MPEP 601: Difference between revisions

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601 Content of Provisional and Nonprovisional Applications

35 U.S.C. 111. Application

(a) IN GENERAL.—

(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.

(2) CONTENTS.—Such application shall include—

(A) a specification as prescribed by section 112 of this title;

(B) a drawing as prescribed by section 113 of this title; and

(C) an oath by the applicant as prescribed by section 115 of this title.

(3) FEE AND OATH.—The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

(4) FAILURE TO SUBMIT.—Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—

(A) a specification as prescribed by the first paragraph of section 112 of this title; and

(B) a drawing as prescribed by section 113 of this title.

(2) CLAIM.—A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.

(3) FEE.—

(A) The application must be accompanied by the fee required by law.

(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.

(4) FILING DATE.—The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.

(6) OTHER BASIS FOR PROVISIONAL APPLICATION.— Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) of this title or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c) of this title.

(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.

37 CFR 1.51. General requisites of an application.

(a) Applications for patents must be made to the Director of the United States Patent and Trademark Office.

(b) A complete application filed under § 1.53(b) or § 1.53(d) comprises:

(1) A specification as prescribed by 35 U.S.C. 112, including a claim or claims, see §§ 1.71 to 1.77;

(2) An oath or declaration, see §§ 1.63 and 1.68;

(3) Drawings, when necessary, see §§ 1.81 to 1.85; and

(4) The prescribed filing fee, search fee, examination fee, and application size fee, see § 1.16.

(c) A complete provisional application filed under § 1.53(c) comprises:

(1) A cover sheet identifying:

(i) The application as a provisional application,

(ii) The name or names of the inventor or inventors, (see § 1.41(a)(2)),

(iii) The residence of each named inventor,

(iv) The title of the invention,

(v) The name and registration number of the attorney or agent (if applicable),

(vi) The docket number used by the person filing the application to identify the application (if applicable),

(vii) The correspondence address, and

(viii) The name of the U.S. Government agency and Government contract number (if the invention was made by an agency of the U.S. Government or under a contract with an agency of the U.S. Government);

(2) A specification as prescribed by the first paragraph of 35 U.S.C. 112, see § 1.71;

(3) Drawings, when necessary, see §§ 1.81 to 1.85; and

(4) The prescribed filing fee and application size fee, see § 1.16.

(d) Applicants are encouraged to file an information disclosure statement in nonprovisional applications. See § 1.97 and § 1.98. No information disclosure statement may be filed in a provisional application.

I.GUIDELINES FOR DRAFTING A NONPROVISIONAL PATENT APPLICATION UNDER 35 U.S.C. 111(a)

The following guidelines illustrate the preferred layout and content of patent applications. If an application data sheet (37 CFR 1.76) is used, data supplied in the application data sheet need not be provided elsewhere in the application except that the citizenship of each inventor must be provided in the oath or declaration under 37 CFR 1.63 even if this information is provided in the application data sheet. If the information in the application data sheet and the information submitted elsewhere, the application data sheet will control except for the naming of the inventors and the citizenship of the inventors.

A complete application filed under 35 U.S.C. 111(a) comprises a specification, including claims, as prescribed by 35 U.S.C. 112, drawings as prescribed by 35 U.S.C. 113, an oath or declaration as prescribed by 35 U.S.C. 115, and the prescribed filing fee, search fee, examination fee and application size fee.

Arrangement and Contents of the Specification

The following order of arrangement is preferable in framing the specification. Each of the lettered items should appear in upper case, without underlining or bold type, as section headings.

(A)Title of the invention. (See MPEP § 606).

(B)Cross-reference to related applications. (See MPEP § 201.11).

(C)Statement regarding federally sponsored research or development. (See MPEP § 310).

(D)The names of the parties to a joint research agreement (see 37 CFR 1.71(g)).

(E) Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on compact disc and an incorporation-by-reference of the material on the compact disc. For computer listings filed on or prior to March 1, 2001, reference to a “Microfiche appendix” (see former 37 CFR 1.96(c) for Microfiche appendix).

(F) Background of the invention. (See MPEP § 608.01(c)).

Field of the invention.
Description of related art including information disclosed under 37 CFR 1.97 and 1.98.

(G) Brief summary of the invention. (See MPEP § 608.01(d)).

(H) Brief description of the several views of the drawing. (See MPEP § 608.01(f)).

(I) Detailed description of the invention. (See MPEP § 608.01(g)).

(J) Claim(s) (commencing on a separate sheet). (See MPEP § 608.01(i)-(p)).

(K) Abstract of the Disclosure (commencing on a separate sheet). (See MPEP § 608.01(b)).

(L) Sequence Listing, if on paper (see 37 CFR 1.821 through 1.825).

II.GUIDELINES FOR DRAFTING A PROVISIONAL APPLICATION UNDER 35 U.S.C. 111(b)

A provisional application should preferably conform to the arrangement guidelines for nonprovisional applications. The specification must, however, comply with the first paragraph of 35 U.S.C. 112 and refer to drawings, where necessary for an understanding of the invention. A provisional application does not need claims, oath or declaration. See MPEP § 201.04(b).

A cover sheet providing identifying information is required for a complete provisional application. The cover sheet must state the following:

it is for a provisional application
Identify and give the residence of the inventor or inventors
Title of the invention
Name and registration number of the attorney or agent (if applicable)
Docket number used by the person filing the application (if applicable)
Correspondence address
If there is a governmental interest, the cover sheet must include a statement as to rights to inventions made under Federally sponsored research and development (See MPEP § 310). 37 CFR 1.51(c)(1)(viii) requires the name of the Government agency and the contract number, if the invention was developed by or while under contract with an agency of the U.S. Government.

Provisional applications should not include an information disclosure statement. Since no substantive examination is made, such statements are unnecessary. The Office will not accept an information disclosure statement in a provisional application. Any such statement received, will be returned or disposed of at the convenience of the Office.

This cover sheet information enables the Office to prepare a proper filing receipt and provides the Office of Initial Patent Examination (OIPE) with most of the information needed to process the provisional application. See MPEP § 201.04(b) for a sample cover sheet.

III.THE APPLICATION

The parts of the application may be included in a single document.

The paper standard requirements for papers submitted as part of the record of a patent application is covered in MPEP § 608.01 under the heading “Paper Requirement.”

Determination of completeness of an application is covered in MPEP § 506 and § 601.01 - § 601.01(g).

The elements of the application are secured together in a file wrapper, bearing appropriate identifying data including the application number and filing date (MPEP § 719).

A model, exhibit, or specimen is normally not admitted as part of the application, although it may be required in the prosecution of the application (37 CFR 1.91 and 1.93, MPEP § 608.03).

Copies of an application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b) unless the application has been disposed of (see 37 CFR 1.53(e), (f) and (g)).

All applicants are requested to include a preliminary classification on newly filed patent applications. The preliminary classification, preferably class and subclass designations, should be identified in the upper right-hand corner of the letter of transmittal accompanying the application papers, or in the application data sheet after the title of the invention (see 37 CFR 1.76(b)(3)), for example “Proposed Class 2, subclass 129.”

601.01 Complete Application

37 CFR 1.53. Application number, filing date, and completion of application.

(a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.

(b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(a).

(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.

(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.

(c) Application filing requirements - Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.

(1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.

(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:

(i) Abandonment of the application filed under paragraph (b) of this section;

(ii) Payment of the issue fee on the application filed under paragraph (b) of this section;

(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or

(iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.

(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, an oath or declaration by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the oath or declaration was not present on the filing date accorded the resulting nonprovisional application (i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:

(i) Abandonment of the provisional application filed under paragraph (c) of this section; or

(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.

(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.

(d) Application filing requirements - Continued prosecution (nonprovisional) application.

(1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:

(i) The application is for a design patent;

(ii) The prior nonprovisional application is a design application that is complete as defined by § 1.51(b); and

(iii) The application under this paragraph is filed before the earliest of:

(A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;

(B) Abandonment of the prior application; or

(C) Termination of proceedings on the prior application.

(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:

(i) Must identify the prior application;

(ii) Discloses and claims only subject matter disclosed in the prior application;

(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;

(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and

(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.

(3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16 (l), and the examination fee as set forth in § 1.16(p).

(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.

(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.

(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.

(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.

(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:

(i) Title of invention;

(ii) Name of applicant(s); and

(iii) Correspondence address.

(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.

(e) Failure to meet filing date requirements.

(1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design application, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114.

(2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing( s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f). In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.

(3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in 1.21(n), will be refunded.

(f) Completion of application subsequent to filing— Nonprovisional (including continued prosecution or reissue) application.

(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, the search fee, or the examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has provided a correspondence address (§1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration in an application under paragraph (b) of this section, and pay the surcharge if required by § 1.16(f) to avoid abandonment.

(2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, the search fee, the examination fee, or an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration, and pay the surcharge required by § 1.16(f) to avoid abandonment.

(3) If the excess claims fees required by §§ 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by §§ 1.16(h), (i) and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.

(4) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation- in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divisional application under paragraph (b) of this section.

(5) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.

(g) Completion of application subsequent to filing—Provisional application.

(1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.

(2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.

(3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.

(4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.

(h) Subsequent treatment of application - Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that certain minor informalities may be waived subject to subsequent correction whenever required.

(i) Subsequent treatment of application - Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).

(j) Filing date of international application. The filing date of an international application designating the United States of America is treated as the filing date in the United States of America under PCT Article 11(3), except as provided in 35 U.S.C. 102(e).

37 CFR 1.53 relates to application numbers, filing dates, and completion of applications. An application number is assigned for identification purposes to any paper which purports to be an application for a patent, even if the application is incomplete or informal. The remaining sections of 37 CFR 1.53 treat nonprovisional applications filed under 35 U.S.C. 111(a) separately from provisional applications filed under 35 U.S.C. 111(b).

37 CFR 1.53(d) sets forth the filing date requirements for a continued prosecution application (CPA) which is a nonprovisional application which must be filed on or after December 1, 1997. Only a continuation or divisional application (but not a continuation-in-part) may be filed as a CPA. See MPEP § 201.06(d). Effective July 14, 2003, CPA practice under 37 CFR 1.53(d) does not apply to utility and plant applications. CPAs can only be filed in design applications.

601.01(a) Nonprovisional Applications Filed Under 35 U.S.C. 111(a)

The procedure for filing a nonprovisional application under 35 U.S.C. 111(a) is set forth in 37 CFR 1.53(b) and 37 CFR 1.53(d). 37 CFR 1.53(b) may be used to file any original, reissue, or substitute nonprovisional application and any continuing application, i.e., continuation, divisional, or continuation-in-part. Under 37 CFR 1.53(b), a filing date is assigned to a nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the USPTO. Failure to meet any of the requirements in 37 CFR 1.53(b) will result in the application being denied a filing date. The filing date to be accorded such an application is the date on which all of the requirements of 37 CFR 1.53(b) are met.

