COMMON FILING MISTAKES

COMMON FILING MISTAKES

• • Specification Format

• The specification, including the abstract and claims, must be written in English and have lines that are 1.5 or double-spaced in a single column of text
• Written on only one side in portrait orientation
• 8.5 by 11 inches with all margins of at least ¾ inches except for a left side margin of at least 1 inch
• Clearly typewritten in non-script font (e.g., Arial, Times New Roman, or Courier, preferably with a font size of 12), without shading, on white paper
• The application pages must be numbered consecutively (centrally located above or below the text) starting with page one
• Drawing figures should not be contained within the specification

 

SPECIFICATIONS SECTIONS

• Title of the Invention (short and specific)
• Most common applicable sections
• Claims (on a separate sheet)
• Abstract (less than 150 words, one paragraph, on separate sheet)

How to file a substitute specification

3 Required Parts of the Submissions

1. Marked-up copy with markings showing all the changes relative to the immediate prior version of the specification of record
2. Clean copy (without markings)
3. Signed statement that the substitute specification contains no new matter

 

The ENTIRE specification is required for the marked-up and clean copies, not just the amended portion.

Marked up vs. clean copy

Marked up copy:

• A version that shows ALL changes to the most recent specification of record with markings.
• Additions of text are underlined.
• Deletions of text are shown by strike-through, except double brackets

Clean copy:

• A version that includes ALL changes to the most recent specification of record without markings.

Drawings: Required if necessary to understand the subject matter to be patented

• A drawing necessary to understand the invention cannot be introduced after the filing date.

Common mistakes found during OPAP drawing review:

1. 1. Non-Compliance with USPTO Standards:

• 1. • Mistake: Incorrect paper size, margins, or line quality.
     • Solution: Follow USPTO guidelines for formatting and line thickness.
  2. Unclear or Inconsistent Labeling:
     • Mistake: Missing or mismatched reference numerals.
     • Solution: Label all elements clearly and consistently, matching the description.
  3. Incomplete or Incorrect Views:
     • Mistake: Missing necessary views (e.g., top, side, cross-sections).
     • Solution: Provide all relevant views that fully depict the invention.
  4. Excessive Detail:
     • Mistake: Overly detailed or complex drawings.
     • Solution: Focus on clarity and simplicity, omitting non-essential elements.
  5. Incorrect Line Quality:
     • Mistake: Lines too faint, too thick, or inconsistent.
     • Solution: Use dark, uniform lines (usually 0.3mm thickness).
  6. Incorrect Numbering of Figures:
     • Mistake: Figures not numbered sequentially.
     • Solution: Number figures sequentially and reference them correctly in the text.
  7. Improper Scaling:
     • Mistake: Inconsistent or incorrect scaling across views.
     • Solution: Ensure accurate, consistent scaling with dimensions where needed.
  8. Non-Standard Symbols or Shading:
     • Mistake: Using unclear or non-standard symbols.
     • Solution: Use USPTO-approved symbols and standard shading techniques.
  9. Photographs Instead of Line Drawings:
     • Mistake: Submitting photographs when line drawings are required.
     • Solution: Use line drawings for utility patents (photographs are only allowed in design patents, if applicable).
  10. Missing Sectional Views:

• Mistake: Missing or improperly drawn sectional views.
• Solution: Include clear, labeled sectional views when necessary.

1. 11. Improper Title Block Information:

• Mistake: Missing or incomplete title block.
• Solution: Include all required information in the title block, such as application number and inventor’s name.