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1706 Disclosure Documents [R-3] - 1700 Miscellaneous
1706 Disclosure Documents [R-3]
A service provided by the United States Patent and Trademark Office (USPTO) is the acceptance and preservation for two years of "Disclosure Documents" as evidence of the date of conception of an invention. However, inventors are strongly encouraged to file a provisional patent application instead of a Disclosure Document. A provisional application for patent is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application filed under 35 U.S.C. 111(a). It also allows the term "Patent Pending" to be applied to products for which a patent application has been filed. A provisional application has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Unlike a Disclosure Document, the benefit of the filing date of the provisional application may be relied upon pursuant to 35 U.S.C. 119(e) in a corresponding non-provisional application or for foreign priority purposes when filing a patent application on the invention in other countries. See MPEP § 201.04(b) and § 601.01(b).
I. THE PROGRAM
A paper disclosing an invention (called a Disclosure Document) and signed by the inventor or inventors may be forwarded to the USPTO by the inventor (or by any one of the inventors when there are joint inventors), by the owner of the invention, or by the attorney or agent of the inventor(s) or owner. The Disclosure Document will be retained for two years, and then be destroyed unless it is referred to in a separate letter in a related patent application filed within those two years.
THE DISCLOSURE DOCUMENT IS NOT A PATENT APPLICATION, AND THE DATE OF ITS RECEIPT IN THE USPTO WILL NOT BECOME THE EFFECTIVE FILING DATE OF ANY PATENT APPLICATION SUBSEQUENTLY FILED. THESE DOCUMENTS WILL BE KEPT IN CONFIDENCE BY THE USPTO.
This program does not diminish the value of the conventional, witnessed, permanently bound, and page-numbered laboratory notebook or notarized records as evidence of conception of an invention.
II. CONTENT OF DISCLOSURE
The benefits afforded by the Disclosure Document will depend directly upon the adequacy of the disclosure. It is strongly recommended that the document contain a clear and complete explanation of the manner and process of making and using the invention in sufficient detail to enable a person having ordinary knowledge in the field of the invention to make and use the invention. When the nature of the invention permits, a drawing or sketch should be included. The use or utility of the invention should be described, especially in chemical inventions. Where the invention is directed to a design, the appearance presented by the object should be described.
III. PREPARATION OF THE DOCUMENT
A standard format for the Disclosure Document is required to facilitate the USPTO's electronic data capture and storage. The Disclosure Document (including drawings or sketches) must be on white letter-size (8 1/2 by 11-inch) or A4 (21.0 by 29.7 cm) paper, written on one side only, with each page numbered. Text and drawings must be sufficiently dark to permit reproduction with commonly used office copying machines. Oversized papers, even if foldable to the above dimensions, will not be accepted. Attachments such as videotapes and working models will not be accepted and will be returned.
IV. OTHER ENCLOSURES
The Disclosure Document must be accompanied by a separate cover letter signed by the inventor stating that he or she is the inventor and requesting that the material be received under the Disclosure Document Program. The inventor's request may take the following form:
The undersigned, being the inventor of the disclosed invention, requests that the enclosed papers be accepted under the Disclosure Document Program, and that they be preserved for a period of two years.
A Disclosure Document Deposit Request form (PTO/SB/95) can also be used as a cover letter. This form is available at the USPTO's Internet site or by calling the USPTO **>Contact Center< (see MPEP § 1730).
A notice with an identifying number and date of receipt in the USPTO will be mailed to the customer, indicating that the Disclosure Document may be relied upon only as evidence of conception and that a patent application should be diligently filed if patent protection is desired. The USPTO prefers that applicants send two copies of the cover letter or Disclosure Document Deposit Request form and one copy of the Disclosure Document, along with a self-addressed stamped envelope. The second copy of the cover letter or form will be returned with the notice. It is not necessary to submit more than one copy of the document in order for it to be accepted under the Disclosure Document Program.
V. DISPOSITION
The Disclosure Document will be preserved by the USPTO for two years after its receipt. It will then be destroyed unless it is referred to in a separate letter in a related patent application filed within the two-year period. The separate letter filed in the related patent application must identify not only the patent application, but also the Disclosure Document by its title, number, and date of receipt in the USPTO. Acknowledgment of such letters will be made in the next official communication or in a separate letter from the USPTO.