37 CFR 1.53(d) may be used to file either a continuation or a divisional application (but not a continuation-in-part) of a design application. The prior nonprovisional application must be a design application that is complete as defined by 37 CFR 1.51(b). Any application filed under 37 CFR 1.53(d) must disclose and claim only subject matter disclosed in the prior nonprovisional application and must name as inventors the same or less than all of the inventors named in the prior nonprovisional application. Under 37 CFR 1.53(d), the filing date assigned is the date on which a request, on a separate paper, for an application under 37 CFR 1.53(d) is filed. An application filed under 37 CFR 1.53(d) must be filed before the earliest of:

(A)payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application;

(B)abandonment of the prior application; or

(C)termination of proceedings on the prior application.

The filing fee , search fee and examination fee for an application filed under 37 CFR 1.53(b) or 37 CFR 1.53(d) and the oath or declaration for an application filed under 37 CFR 1.53(b) can be submitted after the filing date. However, no amendment may introduce new matter into the disclosure of an application after its filing date.

37 CFR 1.53(e) provides for notifying applicant of any application which is incomplete under 37 CFR 1.53(b) or 37 CFR 1.53(d) and giving the applicant a time period to correct any omission. If the omission is not corrected within the time period given, the application will be returned or otherwise disposed of and a handling fee set forth in 37 CFR 1.21(n) will be retained from any refund of a filing fee.

37 CFR 1.53(f) provides that, where a filing date has been assigned to an application filed under 37 CFR 1.53(b) or 37 CFR 1.53(d), the applicant will be notified if a correspondence address has been provided and be given a period of time in which to file the missing fees, oath or declaration, and to pay any surcharge (37 CFR 1.16(f)) due in order to prevent abandonment of the application. The time period usually set is 2 months from the mailing date of notification by the USPTO. This time period may be extended under 37 CFR 1.136(a).

For applications filed on or after December 8, 2004 but prior to July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(b) or (d), if the search and/or examination fees are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is not required. For applications filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(b) or (d), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required.

If the required basic filing fee is not timely paid, or the processing and retention fee set forth in 37 CFR 1.21(l) is not paid during the pendency of the application, the application will be disposed of. Effective July 1, 2005, the processing and retention fee (formerly 37 CFR 1.21(l)) practice has been eliminated. The basic filing fee (rather than just the processing and retention fee set forth in former 37 CFR 1.21(l)) must be paid within the pendency of a nonprovisional application in order to permit benefit of the application to be claimed under 35 U.S.C. 120, 121, or 365(c) in a subsequent nonprovisional or international application. The notification under 37 CFR 1.53(f) may be made simultaneously with any notification pursuant to 37 CFR 1.53(e). If no correspondence address is included in the application, applicant has 2 months from the filing date to file the fee(s), oath or declaration and to pay the required surcharge as set forth in 37 CFR 1.16(f) in order to prevent abandonment of the application.

Copies of an application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b) unless the application has been disposed of (see 37 CFR 1.53(e) and (f)). Prior to July 1, 2005, the basic filing fee or the processing and retention fee must be paid in a nonprovisional application, if any claim for benefits under 35 U.S.C. 120, 121, or 365(c) based on that application is made in a subsequently filed copending nonprovisional application. Effective July 1, 2005, the basic filing fee must be paid within the pendency of a nonprovisional application in order to permit benefit of the application to be claimed under 35 U.S.C. 120, 121 or 365(c) in a subsequent nonprovisional or international application. See 37 CFR 1.78(a)(1).

37 CFR 1.53(h) indicates that a patent application will not be forwarded for examination on the merits until all required parts have been received. 37 CFR 1.53(j) indicates that international applications filed under the Patent Cooperation Treaty which designate the United States of America are considered to have a United States filing date under PCT Article 11(3), except as provided in 35 U.S.C. 102(e), on the date the requirements of PCT Article 11(1)(i) to (iii) are met.

In accordance with the provisions of 35 U.S.C. 111(a) and 37 CFR 1.53(b), a filing date is granted to a nonprovisional application for patent, which includes at least a specification containing a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing referred to in the specification or required by 37 CFR 1.81(a), which is filed in the U.S. Patent and Trademark Office. If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or oath or declaration, applicant will be so notified and given a period of time within which to file the missing parts to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) in order to prevent abandonment of the application.

Applicants should submit a copy of the notice(s) to file missing parts and the notice(s) of incomplete applications with the reply submitted to the U.S. Patent and Trademark Office. Applicants should also include the application number on all correspondence to the Office. These measures will aid the Office in matching papers to applications, thereby expediting the processing of applications.

In order for the Office to so notify the applicant, a correspondence address must also be provided in the application. The correspondence address may be different from the mailing (post office) address of the applicant. For example, the address of applicant’s registered attorney or agent may be used as the correspondence address. If applicant fails to provide the Office with a correspondence address, the Office will be unable to provide applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f). In such a case, applicant will be considered to have constructive notice as of the filing date that the application must be completed within 2 months from the filing date before abandonment occurs per 37 CFR 1.53(f). This time period may be extended pursuant to 37 CFR 1.136.

The oath or declaration filed in reply to such a notice under 37 CFR 1.53(f) must be executed by the inventors and must identify the specification and any amendment filed with the specification which includes subject matter not otherwise included in the specification (including claims) or drawings of the application as filed. See MPEP § 602. If an amendment is filed with the oath or declaration filed after the filing date of the application, it may be identified in the oath or declaration but may not include new matter. No new matter may be included after the filing date of the application. See MPEP §608.04(b). If the oath or declaration improperly refers to an amendment filed after the filing date of the application which contains new matter, a supplemental oath or declaration will be required pursuant to 37 CFR 1.67(b), deleting the reference to the amendment containing new matter. If an amendment is filed on the same day that the application filed under 37 CFR 1.53(b) is filed it is a part of the original application papers and the question of new matter is not considered. Similarly, if the application papers are altered prior to execution of the oath or declaration and the filing of the application, new matter is not a consideration since the alteration is considered as part of the original disclosure.

601.01(b) Provisional Applications FiledUnder 35 U.S.C. 111 (b)

A provisional application will be given a filing date in accordance with 37 CFR 1.53(c) as of the date the written description and any necessary drawings are filed in the Office. The filing date requirements for a provisional application set forth in 37 CFR 1.53(c) parallel the requirements for a nonprovisional application set forth in 37 CFR 1.53(b), except that no claim is required. Amendments, other than those required to make the provisional application comply with applicable regulations, are not permitted after the filing date of the provisional application.

When the specification or drawing are omitted, 37 CFR 1.53(e) requires that the applicant be notified and given a time period in which to submit the missing element to complete the filing. See MPEP § 601.01(f) and § 601.01(g) for treatment of applications filed without drawings, or filed without all figures of drawings, respectively.

37 CFR 1.53(c)(1) requires all provisional applications be filed with a cover sheet, which may be an application data sheet (37 CFR 1.76) or a cover letter identifying the application as a provisional application. The Office will treat an application as having been filed under paragraph (b), unless the application is clearly identified as a provisional application. A provisional application, which is identified as such, but which does not have a complete cover sheet as required by 37 CFR 1.51(c)(1) will be treated as a provisional application. However, the complete cover sheet and a surcharge will be required to be submitted at a later date in conformance with 37 CFR 1.53(g).

When the provisional application does not have a complete cover sheet or the appropriate fee, the applicant will be notified pursuant to 37 CFR 1.53(g) and given a time period in which to provide the necessary fee or cover sheet and to pay the surcharge as set forth in 37 CFR 1.16(g) in order to avoid abandonment of the application. The time period will usually be set at 2 months from the date of notification. This time period may be extended under 37 CFR 1.136(a). If the filing fee is not timely paid, the Office may dispose of the provisional application. If no correspondence address has been provided, applicant has 2 months from the filing date to file the basic filing fee, cover sheet, and to pay the surcharge as set forth in 37 CFR 1.16(g) in order to avoid abandonment of the provisional application. Copies of a provisional application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b) unless the provisional application has been disposed of (see 37 CFR 1.53(e) and (g)).

The basic filing fee must be paid in a provisional application on filing or within the time period set forth in 37 CFR 1.53(g), and the provisional application must be entitled to a filing date under 37 CFR 1.53(c), if any claim for benefits under 35 U.S.C. 119(e) based on that application is made in a subsequently filed nonprovisional application. 37 CFR 1.78(a)(4).

37 CFR 1.53(e)(2) requires that any request for review of a refusal to accord an application a filing date be made by way of a petition accompanied by the fee set forth in 37 CFR 1.17(f) (see MPEP § 506.02).

601.01(c) Conversion to or From a Provisional Application

I.CONVERSION FROM A NONPROVISIONAL APPLICATION TO A PROVISIONAL APPLICATION

37 CFR 1.53. Application number, filing date, and completion of application.

. . .

(c)(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:

(i) Abandonment of the application filed under paragraph (b) of this section;

(ii) Payment of the issue fee on the application filed under paragraph (b) of this section;

(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or

(iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.

An application filed under 37 CFR 1.53(b) may be converted to a provisional application in accordance with the procedure described in 37 CFR 1.53(c)(2). The procedure requires the filing of a request for conversion and the processing fee set forth in 37 CFR 1.17(q). Filing of the request in the nonprovisional application is required prior to the abandonment of the 37 CFR 1.53(b) application, the payment of the issue fee, the expiration of 12 months after the filing date of the 37 CFR 1.53(b) application, or the filing of a request for a statutory invention registration under 37 CFR 1.293, whichever event is earlier. The grant of any such request does not entitle applicant to a refund of the fees properly paid in the application filed under 37 CFR 1.53(b).

Converting a nonprovisional application to a provisional application will not avoid the publication of the nonprovisional application unless the request to convert is recognized in sufficient time to permit the appropriate officials to remove the nonprovisional application from the publication process. The Office cannot ensure that it can remove an application from publication or avoid publication of application information any time after the publication process for the application has been initiated. For information on procedures for removing an application from publication, see MPEP § 1120.

A provisional application is not entitled to claim priority to or benefit of a prior-filed application under 35 U.S.C. 119, 120, 121, or 365. See MPEP § 201.04(b). After the nonprovisonal application has been converted to a provisional application, any priority or benefit claims submitted in the nonprovisional application will be disregarded.

