What Forms to File with the USPTO When Submitting a Patent Application

Filing a patent application involves submitting several forms and documents to the United States Patent and Trademark Office (USPTO). The exact forms depend on the type of application you are filing. This guide outlines the forms and best practices for each type of patent application, including provisional, nonprovisional, continuation, divisional, continuation-in-part, and design applications. It also addresses the assignment process for transferring ownership.

Before You File: Essential Preparation for Electronic Filing

To make your patent filing process smoother and more efficient, follow these key steps:

1. Sign Up for a USPTO Account: A USPTO account gives you access to the Patent Center, the preferred platform for submitting and tracking patent applications. The Patent Center streamlines the filing process and allows you to manage applications electronically.  Don’t paper file.  It just makes the process more difficult for everyone including your future patent attorney should you choose to hire one in the future.
2. Pay Filing Fees with a Credit Card: Avoid the delays and risks associated with sending checks. You have to constantly check whether the patent office received and deposited the money.  Paying fees by credit card is faster, more secure, and ensures prompt processing.  When you file your documents, the Patent Center will give you the option to pay by credit card.  I suggest that you use the same credit card for all patent related transactions.  This way, you have all of the fees listed in the history of one credit card.
3. Use PDF-Fillable Forms: Many USPTO forms are PDF-fillable and can be downloaded directly from the USPTO website. Using these forms reduces errors and ensures all required information is accurately included. Links to specific forms are provided below in the relevant sections.  Here is a list of all of the PDF-fillable form.  When you save it, you won’t be able to use the Windows Explorer preview pane.  I suggest that you print and save to PDF so that you can use the preview pane.
4. Filenames: Create a file naming system.  You can use the one below:

Date of Filing.Short Title of Invention – Type of Document

1. 1. Date of Filing – The date should be formatted as the four digit year, two digit month and two digit day.  For example, July 4, 2030 is 20300704.  When you use the preview pane, all of your documents will be listed in chronological order.
   2. Short Title of Invention – Hopefully, you’ll have more than one invention and file multiple patent applications.  If so, you need to distinguish which files are for which invention.  Otherwise, you’ll be confused in the long run.  Plan with the end in mind.
   3. Type of Document
      1. DEC for declaration of the inventor(s)
      2. Specification for the written document explaining the invention
      3. DWG for the drawings
      4. ADS for Application Data Sheet

Slash Signatures for USPTO Submissions: Embrace the Convenience

A slash signature is an electronic signature format where your name is enclosed in forward slashes, such as /John Doe/. This signature is specifically authorized by the USPTO for electronically filed documents, making it an ideal choice for inventors, applicants, and attorneys submitting forms through systems like the Patent Center.

While slash signatures are easy to use, you need to use them responsibly: never sign on behalf of another person. If you do sign for someone else, your patent will be invalid. Read What is a Slash Signature?

Forms Required for Each Type of Application

Below are the forms required for filing various types of patent applications, with links embedded into the form numbers for easy access.

1. Provisional Patent Application (PPA)

A provisional application is a simpler way to secure an early filing date. You’ll need:

• Provisional Application Cover Sheet (Form SB/16):
  This identifies the application as a provisional application.
• Application Data Sheet (ADS) (Form AIA/14):
  While an ADS is optional, the ADS simplifies the transition to a nonprovisional patent application (NPA).
• Specification: Describe your invention in detail. Claims are optional, but including at least one claim is highly recommended.
• Drawings: Almost all applications require drawings. These don’t need to be professionally prepared but must clearly illustrate the invention.
• Claims: A claim is optional for a provisional application but highly recommended to have at least one.

Assignment for PPA

If the invention is to be assigned (e.g., to a company), prepare and execute the assignment documents before filing the application. While obtaining the assignment is not required, securing inventor signatures before you file the application is highly recommended to avoid complications, especially if disputes arise between inventors and the company later.  You are probably very excited to get the provisional application on file.  Be patient and obtain all of the necessary signatures first.  If you are having problems securing the needed signatures, call us at (949) 433-0900 for assistance.

