How to Submit Your Patent Application. Episode 31

(This episode first aired in 2018. The submission requirements have changed significantly since the airing of this episode)

Submitting Your Patent Application

We’ve finally reached the episode where you learn how to actually submit your patent application to the patent office. In this podcast series, I’ve discussed:

• What intellectual property is

• Why you might want to file a patent application

• All the parts of a patent application

• The forms you’re likely to fill out before submitting your application

Now, it's time to submit your application.

I will only discuss electronic submission because, although you can technically mail your application to the patent office, it costs more money and is more prone to mishaps. Filing electronically is the recommended approach.

Filing Options: Registered vs. Unregistered E-Filing

There are two ways to file electronically:

1. Registered E-Filer

2. Unregistered E-Filer

Being a registered e-filer has advantages, but setting yourself up as one requires additional steps. If you’re filing just one application, it may not be worth the hassle. However, if you register, you get a customer number and a digital certificate, allowing you to securely access application documents during and after filing.

Advantages of Registered E-Filing:

• You can save an in-progress submission and return to it later on the USPTO website.

• You can submit additional documents to your patent filing later, such as responses to office actions.

• You won’t need to mail or fax responses, which can be inconvenient and subject to additional regulations.

It takes a few weeks to get registered. I recommend registering and waiting for your customer number and digital certificate before filing. However, if you can’t wait, you can file your application as an unregistered filer and later link it to your registered customer number.

How to Register as an E-Filer

To register, search for "Registered E-Filer USPTO" online. One of the first links should direct you to the registration process.

Steps to Register:

1. Obtain a customer number.

2. Apply for a digital certificate.

3. Get a Certificate Action Form notarized (this form includes your name, address, phone number, and a request for a new PKI certificate).

4. Submit the form and receive authorization codes and reference numbers.

If you are not registered, you cannot add documents to your patent filing later. This isn’t a big deal if you’re filing a provisional patent application, as those are usually a one-time submission. However, for a non-provisional application, you will likely need to submit additional documents (e.g., responses to rejections), so registration is highly recommended.

If you’re not registered, any future submissions must be done via regular mail, fax, or in person at the Patent Office in Arlington, Virginia. This process can be cumbersome, with specific mailing and faxing requirements.

Submitting Your Application as a Registered E-Filer

1. Go to the USPTO website: Search for "USPTO file online" and click the link for EFS-Web.

2. Choose EFS-Web Registered (if you are registered) or EFS-Web Unregistered.

3. Authenticate using Java WebStart (select "new method"). If Java causes issues, try another browser or computer.

4. Download and open the USPTO authentication file.

5. Select your digital certificate (obtained during registration).

6. Enter your password and check the box confirming your authorization.

7. Click "Authenticate".

8. Proceed through the application submission process:

   • Select "New Application/Proceeding."

   • Choose Utility, Design, or Provisional (most likely "Utility" or "Provisional").

   • Click "Continue."

Uploading Application Documents

• Application Data Sheet (ADS): Choose between web-based ADS or PDF upload (I recommend PDF).

• Title of Invention

• Inventor’s Name (First, Middle, Last)

• Correspondence Address: If you have a customer number, select it to auto-fill your address.

• Application Documents: Upload PDF files for:

  • Specification (Text, Claims, and Abstract)

  • Drawings (Black & White Only)

  • Oath or Declaration

  • Application Data Sheet (if not entered online)

  • Information Disclosure Statement (IDS)

  • Foreign References and Translations (if applicable)

  • Non-Patent Literature (e.g., journal articles, website printouts)

Each document should be categorized correctly. Upload and validate each document before proceeding.

Fee Payment

After uploading all documents:

• Select Regular, Small Entity, or Micro Entity status.

• Confirm you did not originally file the application on paper.

• Enter total page count (fees apply if over 100 pages).

• Enter claim details (fees apply if over 20 total claims or 3 independent claims).

• Pay the required fees immediately to avoid late penalties.

• Save the e-filing receipt, which contains:

  • Your patent application filing number

  • A confirmation code for future filings related to this application

Differences for Unregistered E-Filers

• Must enter first and last name, email, and correspondence address manually.

• Cannot save in-progress submissions.

• Must mail, fax, or hand-deliver any additional documents later.

Special Cases

• Provisional Patent Applications: Use a provisional cover sheet instead of an ADS.

• Design Applications: Similar process but usually fewer pages.

• Micro-Entity Filers: Submit appropriate entity status forms.

• Power of Attorney: If filing on behalf of multiple inventors, upload a Power of Attorney document.

• Track 1 or Accelerated Examination: Select the appropriate option and pay additional fees.

Final Steps

1. Click "Submit" – Your application is officially filed!

2. Pay fees immediately to avoid penalties.

3. Save your e-filing receipt.

If you need help drafting your patent application, you can contact me through my website at patentingforinventors.com or call Diament Patent Law at 424-281-0162.

I’m Adam Diament, and until next time, keep on inventing!