Applicants who wish to file a request for conversion under 37 CFR 1.53(c)(2) by mail should designate “Mail Stop Conversion” as part of the U. S. Patent and Trademark Office address.

II. CONVERSION FROM A PROVISIONAL APPLICATION TO A NONPROVISIONAL APPLICATION

37 CFR 1.53. Application number, filing date, and completion of application.

. . .

(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, an oath or declaration by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the oath or declaration was not present on the filing date accorded the resulting nonprovisional application (i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:

(i) Abandonment of the provisional application filed under paragraph (c) of this section; or

(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.

An application filed under 37 CFR 1.53(c) may be converted to a nonprovisional application in accordance with the procedure described in 37 CFR 1.53(c)(3). Applicants should carefully consider the patent term consequences of requesting conversion rather than simply filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e). Claiming the benefit of the provisional application under 35 U.S.C. 119(e) is less expensive and will result in a longer patent term. The procedure requires the filing of a request for the conversion of the provisional application to a nonprovisional application and the fee set forth in 37 CFR 1.17(i) as well as the basic filing fee , search fee, and examination fee for the nonprovisional application. In addition, if the provisional application was not filed with an executed oath or declaration and the appropriate fees for a nonprovisional application, the surcharge set forth in 37 CFR 1.16(f) is required. See MPEP § 601.01(a). Filing of the request for conversion in the provisional application is required prior to the abandonment of the provisional application or the expiration of 12 months after the filing date of the 37 CFR 1.53(c) application, whichever event is earlier. The grant of any such request does not entitle applicant to a refund of the fees properly paid in the application filed under 37 CFR 1.53(c).

Applicants who wish to file a request for conversion under 37 CFR 1.53(c)(3) by mail should designate “Mail Stop Conversion” as part of the U. S. Patent and Trademark Office address.

601.01(d) Application Filed Without AllPages of Specification

The Office of Initial Patent Examination (OIPE) reviews application papers to determine whether all of the pages of specification are present in the application. If the application is filed without all of the page(s) of the specification, but containing something that can be construed as a written description, at least one drawing figure, if necessary under 35 U.S.C. 113(first sentence), and, in a nonprovisional application, at least one claim, OIPE will mail a “Notice of Omitted Items” indicating that the application papers so deposited have been accorded a filing date, but are lacking some page(s) of the specification.

If the application does not contain anything that can be construed as a written description, OIPE will mail a Notice of Incomplete Application indicating that the application lacks the specification required by 35 U.S.C. 112 and no filing date is granted.

I. APPLICATION ENTITLED TO FILING DATE

The mailing of a “Notice of Omitted Item(s)” will permit the applicant to:

(A) promptly establish prior receipt in the USPTO of the page(s) at issue. An applicant asserting that the page(s) was in fact received by the USPTO with the application papers must, within 2 months from the date of the “Notice of Omitted Item(s),” file 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 (37 CFR 1.181(f)). The petition fee will be refunded if it is determined that the page(s) was in fact received by the USPTO with the application papers deposited on filing. The 2-month period is not extendable under 37 CFR 1.136;

(B) promptly submit the omitted page(s) in a nonprovisional application and accept the date of such submission as the application filing date. An applicant desiring to submit the omitted page(s) in a nonprovisional application and accept the date of such submission as the application filing date must, within 2 months from the date of the “Notice of Omitted Item(s),” file any omitted page(s) with an oath or declaration in compliance with 37 CFR 1.63 and 37 CFR 1.64 referring to such page(s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the later filing date (37 CFR 1.181(f)). The 2-month period is not extendable under 37 CFR 1.136; or

(C) accept the application as deposited in the USPTO. Applicant may accept the application as deposited in the USPTO by either:

(1) not filing a petition under 37 CFR 1.53(e) or 37 CFR 1.182 (and the required petition fee) as discussed above within 2 months of the date of the “Notice of Omitted Item(s)”. The failure to file a petition under 37 CFR 1.53(e) or 37 CFR 1.182 will be treated as constructive acceptance by the applicant of the application as deposited in the USPTO. The application will maintain the filing date as of the date of deposit of the application papers in the USPTO, and the original application papers (i.e., the original disclosure of the invention) will include only those application papers present in the USPTO on the date of deposit. Amendment of the specification is required in a nonprovisional application to renumber the pages consecutively and cancel any incomplete sentences caused by the absence of the omitted page(s). Such amendment should be by way of preliminary amendment submitted prior to the first Office action to avoid delays in the prosecution of the application, or

(2) filing an amendment under 37 CFR 1.57(a). If an application was filed on or after September 21, 2004, and contains a claim under 37 CFR 1.55for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior- filed provisional, nonprovisional, or international application that was present on the filing date of the application, and the omitted portion of the specification was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted portion of the specification pursuant to 37 CFR 1.57(a). Such amendment should be by way of a preliminary amendment and the preliminary amendment must be submitted within 2 months from the date of the “Notice of Omitted Item(s).” The amendment should be identified as an amendment pursuant to 37 CFR 1.57(a) and must comply with the requirements of 37 CFR 1.57(a) and 37 CFR 1.121. See MPEP § 201.17. The application will maintain the filing date as of the date of deposit of the original application papers in the USPTO. The original application papers (i.e., the original disclosure of the invention) will include only those application papers present in the USPTO on the original date of deposit. The 2-month period is not extendable under 37 CFR 1.136.

Any petition under 37 CFR 1.53(e) or 37 CFR 1.182 not filed within the 2-month period set in the “Notice of Omitted Item(s)” may be dismissed as untimely. 37 CFR 1.181(f). Under the adopted procedure, the USPTO may strictly adhere to the 2-month period set forth in 37 CFR 1.181(f), and dismiss as untimely any petition not filed within the 2-month period. This strict adherence to the 2-month period set forth in 37 CFR 1.181(f) is justified as such applications will now be forwarded for examination at the end of the 2-month period. It is further justified in instances in which applicant seeks to submit the omitted page(s) in a nonprovisional application and request the date of such submission as the application filing date as: (A) according the application a filing date later than the date of deposit may affect the date of expiration of any patent issuing on the application due to the changes to 35 U.S.C. 154 contained in Public Law 103-465, § 532, 108 Stat. 4809 (1994); and (B) the filing of a continuation-in-part application is a sufficiently equivalent mechanism for adding additional subject matter to avoid the loss of patent rights.

The submission of omitted page(s) in a nonprovisional application and acceptance of the date of such submission as the application filing date is tantamount to simply filing a new application. Thus, applicants should consider filing a new application as an alternative to submitting a petition under 37 CFR 1.182 (with the petition fee under 37 CFR 1.17(f)) with any omitted page(s), which is a cost effective alternative in instances in which a nonprovisional application is deposited without filing fees. Likewise, in view of the relatively low filing fee for provisional applications, and 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 page(s) and accord an application filing date as of the date of such submission in provisional applications. The applicant should simply file a new completed provisional application.

Applications in which a “Notice of Omitted Item(s)” has been mailed will be retained in OIPE for a period of 2 months from the mailing date of the notice. Nonprovisional applications that are complete under 37 CFR 1.51(b) will then be forwarded to the appropriate Technology Center for examination of the application. Provisional applications that are complete under 37 CFR 1.51(c) will then be forwarded to the Files Repository. The current practice for treating applications that are not complete under 37 CFR 1.51(b) and (c) will remain unchanged (37 CFR 1.53(f) and (g)).

II. APPLICATION NOT ENTITLED TO FILING DATE

If the application does not contain anything that can be construed as a written description, OIPE will mail a Notice of Incomplete Application indicating that the application lacks the specification required by 35 U.S.C. 112. Applicant may:

(A) file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), asserting that (1) the missing specification was submitted, or (2) the application papers as deposited contain an adequate written description under 35 U.S.C. 112. The petition under 37 CFR 1.53(e) must be accompanied by sufficient evidence (37 CFR 1.181(b)) to establish applicant’s entitlement to the requested filing date (e.g., a date-stamped postcard receipt (MPEP § 503) to establish prior receipt in the USPTO of the missing specification);

(B) submit the omitted specification, including at least one claim in a nonprovisional application, accompanied by an oath or declaration in compliance with 37 CFR 1.63 and 37 CFR 1.64 referring to the specification being submitted and accept the date of such submission as the application filing date; or

(C) submit an amendment under 37 CFR 1.57(a). If an application was filed on or after September 21, 2004, and contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application that was present on the filing date of the application, and the specification was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted specification pursuant to 37 CFR 1.57(a). The amendment must be accompanied by a petition under 37 CFR 1.57(a)(3) along with the petition fee set forth in 37 CFR 1.17(f). See MPEP § 201.17. The amendment should be identified as an amendment pursuant to 37 CFR 1.57(a) and must comply with the requirements of 37 CFR 1.57(a) and 37 CFR 1.121. The 2-month period is not extendable under 37 CFR 1.136.

Applications in which a “Notice of Incomplete Application” has been mailed will be retained in OIPE to await action by the applicant since further action by the applicant is necessary for the application to be accorded a filing date. Unless applicant completes the application, or files a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), or files a petition under 37 CFR 1.57(a)(3) with the petition fee set forth in 37 CFR 1.17(f), within the period set in the “Notice of Incomplete Application,” the application will be processed as an incomplete application under 37 CFR 1.53(e).

III. APPLICATION LOCATED IN A TECHNOLOGY CENTER

If it is discovered that an application, located in a Technology Center (TC), was filed without all of the page(s) of the specification, and a Notice of Omitted Items has not been mailed by OIPE, the examiner should review the application to determine whether the application is entitled to a filing date. An application is entitled to a filing date if the application contains something that can be construed as a written description, at least one drawing figure (if necessary under 35 U.S.C. 113, first sentence), and at least one claim.

A. Application Entitled to a Filing Date

If the application is entitled to a filing date, the examiner should notify applicant of the omission in the next Office action and require applicant to do one of the following:

(A) accept the application, as filed, without all of the page(s) of the specification;

(B) file any omitted page(s) with an oath or declaration in compliance with 37 CFR 1.63 and 37 CFR 1.64 referring to the omitted page(s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the date of submission of the omitted page(s) as the application filing date; or

(C) file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f) alleging that the page(s) indicated as omitted was in fact deposited with the USPTO with the application papers, including any and all evidence supporting the allegation. See MPEP § 503. The petition fee will be refunded if it is determined that the page(s) was in fact received by the USPTO with the application papers deposited on filing.

If applicant is willing to accept the application, as filed, without all of the page(s) of the application (item A above), an amendment of the specification is required to renumber the pages of the application consecutively and to cancel any incomplete sentences caused by the absence of the omitted page(s). The amendment should be submitted in response to the Office action.

