A must-have checklist for filing a U.S. utility patent application—every step you need to know

This article provides you with a detailed checklist for filing a U.S. utility patent application. The checklist provides detailed instructions on the documents that applicants need to prepare, the details of the fees, and how to proceed. This guide is not only an important starting point for applicants to enter the world of patents, but also provides a professional reference for intellectual property management.

A patent application is a set of documents that complies with U.S. laws, rules, and guidelines outlined in the Manual of Patent Examining Procedure (MPEP). Certain application information must be provided using USPTO forms or equivalent. While using USPTO forms is not mandatory, it is highly recommended. Factors that determine which documents are necessary to complete the application include the type of patent applicant, the type of protection sought, and the invention itself. This list, while not comprehensive, contains the most commonly required elements to help you put together your application.

1. Utility Patent Application Transmittal Form
   • This form lists the elements of a patent application and must be completed and signed by the applicant and submitted with the application. Note: If the applicants consist of multiple parties (for example, there are three inventors as applicants and they are self-represented, i.e., not represented by a patent attorney or patent agent), all applicants must sign unless all applicants authorize one of them to sign all communications on behalf of all.
2. Fee Transmittal Form
   • This form is used to identify the fees submitted with a patent application. For non-provisional patent applications, all applicants (including small entity and micro entity applicants) must pay a basic filing fee, search fee, and examination fee when filing an application. If the basic filing fee, search fee, and examination fee are not paid in time when the application is filed, a late payment surcharge may be required later. If certain limits are exceeded, a claims surcharge and a substantive fee may also be required.
   • In addition, if the nonprovisional application is not filed through the USPTO's electronic filing system (EFS-Web) on its website at www.uspto.gov, a non-electronic filing fee is payable.
   • If filing as a micro entity, a separate form is required.
3. Application Data Sheet (ADS)
   • A form that lists the information including the inventor information, applicant information, correspondence address, application information, domestic priority, foreign priority and assignee information. This form can also be used to request non-disclosure. The form must be signed by the applicant. For example, this form is mandatory when the inventor assigns his application rights to a company (assignee) and the assignee files an application as the applicant. This form is also required when the applicant wishes to claim the priority of a previously filed provisional or non-provisional application, or to claim the priority of a previously filed foreign or international application.
4. Small and Micro Entity Status
   • Applicants with small entity or micro entity status are entitled to discounts on certain fees. If you qualify for small entity patent fees, you do not need a special form to claim the reduced fees (you can check a specific box on the Fee Transmittal Form or Application Data Form), but you should only submit small entity fees after ensuring that you qualify for small entity status.
   • A micro entity is an individual, small business, or nonprofit organization that meets the small entity and micro entity requirements and completes Form PTO/SB/15A or Form 15B. An individual completing Form PTO/SB/15A to obtain micro entity status must:
     • (1) Qualifying as a small entity
     • (2) Not listed as an inventor in more than four previously filed U.S. non-provisional patent applications
     • (3) His/her gross income (as defined in section 61(a) of the Internal Revenue Code of 1986) did not exceed three times the median family income during the calendar year preceding the date on which the applicable fee was paid
   • In addition, the applicant may not assign, license, or grant the invention rights to another person who does not qualify as a micro entity. The individual completing PTO/SB/15B to obtain micro entity status must:
     • (1) Qualify as a small entity;
     • (2) The applicant’s principal source of income is from an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)).
     • Furthermore, the applicant may not assign, license or grant the invention rights to another person who does not qualify as a micro entity.
5. manual
   • A specification is a set of documents that describes the invention and the method of making or using it. It must be written in complete, clear, concise, and accurate terms in a manner that can be understood by anyone familiar with the same technical or scientific field. The written description should not contain information that is not relevant to the applicant's invention. The specification must include:
     • Invention Name
       • The title of the invention should describe the technical content of the invention. Do not use a name used for branding, but a name that technically describes the invention. The preferred title of the invention is 2 to 7 words and should not exceed 500 characters. The title should appear at the top of the first page or in the application form (ADS), if used. The title of the invention may be accompanied by an introduction stating the name and address of the applicant (unless already included in the ADS). The Patent Office will not include the words "new" or "improved" as part of the title of an invention.
     • CROSS-REFERENCE TO RELATED APPLICATIONS
       • If you claim priority from one or more previously filed provisional or nonprovisional applications, you may identify those applications after the title of the invention. In order for the USPTO to recognize a priority claim, it must be made in the request form (ADS).
6. STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT
   • An individual may retain U.S. domestic patent rights if the invention was developed with federal funds; however, the applicant must include a statement of this fact at the beginning of the application.
7. Sequence Listing (if applicable)
   • Some patent applications may need to include a large amount of information on a CD-ROM. The only materials permitted on a CD-ROM include computer-readable sequence listings, gene sequences, and information tables exceeding 50 pages. The specification must include a reference to the CD-ROM and list the total number of CD-ROMs (including copies) and the files on each CD-ROM. The text must be in ASCII format. Sequence listings may be submitted via EFS-Web without the use of a CD-ROM.
8. Background of the Invention
   • The background of the invention is a way of providing background information for the invention. It may include a statement about the technology or subject matter related to the invention and may paraphrase relevant patent classification definitions. It should describe any information related to the invention known to the applicant (including references to specific documents), as well as the specific problem addressed in the prior art or state of the art.
9. Brief Summary of the Invention
   • This section should summarize the essence or general concept of the claimed invention. The summary may point out the advantages of the invention and how it solves the existing problems described in the Background of the Invention. It may also include a statement of the purpose of the invention.
10. Brief description of the drawings
    • If there are drawings in the specification, the figure numbers of all drawings (for example, Figure 1, Figure 2) and their corresponding descriptions must be listed to explain the content of each figure.
11. DETAILED DESCRIPTION OF THE INVENTION
    • This part of the specification should explain the invention and its making and use in full, clear, concise and accurate terms. It should be distinguished from other inventions. In case of improvement, the description should be limited to the specific improvement and its necessary parts to fully understand the invention.
    • The description must be clear and complete enough to enable any person engaged in the art to make and use the invention without extensive experimentation.
12. Claims
    • The claims define the scope of legal protection for a patent. Whether a patent is granted is largely determined by the scope of the claims. The claims must clearly and unambiguously identify the subject matter that the inventor claims to be the invention.
    • A non-provisional invention patent application must contain at least one claim. The claims section must start on a separate paper or electronic page, and all claims should be numbered consecutively with Arabic numerals. Each claim should be written as a sentence.
    • Certain claims may be dependent on or limited by other claims in the same application. All dependent claims should be grouped together with the related claims.
    • An application may contain three independent claims and up to twenty total claims without paying additional claim fees.
13. Instruction Manual Summary
    • The abstract enables the USPTO and the public to quickly determine the nature of the invention's technical disclosure. The abstract explains what is novel about the invention. It should be in narrative form, limited to one paragraph. It must begin on a separate page and may not exceed 150 words.
14. Instruction Manual
    • A patent application must contain drawings when they are necessary to understand the subject matter protected by the patent. Therefore, most patent applications contain drawings. The drawings must show every feature of the invention specified in the claims. Due to the prohibition on the introduction of new matter, drawings necessary for understanding the invention may not be introduced after the filing date of the application.
15. Inventor's oath or declaration
    • Each inventor must make an oath or declaration that the application was made by him or her or with his or her authority, that he or she believes that he or she is the original or co-original inventor of the invention claimed in the application, and that he or she acknowledges that any willful false statement is punishable under 18 USC 1001 by up to five years' imprisonment or a fine, or both. If the inventor takes an oath, the oath must be taken before a notary public or other official authorized to administer an oath. A declaration may be used in lieu of an oath. A declaration does not need to be notarized or witnessed and is therefore preferable for most applicants.
    • The oath or declaration must include the legal name of the inventor and be signed by the inventor. If an Application Data Sheet (ADS) is not submitted, the oath or declaration must also include the inventor's mailing address and residence. The Utility Application Declaration Form for the ADS is PTO/AIA/01.
    • The oath and declaration must be in a language that the inventor understands. If it is not English, it must be accompanied by an English translation and a statement certifying its accuracy, unless a USPTO foreign language translation form is used. The USPTO provides applicants with certain foreign language declaration forms and English translations.
    • If the inventor refuses to sign the oath or declaration, cannot be found or contacted after reasonable efforts, is deceased, or is legally incompetent, a substitute statement must be submitted. The substitute statement must be signed by the applicant.
    • A natural person who is the applicant (i.e., the applicant is the inventor) may designate one or more co-inventors as persons with a power of attorney in the application file using Form PTO/AIA/81. If this form is used, all co-inventors (including the named inventor) must sign the form. This power of attorney allows the named inventor to sign all communications on behalf of all inventors. If power of attorney is not granted to one or more co-inventors, all co-inventors who are patent applicants must sign patent application communications submitted to the USPTO.