VI. ACKNOWLEDGMENT
When a paper referring to a Disclosure Document is filed in a patent application within 2 years after the filing of a Disclosure Document, the examining Technology Center (TC) technical support staff member will prepare either (1) a memorandum indicating that a reference to Disclosure Document No. -- has been made in Patent Application No. --, or (2) a copy of the paper filed in the application referring to the Disclosure Document. The memorandum or copy is forwarded to the Customer Contact Team of the Office of Initial Patent Examination (OIPE).
Upon receipt, the Customer Service Branch of the OIPE prepares a retention label (PTO-150) and attaches it to the Disclosure Document, and indicates such on the forwarded memo or copy, and returns the memo or copy to the TC. The returned memo or copy is stapled to the inside left flap of the file wrapper if the application is maintained in a paper file, or added to the Image File Wrapper (IFW) if the application is an IFW application, so that the examiner's attention is directed to it when the next Office action is prepared. If prosecution before the examiner has been concluded, a separate letter indicating that the Disclosure Document will be retained should be sent to the applicant by the examining TC technical support staff member.
After the acknowledging letter is mailed, the paper number of the acknowledgment is noted in the application file. The returned memo or copy is retained with the original paper referring to the Disclosure Document in the file wrapper.
VII. FEE
A fee of $10, as set forth in 37 CFR 1.21(c), in the form of a check or money order made payable to "Commissioner for Patents" must accompany the Disclosure Document when it is submitted to the USPTO. Documents not accompanied by the full fee will be returned. Mail the Disclosure Document along with the fee to:
Mail Stop DD
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Applicants can request a copy of their Disclosure Document as filed in the USPTO if they are the original submitters of the document. The request must be made in writing and accompanied by a fee for $25.
Fees are subject to change annually. To confirm current fees, contact the **>USPTO Contact Center< or visit the USPTO's Internet site (see MPEP § 1730).
VIII. NOTICE TO INVENTORS
The two-year retention period is not a "grace period" during which the inventor can wait to file his or her patent application without possible loss of benefits. As explained above, it may be advisable to file a provisional application instead of a Disclosure Document. It must be recognized that, in order to establish priority of invention, an affidavit or testimony referring to a Disclosure Document must usually also establish diligence in completing the invention or in filing the patent application after the filing of the Disclosure Document.
Inventors are also reminded that any public use or sale in the United States or publication of the invention anywhere in the world more than one year prior to the filing of a patent application on that invention will prohibit the granting of a U.S. patent on it. See 35 U.S.C. 102(b). Foreign patent laws in this regard may be much more restrictive than U.S. laws.
The USPTO advises inventors who are not familiar with the requirements of U.S. patent law and procedures to consult an attorney or agent registered to practice before the USPTO. A list of Attorneys and Agents Registered to Practice Before the U.S. Patent and Trademark Office can be found at the USPTO's Internet site. See MPEP § 1730 for additional sources of this list.
As a service to USPTO's customers, the three Partnership Patent and Trademark Depository Libraries (PTDLs) listed below have been authorized to act as USPTO's "agent" in accepting documents under the Disclosure Document Program. This service provides customers with a completed transaction on-site, eliminating the wait for USPTO notification of acceptance. The documents are stamped with an identifying number and date at the time of receipt by the PTDL. Original documents are sent to the USPTO for processing and retention.
Texas Intellectual Property Partnership (TIP2)
Texas A&M University Libraries
Sterling C. Evans Library Annex
College Station, TX 77843-5000
979-485-1819
Fax: 979-458-1802
Great Lakes Patent and Trademark Center at the Detroit Public Library (GLPTC)
5201 Woodward Avenue (second level)
Detroit, MI 48202
313-833-3379 or 800-547-0619
Fax: 313-833-6481
**>Sunnyvale Center for Innovation, Invention and Ideas
Sunnyvale Public Library
665 W. Olive Avenue
Sunnyvale, CA 94086
408-730-7300
Fax: 408-735-8762<
To locate a Patent and Trademark Depository Library (PTDL) near you, consult the complete listing of PTDLs found in every issue of the Official Gazette, call the USPTO **>Contact Center<, or access the USPTO's Internet site (see MPEP § 1730). The nationwide network of PTDLs has collections of patents and patent-related reference materials available to the public, including automated access to USPTO data bases. Contact the PTDL prior to your visit to learn about its collections, services, and hours.
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