If an application was filed on or after September 21, 2004, and contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application that was present on the filing date of the application, and the omitted portion of the specification was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted portion of the specification pursuant to 37 CFR 1.57(a). The amendment should be submitted in response to the Office action and must comply with 37 CFR 1.57(a) and 37 CFR 1.121. See MPEP § 201.17.

Any petition filed in accordance with item B or C above should be filed with the TC. The TC will match the petition with the application file and forward the application file with the petition to the Office of Petitions, along with a brief explanation as to the page(s) of the specification that has been omitted on filing, for consideration of the petition in due course. For Image File Wrapper (IFW) processing, see IFW Manual section 5.3.

B. Application NOT Entitled to a Filing Date

If upon review of the application, the examiner determines that the application is NOT entitled to a filing date, the examiner should forward the application to OIPE for mailing of a “Notice of Incomplete Application.”

601.01(e) Nonprovisional Application Filed Without At Least One Claim

35 U.S.C. 111(a)(2) requires that an application for patent include, inter alia, “a specification as prescribed by section 112 of this title,” and 35 U.S.C. 111(a)(4) provides that the “filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.” 35 U.S.C. 112, first paragraph, provides, in part, that “[t]he specification shall contain a written description of the invention,” and 35 U.S.C. 112, second paragraph, provides that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” Also, the Court of Appeals for the Federal Circuit stated in Litton Systems, Inc. v. Whirlpool Corp.:

Both statute, 35 U.S.C. 111 [(a)], and federal regulations, 37 CFR 1.51 [(b)], make clear the requirement that an application for a patent must include. . . a specification and claims. . . . The omission of any one of these component parts makes a patent application incomplete and thus not entitled to a filing date.

728 F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir. 1984)(citing Gearon v. United States, 121 F. Supp 652, 654, 101 USPQ 460, 461 (Ct. Cl. 1954), cert. denied, 348 U.S. 942, 104 USPQ 409 (1955))(emphasis in the original).

Therefore, in an application filed under 35 U.S.C. 111(a), a claim is a statutory requirement for according a filing date to the application. 35 U.S.C. 162 and 35 U.S.C. 171 make 35 U.S.C. 112 applicable to plant and design applications, and 35 U.S.C. 162 specifically requires the specification in a plant patent application to contain a claim. 35 U.S.C. 111(b)(2), however, provides that “[a] claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.” Thus, with the exception of provisional applications filed under 35 U.S.C. 111(b), any application filed without at least one claim is incomplete and not entitled to a filing date.

If a nonprovisional application does not contain at least one claim, a “Notice of Incomplete Application” will be mailed to the applicant(s) indicating that no filing date has been granted and setting a period for submitting a claim. The filing date will be the date of receipt of at least one claim. See In re Mattson, 208 USPQ 168 (Comm’r Pat. 1980). An oath or declaration in compliance with 37 CFR 1.63 and 37 CFR 1.64 referring to the claim being submitted is also required.

If a nonprovisional application is accompanied by a preliminary amendment which cancels all claims without presenting any new or substitute claims, the Office will disapprove such an amendment. See 37 CFR 1.115(b)(1) and Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001). Thus, the application will not be denied a filing date merely because such a preliminary amendment was submitted on filing. For fee calculation purposes, the Office will treat such an application as containing only a single claim.

As 37 CFR 1.53(c)(2) permits the conversion of an application filed under 35 U.S.C. 111(a) to an application under 35 U.S.C. 111(b), an applicant in an application, other than for a design patent, filed under 35 U.S.C. 111(a) on or after June 8, 1995, without at least one claim has the alternative of filing a petition under 37 CFR 1.53(c)(2) to convert such application into an application under 35 U.S.C. 111(b), which does not require a claim to be entitled to its date of deposit as a filing date. Such a petition, however, must be filed prior to the expiration of 12 months after the date of deposit of the application under 35 U.S.C. 111(a), and comply with the other requirements of 37 CFR 1.53(c)(2). See MPEP § 601.01(c).

The treatment of an application subsequent to the mailing of a “Notice of Incomplete Application” is discussed in MPEP § 601.01(d).

601.01(f) Applications Filed Without Drawings

35 U.S.C. 111(a)(2)(B) and 35 U.S.C. 111(b)(1)(B) each provide, in part, that an “application shall include . . . a drawing as prescribed by section 113 of this title” and 35 U.S.C. 111(a)(4) and 35 U.S.C. 111(b)(4) each provide, in part, that the “filing date. . . shall be the date on which . . . any required drawing are received in the Patent and Trademark Office.” 35 U.S.C. 113 (first sentence) in turn provides that an “applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.”

Applications filed without drawings are initially inspected to determine whether a drawing is referred to in the specification, and if not, whether a drawing is necessary for the understanding of the invention. 35 U.S.C. 113 (first sentence).

It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the invention under 35 U.S.C. 113 (first sentence). The same practice has been followed in composition applications. Other situations in which drawings are usually not considered necessary for the understanding of the invention under 35 U.S.C. 113 (first sentence) are:

(A) Coated articles or products: where the invention resides solely in coating or impregnating a conventional sheet (e.g., paper or cloth, or an article of known and conventional character with a particular composition), unless significant details of structure or arrangement are involved in the article claims;

(B) Articles made from a particular material or composition: where the invention consists in making an article of a particular material or composition, unless significant details of structure or arrangement are involved in the article claims;

(C) Laminated structures: where the claimed invention involves only laminations of sheets (and coatings) of specified material unless significant details of structure or arrangement (other than the mere order of the layers) are involved in the article claims; or

(D) Articles, apparatus, or systems where sole distinguishing feature is presence of a particular material: where the invention resides solely in the use of a particular material in an otherwise old article, apparatus or system recited broadly in the claims, for example:

(1) A hydraulic system distinguished solely by the use therein of a particular hydraulic fluid;

(2) Packaged sutures wherein the structure and arrangement of the package are conventional and the only distinguishing feature is the use of a particular material.

A nonprovisional application having at least one claim, or a provisional application having at least some disclosure, directed to the subject matter discussed above for which a drawing is usually not considered essential for a filing date, not describing drawing figures in the specification, and filed without drawings will simply be processed , so long as the application contains something that can be construed as a written description. A nonprovisional application having at least one claim, or a provisional application having at least some disclosure, directed to the subject matter discussed above for which a drawing is usually not considered essential for a filing date, describing drawing figure(s) in the specification, but filed without drawings will be treated as an application filed without all of the drawing figures referred to in the specification as discussed in MPEP § 601.01(g), so long as the application contains something that can be construed as a written description. In a situation in which the appropriate Technology Center (TC) determines that drawings are necessary under 35 U.S.C. 113 (first sentence) the filing date issue will be reconsidered by the USPTO. The application will be returned to the Office of Initial Patent Examination (OIPE) for mailing of a “Notice of Incomplete Application.”

If a nonprovisional application does not have at least one claim directed to the subject matter discussed above for which a drawing is usually not considered essential for a filing date, or a provisional application does not have at least some disclosure directed to the subject matter discussed above for which a drawing is usually not considered essential for a filing date, and is filed without drawings, OIPE will mail a “Notice of Incomplete Application” indicating that the application lacks drawings and that 35 U.S.C. 113 (first sentence) requires a drawing where necessary for the understanding of the subject matter sought to be patented.

Applicant may file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), asserting that (A) the drawing(s) at issue was submitted, or (B) the drawing(s) is not necessary under 35 U.S.C. 113 (first sentence) for a filing date. The petition must be accompanied by sufficient evidence to establish applicant’s entitlement to the requested filing date (e.g., a date-stamped postcard receipt (MPEP § 503) to establish prior receipt in the USPTO of the drawing(s) at issue). Alternatively, applicant may submit drawing(s) accompanied by an oath or declaration in compliance with 37 CFR 1.63and 1.64 referring to the drawing(s) being submitted and accept the date of such submission as the application filing date.

As an alternative to a petition under 37 CFR 1.53(e), if the drawing(s) was inadvertently omitted from an application filed on or after September 21, 2004, and the application contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application, that was present on the filing date of the application, and the inadvertently omitted drawing(s) is completely contained in the prior-filed application, the applicant may submit the omitted drawing(s) by way of an amendment in compliance with 37 CFR 1.57(a). The amendment must be by way of a petition under 37 CFR 1.57(a)(3) accompanied by the petition fee set forth in 37 CFR 1.17(f). See MPEP § 201.17.

In design applications, OIPE will mail a “Notice of Incomplete Application” indicating that the application lacks the drawings required under 35 U.S.C. 113(first sentence). The applicant may: (A) promptly file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), asserting that the missing drawing(s) was submitted; or (B) promptly submit drawing(s) accompanied by an oath or declaration in compliance with 37 CFR 1.63 and 37 CFR 1.64 and accept the date of such submission as the application filing date. Applicant may also be able to file an amendment by way of a petition under 37 CFR 1.57(a)(3) as discussed above. 37 CFR 1.153(a) provides that the claim in a design application “shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described.” As such, petitions under 37 CFR 1.53(e) asserting that drawings are unnecessary under 35 U.S.C. 113 (first sentence) for a filing date in a design application will not be found persuasive.

The treatment of an application subsequent to the mailing of a “Notice of Incomplete Application” is discussed in MPEP § 601.01(d).

601.01(g)Applications Filed Without All Figures of Drawings

The Office of Initial Patent Examination (OIPE) reviews application papers to determine whether all of the figures of the drawings that are mentioned in the specification are present in the application. If the application is filed without all of the drawing figure(s) referred to in the specification, and the application contains something that can be construed as a written description, at least one drawing, if necessary under 35 U.S.C. 113 (first sentence), and, in a nonprovisional application, at least one claim, OIPE will mail a “Notice of Omitted Item(s)” indicating that the application papers so deposited have been accorded a filing date, but are lacking some of the figures of drawings described in the specification.

