mailing” (Chapter 13). This is because Rule 10 does not give
applicants any advantages if they use these methods of
transmission. If you use any of these, your filing date will be the
date the application is actually received at the PTO and you’ll
have no rights if your application is lost.