For as long as I can remember, in order for a nonprovisional utility patent application to be awarded the all important filing date you had to file a specification that adequately described the invention, at least one patent claim and at least one drawing if a drawing would facilitate in the understanding of the invention. Spec, claim, drawing was beaten into generations of patent attorneys as the requirements for getting a filing date. That all changed on December 18, 2013.
As a result of the Patent Law Treaties Implementation Act of 2012 (PLTIA), nonprovisional utility patent applications (i.e., not design applications) filed on or after December 18, 2013 will receive as a filing date the date on which a specification, with or without claims or drawings, is received by the United States Patent and Trademark Office (USPTO). Many things are wrapped up in that straightforward statement; so let’s unpack them one-by-one.
First, what is written above is the way that the Manual for Patent Examining Procedures (MPEP) articulates the rule. As a general rule it is perfectly fine, particularly given that over 99% of all patent applications today are filed using the Electronic Filing System (EFS) made available by the USPTO. When using the electronic filing system to file an application the filing date will be the date the application is received without benefit of the time zone you are in when you file. In other words, time in Alexandria, Virginia, matters when using the USPTO electronic filing system.
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Having said this, it is still possible to mail in an application to the USPTO. If you mail in a patent application via U.S. postal service express mail and use Post Office to Addressee, the application will be deemed filed (and hence a filing date awarded to a complete application) as of the date it is stamped in at the postal counter. If you send your patent application in via any other means (i.e., regular mail or carrier, such as FedEx or UPS) then it will be deemed filed upon receipt. Of course, if something happens and the USPTO never receives your application it was never filed. Thus, the best way to send in an application is either via electronic filing system or US postal service express mail using Post Office to Addressee (instead of Post Office to Post Office).
Second, if you are filing a design patent application you obviously must file drawings given that the design patent covers only the ornamental appearance of what is shown in the drawings. Thus, the filing date for a design application, other than a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification including at least one claim and any required drawings are received in the Office. The filing requirements for a CPA are minimal. In fact, the filing date of a CPA is the date on which a request for a CPA on a separate paper for a CPA is filed. This special type of continuation is only applicable to design patent applications because a CPA is deemed a request to abandon the previous application and have the new application pick up in place of the old application.
Third, despite the fact that you can get a filing date without the presence of at least one drawing, 35 U.S.C. 111(a)(2) continues to require that patent applications include a drawing as required by 35 U.S.C. 113. § 113 specifically requires a drawing where necessary for the understanding of the subject matter sought to be patented. Therefore, any drawings necessary for the understanding of the invention MUST be submitted with the application at the time of filing. This is because it will be practically impossible to submit drawings later without adding new matter, which is prohibited. Therefore, absolutely nothing can be gained by failure to submit a drawing when one will be required, and you should assume at least one drawing is always required.
Only if you are claiming a compound can you safely assume no drawing is required, and that is because the chemical formula will be sufficient without drawing depiction. The USPTO also generally recognizes that methods do not require drawings, but is it possible to depict something associated with a method claim in a drawing? In almost all cases the answer will be yes, so drawings should be filed. Indeed, drawings are worth their weight in gold (and more) because whatever one of skill in the art would understand from looking at the drawing is disclosed whether there is descriptive text associated with the drawing or not. Of course, you should have descriptive text, but drawings provide protection and in my opinion too few drawings are generally filed given their importance. For information on drawings and describing drawings please see:
- Patent Drawings: An economical way to expand a disclosure
- Working with Patent Drawings to Create a Complete Disclosure
- Patent and Invention Drawings: What you need
Finally, patent claims are not required at the time you file a nonprovisional patent application. It is much easier to add claims without adding new matter, so if you want to file a patent application without claims that is fine. You will not run afoul of the new matter prohibition as long as what you originally filed provides support for the patent claims you seek to add after the filing date. Adding patent claims after an application has been filed is something that is done all the time, and not at all worrisome if you have a solid specification. Having said that, it is still probably wise to include at least one patent claim, or a few patent claims, at the time of filing. By including at least one claim you know that at least that claim is supported by what you filed because an original patent claim (i.e., one that arrives at the time of filing) can support itself even if the specification fails to provide an adequate description to support that original claim. For more information on patent claim drafting please see:
- Patent Drafting for Beginners: A prelude to patent claim drafting
- Patent Strategy: Advanced patent claim drafting for inventors
- Patent Applications: Drafting method claims
- An Introduction to Patent Claims
- Understanding Patent Claims
- Patent Claim Drafting 101: The Basics
When you file your patent application the Office of Patent Application Processing (OPAP) reviews application papers to determine whether a new application is entitled to a filing date. 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 Items”) 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. If you get one of these notices you absolutely MUST respond.