The mailing of a “Notice of Omitted Item(s)” will permit the applicant to:

(A) promptly establish prior receipt in the USPTO of the drawing(s) at issue. An applicant asserting that the drawing(s) was in fact received by the USPTO with the application papers must, within 2 months from the date of the “Notice of Omitted Item(s),” file 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 (37 CFR 1.181(f)). The petition fee will be refunded if it is determined that the drawing(s) was in fact received by the USPTO with the application papers deposited on filing. The 2-month period is notextendable under 37 CFR 1.136;

(B) promptly submit the omitted drawing(s) in a nonprovisional application and accept the date of such submission as the application filing date. An applicant desiring to submit the omitted drawing(s) in a nonprovisional application and accept the date of such submission as the application filing date must, within 2 months from the date of the “Notice of Omitted Item(s),” file any omitted drawing(s) with an oath or declaration in compliance with 37 CFR 1.63 and 37 CFR 1.64 referring to such drawing(s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the later filing date (37 CFR 1.181(f)). The 2-month period is not extendable under 37 CFR 1.136; or

(C) accept the application as deposited in the USPTO. Applicant may accept the application as deposited in the USPTO by either:

(1) not filing a petition under 37 CFR 1.53(e) or 37 CFR 1.182 (and the required petition fee) as discussed above within 2 months of the date of the “Notice of Omitted Item(s).” The failure to file a petition under 37 CFR 1.53(e) or 37 CFR 1.182 will be treated as constructive acceptance by the applicant of the application as deposited in the USPTO. The application will maintain the filing date as of the date of deposit of the original application papers in the USPTO. The original application papers (i.e., the original disclosure of the invention) will include only those application papers present in the USPTO on the original date of deposit. Amendment of the specification is required in a nonprovisional application to cancel all references to the omitted drawing, both in the brief and detailed descriptions of the drawings and including any reference numerals shown only in the omitted drawings. In addition, an amendment with replacement sheets of drawings in compliance with 37 CFR 1.121(d) is required in a nonprovisional application to renumber the drawing figures consecutively, if necessary, and amendment of the specification is required to correct the references to the drawing figures to correspond with any relabeled drawing figures, both in the brief and detailed descriptions of the drawings. Such amendment should be by way of preliminary amendment submitted prior to the first Office action to avoid delays in the prosecution of the application, or

(2) filing an amendment under 37 CFR 1.57(a). If an application was filed on or after September 21, 2004, and contains a claim under 37 CFR 1.55for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior- filed provisional, nonprovisional, or international application that was present on the filing date of the application, and the omitted portion of the drawings was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted portion of the drawings pursuant to 37 CFR 1.57(a). Such amendment should be by way of a preliminary amendment and the preliminary amendment must be submitted within 2 months from the date of the “Notice of Omitted Item(s).” The amendment should be identified as an amendment pursuant to 37 CFR 1.57(a) and must comply with the requirements of 37 CFR 1.57(a) and 37 CFR 1.121.

See MPEP § 201.17. The application will maintain the filing date as of the date of deposit of the original application papers in the USPTO. The original application papers (i.e., the original disclosure of the invention) will include only those application papers present in the USPTO on the original date of deposit. The 2-month period is not extendable under 37 CFR 1.136.

Any petition under 37 CFR 1.53(e) or 37 CFR 1.182 not filed within the 2-month period set in the “Notice of Omitted Item(s)” may be dismissed as untimely. 37 CFR 1.181(f). Under the adopted procedure, the USPTO may strictly adhere to the 2-month period set forth in 37 CFR 1.181(f), and dismiss as untimely any petition not filed within the 2-month period. This strict adherence to the 2-month period set forth in 37 CFR 1.181(f) is justified as such applications will now be forwarded for examination at the end of the 2-month period. It is further justified in instances in which applicant seeks to submit the omitted drawing(s) in a nonprovisional application and request the date of such submission as the application filing date as: (A) according the application a filing date later than the date of deposit may affect the date of expiration of any patent issuing on the application due to the changes to 35 U.S.C. 154 contained in Public Law 103-465, § 532, 108 Stat. 4809 (1994); and (B) the filing of a continuation-in-part application is a sufficiently equivalent mechanism for adding additional subject matter to avoid the loss of patent rights.

The submission of omitted drawing(s) in a nonprovisional application and acceptance of the date of such submission as the application filing date is tantamount to simply filing a new application. Thus, applicants should consider filing a new application as an alternative to submitting a petition under 37 CFR 1.182 (with the petition fee under 37 CFR 1.17(f)) with any omitted drawing(s), which is a cost effective alternative in instances in which a nonprovisional application is deposited without filing fees. Likewise, in view of the relatively low filing fee for provisional applications, and 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. The applicant should simply file a new completed provisional application.

Applications in which a “Notice of Omitted Item(s)” has been mailed will be retained in OIPE for a period of 2 months from the mailing date of the notice. Nonprovisional applications that are complete under 37 CFR 1.51(b) will then be forwarded to the appropriate Technology Center for examination of the application. Provisional applications that are complete under 37 CFR 1.51(c) will then be forwarded to the Files Repository. The current practice for treating applications that are not complete under 37 CFR 1.51(b) and (c) will remain unchanged (37 CFR 1.53(f) and (g)).

The treatment of an application subsequent to the mailing of a “Notice of Omitted Item(s)” is discussed in MPEP § 601.01(d).

Applications are often filed with drawings with several views of the invention where the views are labeled using a number-letter combination, e.g., Fig. 1A, Fig. 1B, and Fig. 1C. OIPE will not mail a “Notice of Omitted Item(s)” if a figure which is referred to in the specification by a particular number cannot be located among the drawings, if the drawings include at least one figure labeled with that particular number in combination with a letter. For example, if the drawings show Figures 1A, 1B, and 1C and the brief description of the drawings refers only to Figure 1, this is an error in the specification which must be corrected, rather than an application filed without all figures of drawings.

APPLICATION LOCATED IN A TECHNOLOGY CENTER

If it is discovered that an application, located in a Technology Center (TC), was filed without all of the drawing figure(s) referred to in the specification, and a Notice of Omitted Items has not been mailed by the OIPE, the examiner should review the application to determine whether the application is entitled to a filing date. An application is entitled to a filing date if the application contains something that can be construed as a written description, at least one drawing figure (if necessary under 35 U.S.C. 113, first sentence), and at least one claim.

A. Application Entitled to a Filing Date

If the application is entitled to a filing date, the examiner should notify applicant of the omission in the next Office action and require applicant to do one of the following:

(A) accept the application, as filed, without all of the drawing figure(s) referred to in the specification;

(B) file any omitted drawing figure(s) with an oath or declaration in compliance with 37 CFR 1.63and 37 CFR 1.64 referring to the omitted drawing figure( s) and a petition under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the date of submission of the omitted drawing figure(s) as the application filing date; or

(C) file a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f) alleging that the drawing figure(s) indicated as omitted was in fact deposited with the USPTO with the application papers, including any and all evidence supporting the allegation. See MPEP § 503. The petition fee will be refunded if it is determined that the drawing figure(s) was in fact received by the USPTO with the application papers deposited on filing.

If applicant is willing to accept the application, as filed, without all of the drawing figure(s) referred to in the application (item A above), applicant is required to submit (1) an amendment to the specification canceling all references to the omitted drawing figure(s) including any reference numerals shown only in the omitted drawing figure(s), (2) an amendment with replacement sheets of drawings in compliance with 37 CFR 1.121(d) renumbering the drawing figure(s) submitted on filing consecutively, and (3) a further amendment to the specification correcting references to drawing figure(s) to correspond with the relabeled drawing figure(s), both in the brief and detailed descriptions of the drawings. The amendment should be submitted in response to the Office action.

If an application was filed on or after September 21, 2004, and contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application that was present on the filing date of the application, and the omitted portion of the drawing(s) was inadvertently omitted from the application and is completely contained in the prior-filed application, applicant may submit an amendment to include the inadvertently omitted portion of the drawing(s) pursuant to 37 CFR 1.57(a). The amendment should be submitted in response to the Office action and must comply with 37 CFR 1.57(a) and 37 CFR 1.121. See MPEP § 201.17.

Any petition filed in accordance with item (B) or (C) above should be filed with the TC. The TC will match the petition with the application file and forward the application file with the petition to the Office of Petitions, along with a brief explanation as to the drawing figure(s) that has been omitted on filing, for consideration of the petition in due course.

B. Application NOT Entitled to a Filing Date

If upon review of the application, the examiner determines that the application is NOT entitled to a filing date because the application does not contain any drawing figure, and at least one drawing figure is necessary under 35 U.S.C 113, first sentence, the examiner should forward the application to OIPE for mailing of a “Notice of Incomplete Application.”

601.01(h) Forms

The Office of Initial Patent Examination (OIPE) is no longer using pre-printed forms and is instead using individualized notices generated by a computer to notify applicants of defects.

601.02 Power of Attorney

The attorney’s or agent’s full mailing address (including ZIP Code) must be given in every power of attorney. The telephone and fax numbers of the attorney or agent should also be included in the power. The prompt delivery of communications will thereby be facilitated.

A power of attorney may be incorporated in the oath or declaration form when the power of attorney is given by inventors. Otherwise, a separate power of attorney (e.g., PTO/SB/81) should be used. (See MPEP § 402.)

601.03 Change of Correspondence Address

37 CFR 1.33. Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

(a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The Office will direct all notices, official letters, and other communications relating to the application to the correspondence address. The Office will not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed as follows:

(1) Prior to filing of § 1.63 oath or declaration by any of the inventors. If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.

(2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).

37 CFR 1.33(a) provides that the application must specify a correspondence address to which the Office will send notice, letters, and other communications relating to an application. The correspondence address must either be in an application data sheet (37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. Additionally, applicants will often specify the correspondence address in more than one paper that is filed with an application, and the address given in the different places sometimes conflicts. Where the applicant specifically directs the Office to use non-matching correspondence addresses in more than one paper, priority will be accorded to the correspondence address specified in the following order: (A) Application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (D) power of attorney. Accordingly, if the ADS includes a typed correspondence address, and the declaration gives a different address (i.e., the address associated with a Customer Number) as the correspondence address, the Office will use the typed correspondence address as included on the ADS. In the experience of the Office, the ADS is the most recently created document and tends to have the most current address. After the correspondence address has been entered according to the above procedure, it will only be changed pursuant to 37 CFR 1.33(a)(1).

The submission of a daytime telephone number of the party to whom correspondence is to be addressed is requested pursuant to 37 CFR 1.33(a). While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number would be useful in initiating contact that could later be reduced to writing. Any party who could change the correspondence address could also change the telephone number.

37 CFR 1.33(a)(1) provides that the party filing the application and setting forth a correspondence address may later change the correspondence address provided that an executed oath or declaration under 37 CFR 1.63 by any of the inventors has not been filed. If a patent practitioner (i.e., registered attorney or agent) filed the application, any other patent practitioners named in the transmittal letter may also change the correspondence address. A patent practitioner named in a letterhead would not be considered as being named in the transmittal letter for purposes of changing the correspondence address. A clear identification of the individual as a representative would be required. If an application is filed by a company to whom the invention has been assigned or to whom there is an obligation to assign the invention, a person who has the authority to act on behalf of the company may change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address pursuant to 37 CFR 1.33(a)(1). The filing of an executed oath or declaration that does not include a correspondence address does not affect any correspondence address previously established on filing of the application, or changed pursuant to 37 CFR 1.33(a)(1).

