Several provisional patent applications have been filed. None of them include any figures, and no figure is necessary for the inventions.
USPTO mailed back one letter for each application. One letter doesn't mention any omitted item. The other letters mention that "the following item(s) appear to have been omitted from the application: Figure(s) 1 described in the specification."
Since no figure is necessary for any of the applications, would it be safe to just do nothing about these letters? Are figures required for provisional applications? Does USPTO send such letters for all applications without any figure? Thank you for your time.
I haven't filed a Provisional on-line in so long I don't recall exactly, but it sounds like an automated letter indicating in the electronic submissions, no "figures" were submitted. Regardless, it does not matter because a provisional is not prosecuted (examined) by anyone. A provisional is a place marker; evidence of the invention; how perfected it was at the date you submitted the provisional. Once filed you have 1 year to file a utility patent based on the provisional or what was in the provisional becomes public domain (not that anyone ever sees the provisional except you and who you share it with.)
Be very careful with Provisional's as a poorly written provisional can result in the invention becoming public domain. We draft our Provisionals with as much care and effort as full blown utility applications, with just as much detail, claims, figures, etc.
Peace be with you, and may love guide you.
Generally, 35 U.S.C. 113 applies to provisional patent applications and non provisional patent applications, as follows:
"The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim."
You should discuss with an intellectual property attorney in a private consultation.
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You need to understand that you need to have a properly drafted provisional application so that it can be converted to a non-provisional application without the addition of new matter -- otherwise you will have to add additional material such that the filing date of the new material will be when it is actual filed. So proceed cautiously.
It is still the fact that drawings are required if necessary to understand the subject matter, 35 U.S.C. 113. Generally speaking, the patent office regards drawings as "necessary to understand the subject matter" for MOST inventions. If a drawing was necessary to understand the subject matter, and it was omitted from the provisional patent application, attempting to include the drawing in a later filed non-provisional would be an attempt to add prohibited "new matter" to the patent application. Earlier answers are quite on-point, even though there are fewer formalities to the contents of a provisional patent application, all the inventive matter of the later filed non-provisional must be there.
It's difficult to answer without seeing the documents. Such a notification could be due to a reference to a figure in the specification but no upload of any drawing sheets. Provisional applications should be as complete as possible to provide the best protection.
Generally, if an application for patent (other than a design application) is filed without all of the page(s) of the specification, but contains something that can be construed as a specification, with or without claims, an Office of Patent Application Processing (OPAP) notice (e.g., a "Notice of Omitted Items") will be sent indicating that the application papers so deposited have been accorded a filing date, but are lacking some page(s) of the specification.
The mailing of an OPAP notice regarding missing drawing figure(s) in a provisional application will permit the applicant to either: (1) promptly establish prior receipt of the drawing(s) at issue by filing a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), along with evidence of such deposit; or (2) accept the application as deposited by failing to file a petition within a two-month non-extendable time period.
For provisional applications in which applicant is willing to accept the application, as filed, without all of the drawing figure(s)—by failing to timely file a petition in response to an OPAP notice regarding omitted items—if the provisional application is complete under 37 CFR 1.51(c), it will be held in USPTO's Image File Wrapper (IFW) system and automatically abandoned at the end of its 12-month pendency period.
Caution: In view of the USPTO's desire to minimize the processing of provisional applications, the USPTO will not grant petitions under 37 CFR 1.182 to accept omitted drawing(s) and accord an application filing date as of the date of such submission in provisional applications.
An inventor is free to prepare his or her own patent application (or provisional application). You should be aware that the preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO) to obtain the patent is an undertaking requiring the knowledge of patent law and rules and USPTO practice and procedures. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.
To maintain your ability to obtain patent protection, you should consult a registered patent attorney before you decide not to file a new provisional application(s) that include the "omitted" drawing figure(s).
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