2. Nonprovisional Patent Application (NPA)

Nonprovisional applications require a higher level of detail and documentation.  Here are the forms that need to be filed:

• Application Data Sheet (ADS) (Form AIA/14):
  Required for inventor details, title, and priority claims.  If you don’t submit one, you will receive a Notice to File Missing Parts.
• Specification: The specification must include at least one claim.
• Drawings: High-quality drawings that comply with USPTO standards are essential.
• Declaration (Form AIA/01):
  Confirms the inventors’ identity and application accuracy.
• Track One Request (Optional) (Form SB/437):
  For expedited examination.
• Internet Communication Authorization (Form SB/439): This allows email correspondence with the examiner and the USPTO.

Assignment for NPA

Prepare and record the assignment using the USPTO’s Electronic Patent Assignment System. Ensure all inventors sign the assignment before filing the NPA to avoid potential ownership issues.

3. Continuation and Divisional Applications

These are follow-up applications filed to pursue additional claim sets or distinct inventions:

• Same Forms as an NPA: ADS, Specification, Drawings, Declaration, Track One Request, and Internet Communication Authorization.
• Preliminary Amendment: Use this to update the claim of priority in the first paragraph of the specification. This ensures priority claims are clear and preserved.  You should have a new claim set. I recommend that you file it the day after to prevent a new matter rejection.
• Incorporation by Reference: Explicitly reference all prior applications so that any changes between the specifications are retained in the continuation or divisional application.

Assignment for Continuations and Divisionals

Assignments for these applications often rely on prior assignments. You can simply use the prior assignment and file it with the application.  However, if any inventors or ownership circumstances have changed, update and execute a new assignment before filing to maintain clear ownership records.

4. Continuation-in-Part (CIP) Applications

CIPs are similar to continuations but include new inventive subject matter:

• Same Forms as a Continuation Application.  Remember to claim priority to ALL prior applications.
• File the New Claims Immediately: Ensure all claims clearly tie to either the original filing date or the CIP’s filing date.

Assignment for CIP

CIPs by definition have new subject matter.  I recommend securing new assignments and recording them.

5. Design Patent Applications

These applications protect ornamental designs and require the following:

• Same Forms as an NPA except the drawings for a design patent and there is no Track One request.
• Focus on High-Quality Drawings: Drawings must define the design’s scope and are critical to the application.

Assignment for Design Applications

Prepare and execute the assignment before filing. Design patents often involve team contributions, so resolving ownership before filing can prevent future complications.

6. Assignments

Assignments are critical for transferring ownership of the invention to a company or other entity. Regardless of application type, you should:

1. Prepare the assignment document.
2. Ensure all inventors sign the assignment before filing.  This is highly recommended but not required.
3. Record the assignment using the USPTO’s Electronic Patent Assignment System (EPAS).
4. Update the ADS to reflect the assignee’s information.

Assignments are not filed with the patent application.  Assignments are recorded with the recordation office at the Patent Office.  Sometimes, the assignee needs to establish that they have a right to take action in the application.  In this case, submit Statement Under 37 CFR 3.73(c) (Form AIA/96). The key to this form is that you have record the assignment with the recordation office first.  They will mail you a reel and frame number which your assignment document is recorded.  Insert the reel and frame number on the form.

By following these guidelines, ensuring all forms are completed, and securing inventor signatures on assignments early, you can streamline the patent application process and avoid ownership disputes later.

What happens if you get it wrong?

The Patent Office will send you a Notice to File Missing Parts when they send you the Filing Receipt. You can fix it then.

If you need help filling out these forms or would like the assistance of an experienced patent attorney, call 949-433-0900 to schedule a consultation today. Let’s make the patent process smoother and ensure your invention gets the protection it deserves!