Where a correspondence address has been established on filing of the application or changed pursuant to 37 CFR 1.33(a)(1) (prior to the filing of an executed oath or declaration under 37 CFR 1.63 by any of the inventors), that correspondence address remains in effect upon filing of an executed oath or declaration under 37 CFR 1.63 and can only be subsequently changed pursuant to 37 CFR 1.33(a)(2). Under 37 CFR 1.33(a)(2), where an executed oath or declaration under 37 CFR 1.63 has been filed by any of the inventors, the correspondence address may be changed by (A) a patent practitioner of record, (B) an assignee as provided for under 37 CFR 3.71(b), or (C) all of the applicants (37 CFR 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with 37 CFR 3.71. See 37 CFR1.33(a)(2).

Where an attorney or agent of record (or applicant, if he or she is prosecuting the application pro se) changes his or her correspondence address, he or she is responsible for promptly notifying the U.S. Patent and Trademark Office of the new correspondence address (including ZIP Code). See 37 CFR 11.11. The notification should also include his or her telephone number. A change of correspondence address may not be signed by an attorney or agent not of record (see MPEP § 405).

Unless the correspondence address is designated as the address associated with a Customer Number, a separate notification must be filed in each application for which a person is intended to receive communications from the Office. See MPEP § 403 for Customer Number Practice. In those instances where a change in the correspondence address of a registered attorney or agent is necessary in a plurality of applications, the notification filed in each application may be a reproduction of a properly executed, original notification. The original notice may either be sent to the Office of Enrollment and Discipline as notification to the Attorney’s Roster of the change of address, or may be retained by applicant. See MPEP § 502.02.

Special care should be taken in continuation or divisional applications to ensure that any change of correspondence address in a prior application is reflected in the continuation or divisional application. For example, where a copy of the oath or declaration from the prior application is submitted for a continuation or divisional application filed under 37 CFR 1.53(b) and the copy of the oath or declaration from the prior application designates an old correspondence address, the Office may not recognize, in the continuation or divisional application, the change of correspondence address made during the prosecution of the prior application. Applicant is required to identify the change of correspondence address in the continuation or divisional application to ensure that communications from the Office are mailed to the current correspondence address. 37 CFR 1.63(d)(4).

See MPEP § 711.03(c) for treatment of petitions to revive applications abandoned as a consequence of failure to timely receive an Office action addressed to the old correspondence address.

The required notification of change of correspondence address need take no particular form. However, it should be provided in a manner calling attention to the fact that a change of address is being made. Thus, the mere inclusion, in a paper being filed for another purpose, of an address which is different from the previously provided correspondence address, without mention of the fact that an address change is being made would not ordinarily be recognized or deemed as instructions to change the correspondence address on the file record.

The obligation (see 37 CFR 11.11) of a registered attorney or agent to notify the Attorney’s Roster by letter of any change of his or her address for entry on the register is separate from the obligation to file a notice of change of address filed in individual applications. See MPEP § 402.

601.04 National Stage Requirements ofthe United States as a Designated Office

See MPEP Chapter 1800, especially MPEP § 1893.01 for requirements for entry into the national stage before the Designated Office or Elected Office under the Patent Cooperation Treaty (PCT).

601.05 Bibliographic Information - Application Data Sheet (ADS)

37 CFR 1.76. Application Data Sheet

(a) Application data sheet. An application data sheet is a sheet or sheets, that may be voluntarily submitted in either provisional or nonprovisional applications, which contains bibliographic data, arranged in a format specified by the Office. An application data sheet must be titled “Application Data Sheet” and must contain all of the section headings listed in paragraph (b) of this section, with any appropriate data for each section heading. If an application data sheet is provided, the application data sheet is part of the provisional or nonprovisional application for which it has been submitted.

(b) Bibliographic data. Bibliographic data as used in paragraph (a) of this section includes:

(1) Applicant information. This information includes the name, residence, mailing address, and citizenship of each applicant (§ 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. If the applicant is not an inventor, this information also includes the applicant’s authority (§§ 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor.

(2) Correspondence information. This information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see § 1.33(a)).

(3) Application information. This information includes the title of the invention, a suggested classification, by class and subclass, the Technology Center to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application (e.g., utility, plant, design, reissue, provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter (see § 5.2(c)), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination. The suggested classification and Technology Center information should be supplied for provisional applications whether or not claims are present. If claims are not present in a provisional application, the suggested classification and Technology Center should be based upon the disclosure.

(4) Representative information. This information includes the registration number of each practitioner having a power of attorney in the application (preferably by reference to a customer number). Providing this information in the application data sheet does not constitute a power of attorney in the application (see § 1.32).

(5) Domestic priority information. This information includes the application number, the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and § 1.78(a)(2) or § 1.78(a)(5), and need not otherwise be made part of the specification.

(6) Foreign priority information. This information includes the application number, country, and filing date of each foreign application for which priority is claimed, as well as any foreign application having a filing date before that of the application for which priority is claimed. Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55(a).

(7) Assignee information. This information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. Providing this information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.

(c) Supplemental application data sheets. Supplemental application data sheets:

(1) May be subsequently supplied prior to payment of the issue fee either to correct or update information in a previously submitted application data sheet, or an oath or declaration under § 1.63 or § 1.67, except that inventorship changes are governed by § 1.48, correspondence changes are governed by § 1.33(a), and citizenship changes are governed by § 1.63 or § 1.67; and

(2) Must be titled “Supplemental Application Data Sheet,” include all of the section headings listed in paragraph (b) of this section, include all appropriate data for each section heading, and must identify the information that is being changed, preferably with underlining for insertions, and strike-through or brackets for text removed.

(d) Inconsistencies between application data sheet and other documents. For inconsistencies between information that is supplied by both an application data sheet under this section and other documents.

(1) The latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by a § 1.63 or § 1.67 oath or declaration, except as provided by paragraph (d)(3) of this section;

(2) The information in the application data sheet will govern when the inconsistent information is supplied at the same time by an amendment to the specification, a designation of correspondence address, or a § 1.63 or § 1.67 oath or declaration, except as provided by paragraph (d)(3) of this section;

(3) The oath or declaration under § 1.63 or § 1.67 governs inconsistencies with the application data sheet in the naming of inventors (§ 1.41 (a)(1)) and setting forth their citizenship (35 U.S.C. 115);

(4) The Office will capture bibliographic information from the application data sheet (notwithstanding whether an oath or declaration governs the information). Thus, the Office shall generally, for example, not look to an oath or declaration under § 1.63 to see if the bibliographic information contained therein is consistent with the bibliographic information captured from an application data sheet (whether the oath or declaration is submitted prior to or subsequent to the application data sheet). Captured bibliographic information derived from an application data sheet containing errors may be corrected if applicant submits a request therefor and a supplemental application data sheet.

37 CFR 1.76 provides for the voluntary inclusion of an application data sheet in provisional and nonprovisional applications. A guide to preparing an application data sheet (Patent Application Bibliographic Data Entry Format) can be found on the U.S. Patent and Trademark Office (Office) Web site “http:\\www.uspto.gov”.

An application data sheet (ADS) is a sheet or set of sheets containing bibliographic data, which is arranged in a format specified by the Office. When an application data sheet is provided in a provisional or nonprovisional application, the application data sheet becomes part of the provisional or nonprovisional application and must comply with 37 CFR 1.52. While the use of an application data sheet is optional, the Office prefers its use to help facilitate the electronic capturing of this important data. For example, in a national stage application filed under 35 U.S.C. 371, the Office could look to the publication of the international application for the title (see MPEP § 1893.03(e)) and to other documents for the listing of inventors and the correspondence address, but it is more desirable for the Office to only refer to a single document, i.e., an application data sheet. The data that is suggested to be supplied by way of an application data sheet can also be provided elsewhere in the application papers, but it is to applicant’s advantage to submit the data via an application data sheet. To help ensure that the Office can, in fact, efficiently capture the data, the Office specifies a particular format to be used. The Office does not, however, provide an application data sheet paper form because of the variability in the data submitted (e.g., one application may have no domestic priority data and a single inventor, and others may have domestic priority data to a number of prior U.S. applications and have multiple joint inventors).

37 CFR 1.76(a) requires that any ADS contain the seven headings listed in 37 CFR 1.76(b) with any appropriate data for each section heading. The ADS must be titled “Application Data Sheet” and any label (e.g., the label “Given Name” in the “Applicant Information” heading) that does not contain any corresponding data will be interpreted by the Office to mean that there is no corresponding data for that label anywhere in the application. By requiring an ADS to contain all seven section headings, and any appropriate data for the sections, the accuracy of bibliographic data in patent applications will be enhanced and the need for corrected filing receipts related to Office errors will be reduced.

Bibliographic data under 37 CFR 1.76(b) includes: (1) applicant information; (2) correspondence information; (3) application information; (4) representative information; (5) domestic priority information; (6) foreign priority information; and (7) assignee information.

The naming of the inventors and the setting forth of the citizenship of each inventor must be provided in the oath or declaration under 37 CFR 1.63 (as is required by 35 U.S.C 115) even if this information is provided in the application data sheet.

Applicant information includes the name, residence, mailing address, and citizenship of each applicant (37 CFR 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. If the applicant is not an inventor, this information also includes the applicant’s authority (37 CFR 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor. The “mailing address” is the address where applicant customarily receives mail.

Correspondence information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see 37 CFR 1.33(a)).

Application information includes the title of the invention, a suggested classification by class and subclass, the Technology Center (TC) to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). Application information also includes whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to 37 CFR 5.2(c).

Although the submission of the information related to a suggested classification and TC is desired for both provisional and nonprovisional applications, the Office will not be bound to follow such information if submitted, as the Office will continue to follow its present procedures for classifying and assigning new applications. Similarly for the suggested drawing figure, the Office may decide to print another figure on the front page of any patent issuing from the application.

Application information also includes information about provisional applications, particularly their class and subclass, and the TC. Provisional applications are not examined or even processed (e.g., having a class and subclass assigned or being forwarded to a TC). Even though provisional applications are not examined, the TC and the class and subclass, if known to applicants, would be of benefit to the Office in giving an indication of where nonprovisional applications may be eventually received in the Office and their technologies so that the Office will be better able to plan for future workloads.

37 CFR 1.76(b)(3) also requests that the plant patent applicant state the Latin name and the variety denomination for the plant claimed. The Latin name and the variety denomination of the claimed plant are usually included in the specification of the plant patent application, and will be included in any plant patent or plant patent application publication if included in an application data sheet or patent application. The Office, pursuant to the “International Convention for the Protection of New Varieties of Plants” (generally known by its French acronym as the UPOV convention), has been asked to compile a database of the plants patented and the database must include the Latin name and the variety denomination of each patented plant. Having this information in separate sections of the plant patent will make the process of compiling this database more efficient.

Representative information includes the registration number appointed with a power of attorney in the application (preferably by reference to a customer number). 37 CFR 1.76(b)(4) states that providing this information in the application data sheet does not constitute a power of attorney in the application (see 37 CFR 1.32). This is because the Office does not expect the application data sheet to be executed by the party (applicant or assignee) who may appoint a power of attorney in the application.

Domestic priority information includes the application number (series code and serial number), the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). 37 CFR 1.76(b)(5) states that providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C.119(e) or 120. Since the application data sheet, if provided, is considered part of the application, the specific reference to an earlier filed provisional or nonprovisional application in the application data sheet satisfies the “specific reference” requirement of 35 U.S.C.119(e)(1) or 120, and it also complies with 37 CFR 1.78(a)(2) (iii) or (a)(5)(iii). Thus, a specific reference does not otherwise have to be made in the specification, such as in the first sentence( s) of the specification. If continuity data is included in an application data sheet, but not in the first sentence(s) of the specification, the continuity data for the patent front page will be taken from the application data sheet. No continuity data will be included in the first sentence(s) of the specification if applicant does not provide it there. 37 CFR 1.76(b)(5) does not apply to provisional applications.

Foreign priority information includes the application number, country, and filing date of each foreign application for which priority is claimed, as well as any foreign application having a filing date before that of the application for which priority is claimed. 37 CFR 1.76(b)(6) states that providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55(a). The patent statute, 35 U.S.C. 119(b), does not require that a claim to the benefit of a prior foreign application take any particular form. 37 CFR 1.76(b)(6) does not apply to provisional applications.

37 CFR 1.76(b)(7) provides that the assignee information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. The inclusion of this information in the application data sheet does not substitute for compliance with any requirement of 37 CFR part 3 to have an assignment recorded by the Office. Providing assignee information in the application data sheet is considered a request to include such information on the patent application publication, since there is no other reason for including such information in the application data sheet. Assignment information must be recorded to have legal effect.

Supplemental application data sheets may be subsequently supplied prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under 37 CFR 1.63 or 1.67. See 37 CFR 1.76(c)(1). A supplemental data sheet cannot be used to correct the following: (1) inventorship changes (37 CFR 1.48); (2) correspondence changes (37 CFR 1.33(a)); and (3) citizenship changes (37 CFR 1.63or 37 CFR 1.67). Supplemental application data sheets must be titled “Supplemental Application Data Sheet” and also contain all of the seven section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading. Supplemental application data sheets identifying only the information that is being changed (added, deleted, or modified) in the supplemental ADS are not acceptable. A supplemental ADS containing only new or changed information is likely to confuse the record, create unnecessary work for the Office, and does not comply with 37 CFR 1.76. If no ADS was originally filed, but applicant wants to submit an ADS to correct, modify, or augment the original application data, the ADS, even though it is the first-filed ADS, must be titled “Supplemental Application Data Sheet.”

SUPPLEMENTAL ADS SUBMISSIONS

When submitting an application data sheet supplemental to the initial filing of the application, to correct, modify, or augment the original application data sheet, the following applies:

(A)the supplemental application data sheet must be titled “Supplemental Application Data Sheet” (while the title “Supplemental Application Data Sheet” is preferred, “Supp. ADS”, “Supplemental ADS” or other variations thereof will be accepted);

(B)the supplemental application data sheet must be a full replacement copy of the original ADS, if any, with each of the seven section headings listed in 37 CFR 1.76(b), and with all appropriate data for the section heading;

(C) the supplemental application data sheet must be submitted with all changes indicated, preferably with insertions or additions indicated by underlining, and deletions, with or without replacement data, indicated by strike-through or brackets; and

(D) the footer information should include the word “Supplemental” in place of “Initial” and should also contain the Application Number and Filing Date.

A supplemental ADS that is being used to correct data shown in an oath or declaration, such as foreign priority or residence information for an inventor, would show the original incorrect information with strike-through or brackets, and the new information with underlining, as if an ADS had originally been used to submit the information. For example, if the original oath or declaration included a foreign priority claim, in order to delete the foreign priority claim, applicant should provide a supplemental ADS showing the foreign priority claim with strike-through or brackets to ensure that the patent will reflect such change.

Resolution of inconsistent information supplied by both an application data sheet and other documents (e.g., the oath or declaration under 37 CFR 1.63, or 37 CFR 1.67) are addressed in 37 CFR 1.76(d). If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control. 37 CFR 1.76(d)(1) provides that the latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by an oath or declaration under 37 CFR 1.63 or 37 CFR 1.67, except as provided by 37 CFR 1.76(d)(3). This is because the application data sheet is intended as the means by which applicants will provide most information to the Office. In the small number of instances where another document has more accurate information than a concurrently supplied application data sheet (37 CFR 1.76(d)(2)), a supplemental application data sheet should be submitted to conform the information presented by the supplemental application data sheet with the correct information in the other document(s) (37 CFR 1.76(d)(1)).

If an application is filed with an application data sheet improperly identifying the residence of one of the inventors, inventor B, and an executed 37 CFR 1.63 declaration setting forth the correct but different residence of inventor B, the Office will capture the residence of inventor B found in the application data sheet as the residence of B, and include that information in the filing receipt. If applicant desires correction of the residence, applicant should submit a supplemental application data sheet under 37 CFR 1.76(c), with the name of inventor B and the corrected residence for inventor B.

Pursuant to 37 CFR 1.76(d)(3), the oath or declaration under 37 CFR 1.63 or 37 CFR 1.67 governs inconsistencies with the application data sheet in the naming of inventors and setting forth their citizenship. If different inventors are listed in the application data sheet than are named in the oath or declaration for the application, the inventors named in the oath or declaration are considered to be the inventors named in the patent application. See 37 CFR 1.76(d)(3). Any change in the inventorship set forth in the oath or declaration under 37 CFR 1.63 must be by way of a request under 37 CFR 1.48(a) notwithstanding identification of the correct inventive entity in an application data sheet or supplemental application data sheet. Similarly, if the oath or declaration under 37 CFR 1.63 incorrectly sets forth the citizenship of one of the inventors, that inventor must submit a supplemental oath or declaration under 37 CFR 1.67 with the correct citizenship notwithstanding the correct identification of the citizenship in an application data sheet or supplemental application data sheet. If the spelling of the inventor’s name is incorrect, however, only a supplemental application data sheet is required. See MPEP § 605.04(b).

The Office will rely upon information supplied in the application data sheet over an oath or declaration to capture the data even where the type of information supplied (citizenship, inventorship) is governed by the oath or declaration according to statute (35 U.S.C. 115) or other rule (37 CFR 1.41(a)(1)). Where the oath or declaration under 37 CFR 1.63 or 37 CFR 1.67 contains the correct information regarding inventors or their citizenship and the application data sheet does not, even though the oath or declaration governs pursuant to 37 CFR 1.76(d)(3), the information in the application data sheet must be corrected by submission of a request for correction and a supplemental application data sheet. If the spelling of the inventor’s name is incorrect, however, only a supplemental application data sheet is required. See MPEP § 605.04(b).

If an application is filed with an application data sheet correctly setting forth the citizenship of inventor B, and an executed 37 CFR 1.63 declaration setting forth a different incorrect citizenship of inventor B, the Office will capture the citizenship of inventor B found in the application data sheet. Applicant, however, must submit a supplemental oath or declaration under 37 CFR 1.67 by inventor B setting forth the correct citizenship even though it appears correctly in the application data sheet. A supplemental application data sheet cannot be used to correct the citizenship error in the oath or declaration. If, however, the error is one of residence, no change would be required (37 CFR 1.76(d)(2)).

Although 37 CFR 1.76 does not change the practice in MPEP § 201.03 and § 605.04(b) regarding correction of a typographical or transliteration error in the spelling of an inventor’s name whereby all that is required is notification of the error to the Office, the Office strongly encourages the filing of an application data sheet or a supplemental application data sheet to correct a typographical or transliteration error in the spelling of an inventor’s name. A supplemental oath or declaration is not required.

If applicant merely files a statement notifying the Office of the typographical or transliteration error in the spelling of an inventor’s name without submitting an application data sheet or a supplemental application data sheet, any patent to issue is less likely to reflect the correct spelling since the spelling of the inventor’s name is taken from the oath or declaration, or any subsequently filed application data sheet.

As to the submission of class/subclass information in the application data sheet, the Office notes that there is a distinction between permitting applicants to aid in the identification of the appropriate Art Unit to examine the application and requiring the Office to always honor such identification/request, which could lead to misuse by some applicants of forum shopping. Even when an applicant’s identification of an Art Unit is appropriate, internal staffing/workload requirements may dictate that the application be handled by another Art Unit qualified to do so, particularly when the art or claims encompass the areas of expertise of more than one Art Unit.

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Latest revision as of 22:54, May 31, 2020

601 Content of Provisional and Nonprovisional Applications

Contents

601.01 Complete Application

601.01(a) Nonprovisional Applications Filed Under 35 U.S.C. 111(a)

601.01(b) Provisional Applications FiledUnder 35 U.S.C. 111 (b)

601.01(c) Conversion to or From a Provisional Application

I.CONVERSION FROM A NONPROVISIONAL APPLICATION TO A PROVISIONAL APPLICATION

II. CONVERSION FROM A PROVISIONAL APPLICATION TO A NONPROVISIONAL APPLICATION

601.01(d) Application Filed Without AllPages of Specification

I. APPLICATION ENTITLED TO FILING DATE

II. APPLICATION NOT ENTITLED TO FILING DATE

III. APPLICATION LOCATED IN A TECHNOLOGY CENTER

601.01(e) Nonprovisional Application Filed Without At Least One Claim

601.01(f) Applications Filed Without Drawings

601.01(g)Applications Filed Without All Figures of Drawings

601.01(h) Forms

601.02 Power of Attorney

601.03 Change of Correspondence Address

601.04 National Stage Requirements ofthe United States as a Designated Office

601.05 Bibliographic Information - Application Data Sheet (ADS)

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@@ Line 3: / Line 3: @@
 ==[[MPEP 601|601 Content of Provisional and Nonprovisional Applications]]==
-<noinclude>__TOC__</noinclude>
+<noinclude><div class="noautonum">__TOC__</div></noinclude>
 {{Statute|35 U.S.C. 111. Application}}
 (a) IN GENERAL.—
@@ Line 104: / Line 103: @@
 {{Statute|37 CFR 1.51. General requisites of an application.}}
 (a) Applications for patents must be made to the Director of
 the United States Patent and Trademark Office.
@@ Line 164: / Line 162: @@
-I.GUIDELINES FOR DRAFTING A NONPROVISIONAL
+'''I.GUIDELINES FOR DRAFTING A NONPROVISIONAL PATENT APPLICATION UNDER 35 U.S.C. 111(a)'''
-PATENT APPLICATION
-UNDER 35 U.S.C. 111(a)
-The following guidelines illustrate the preferred
+The following guidelines illustrate the preferred layout and content of patent applications. If an application data sheet (37 CFR 1.76) is used, data supplied in the application data sheet need not be provided elsewhere in the application except that the citizenship of each inventor must be provided in the oath or declaration under 37 CFR 1.63 even if this information is provided in the application data sheet. If the information in the application data sheet
-layout and content of patent applications filed under
+and the information submitted elsewhere, the application data sheet will control except for the naming of the inventors and the citizenship of the inventors.
-U.S.C. 111(a). These guidelines are suggested for
-the applicant’s use. See also 37 CFR 1.77 and MPEP
-§ 608.01(a). If an application data sheet (37 CFR
-.76) is used, data supplied in the application data
-sheet need not be provided elsewhere in the application
-except that the citizenship of each inventor must
-be provided in the oath or declaration under 37 CFR
-.63 even if this information is provided in the application
-data sheet (see 37 CFR 1.76(b)). If there is a
-discrepancy between the information submitted in an
-application data sheet and the information submitted
-elsewhere in the application, the application data
-sheet will control except for the naming of the inventors
-and the citizenship of the inventors. See MPEP §
-.05.
-A complete application filed under 35 U.S.C.
-(a) comprises a specification, including claims, as
-prescribed by 35 U.S.C. 112, drawings as prescribed
-by 35 U.S.C. 113, an oath or declaration as prescribed
-by 35 U.S.C. 115, and the prescribed filing fee,
-search fee, examination fee and application size fee.
-Arrangement and Contents of the Specification
+A complete application filed under 35 U.S.C. 111(a) comprises a specification, including claims, as prescribed by 35 U.S.C. 112, drawings as prescribed by 35 U.S.C. 113, an oath or declaration as prescribed by 35 U.S.C. 115, and the prescribed filing fee, search fee, examination fee and application size fee.
-The following order of arrangement is preferable in
-framing the specification. See also MPEP § 608.01(a).
-Each of the lettered items should appear in upper case,
-without underlining or bold type, as section headings.
-(A)Title of the invention. (See MPEP § 606).
+'''Arrangement and Contents of the Specification'''
-(B)Cross-reference to related applications. (See
+The following order of arrangement is preferable in framing the specification. Each of the lettered items should appear in upper case, without underlining or bold type, as section headings.
-MPEP § 201.11).
-(C)Statement regarding federally sponsored
+:(A)Title of the invention. (See MPEP § 606).
-research or development. (See MPEP § 310).
-(D)The names of the parties to a joint research
+:(B)Cross-reference to related applications. (See MPEP § 201.11).
-agreement (see 37 CFR 1.71(g)).
+:(C)Statement regarding federally sponsored research or development. (See MPEP § 310).
+:(D)The names of the parties to a joint research agreement (see 37 CFR 1.71(g)).
+:(E)  Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on compact disc and an incorporation-by-reference of the material on the compact disc. For computer listings filed on or prior to March 1, 2001, reference to a “Microfiche appendix” (see former 37 CFR 1.96(c) for Microfiche appendix).
+:(F)  Background of the invention. (See MPEP § 608.01(c)).
-(E)  Reference to a “Sequence Listing,” a table,
+::#Field of the invention.
-or a computer program listing appendix submitted on
+::#Description of related art including information disclosed under 37 CFR 1.97 and 1.98.
-compact disc and an incorporation-by-reference of the
-material on the compact disc. For computer listings
-filed on or prior to March 1, 2001, reference to a
-“Microfiche appendix” (see former 37 CFR 1.96(c)
-for Microfiche appendix).
+:(G)  Brief summary of the invention. (See MPEP § 608.01(d)).
+:(H)  Brief description of the several views of the drawing. (See MPEP § 608.01(f)).
-(F)  Background of the invention. (See MPEP §
+:(I)  Detailed description of the invention. (See MPEP § 608.01(g)).
-.01(c)).
-(1)Field of the invention.
+:(J)  Claim(s) (commencing on a separate sheet). (See MPEP § 608.01(i)-(p)).
-(2)Description of related art including information
+:(K)  Abstract of the Disclosure (commencing on a separate sheet). (See MPEP § 608.01(b)).
-disclosed under 37 CFR 1.97 and 37 CFR
-.98.
+:(L)  Sequence Listing, if on paper (see 37 CFR 1.821 through 1.825).
+'''II.GUIDELINES FOR DRAFTING A PROVISIONAL APPLICATION UNDER 35 U.S.C. 111(b)'''
-(G)  Brief summary of the invention. (See
+A provisional application should preferably conform to the arrangement guidelines for nonprovisional applications. The specification must, however, comply with the first paragraph of 35 U.S.C. 112 and refer to drawings, where necessary for an understanding of the invention. A provisional application does not need claims, oath or declaration. See MPEP § 201.04(b).
-MPEP § 608.01(d)).
+A cover sheet providing identifying information is required for a complete provisional application. The cover sheet must state the following:
+* it is for a provisional application
+* Identify and give the residence of the inventor or inventors
+* Title of the invention
+* Name and registration number of the attorney or agent (if applicable)
+* Docket number used by the person filing the application (if applicable)
+* Correspondence address
+* If there is a governmental interest, the cover sheet must include a statement as to rights to inventions made under Federally sponsored research and development (See MPEP § 310). 37 CFR 1.51(c)(1)(viii) requires the name of the Government agency and the contract number, if the invention was developed by or while under contract with an agency of the U.S. Government.
-(H)  Brief description of the several views of
+Provisional applications should not include an information disclosure statement. Since no substantive examination is made, such statements are unnecessary. The Office will not accept an information disclosure statement in a provisional application. Any such statement received, will be returned or disposed of at the convenience of the Office.
-the drawing. (See MPEP § 608.01(f)).
+This cover sheet information enables the Office to prepare a proper filing receipt and provides the Office of Initial Patent Examination (OIPE) with most of the information needed to process the provisional application. See MPEP § 201.04(b) for a sample cover sheet.
+'''III.THE APPLICATION'''
-(I)  Detailed description of the invention. (See
+The parts of the application may be included in a single document.
-MPEP § 608.01(g)).
+The paper standard requirements for papers submitted as part of the record of a patent application is covered in MPEP § 608.01 under the heading “Paper Requirement.”
+Determination of completeness of an application is covered in MPEP § 506 and § 601.01 - § 601.01(g).
-(J)  Claim(s) (commencing on a separate
+The elements of the application are secured together in a file wrapper, bearing appropriate identifying data including the application number and filing date (MPEP § 719).
-sheet). (See MPEP § 608.01(i)-(p)).
+A model, exhibit, or specimen is normally not admitted as part of the application, although it may be required in the prosecution of the application (37 CFR 1.91 and 1.93, MPEP § 608.03).
+Copies of an application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b) unless the application has been disposed of (see 37 CFR 1.53(e), (f) and (g)).
-(K)  Abstract of the Disclosure (commencing
+All applicants are requested to include a preliminary classification on newly filed patent applications. The preliminary classification, preferably class and subclass designations, should be identified in the upper right-hand corner of the letter of transmittal
-on a separate sheet). (See MPEP § 608.01(b)).
+accompanying the application papers, or in the application data sheet after the title of the invention (see 37 CFR 1.76(b)(3)), for example “Proposed Class 2, subclass 129.”
+===601.01 Complete Application===
+{{Statute|37 CFR 1.53. Application number, filing date, and completion of application.}}
+(a) Application number. Any papers received in the Patent
+and Trademark Office which purport to be an application for a
+patent will be assigned an application number for identification
+purposes.
-(L)  Sequence Listing, if on paper (see 37 CFR
+(b) Application filing requirements - Nonprovisional application.
-.821 through 1.825).
+The filing date of an application for patent filed under this
+section, except for a provisional application under paragraph (c)
+of this section or a continued prosecution application under paragraph
+(d) of this section, is the date on which a specification as
+prescribed by 35 U.S.C. 112 containing a description pursuant to §
+.71 and at least one claim pursuant to § 1.75, and any drawing
+required by § 1.81(a) are filed in the Patent and Trademark Office.
+No new matter may be introduced into an application after its filing
+date. A continuing application, which may be a continuation,
+divisional, or continuation-in-part application, may be filed under
+the conditions specified in 35
+U.S.C. 120, 121 or 365(c) and § 1.78(a).
-II.GUIDELINES FOR DRAFTING A PROVISIONAL
+<p style="padding-left: +20px;">(1) A continuation or divisional application that names as
-APPLICATION UNDER 35 U.S.C.
+inventors the same or fewer than all of
-(b)
+the inventors named in the
+prior application may be
+filed under this paragraph or paragraph
+(d) of this section.</p>
-A provisional application should preferably conform
+<p style="padding-left: +20px;">(2) A continuation-in-part application (which may disclose
-to the arrangement guidelines for nonprovisional
+and claim subject matter not disclosed in the prior application)
-applications. The specification must, however, comply
+or a continuation or divisional application naming an
-with the first paragraph of 35 U.S.C. 112 and refer
+inventor not named in the prior application must be filed under
-to drawings, where necessary for an understanding of
+this paragraph.</p>
-the invention. Unlike an application filed under 35
-U.S.C. 111(a), a provisional application does not need
-claims. Furthermore, no oath or declaration is
-required. See MPEP § 201.04(b).
-A cover sheet providing identifying information is
+(c) Application filing requirements - Provisional application.
-required for a complete provisional application. In accordance
+The filing date of a provisional application is the date on
-with 37 CFR 1.51(c)(1) the cover sheet must
+which a specification as prescribed by the first paragraph of
-state that it is for a provisional application, it must
+U.S.C. 112, and any drawing required by § 1.81(a) are filed in
-identify and give the residence of the inventor or inventors,
+the Patent and Trademark Office. No amendment, other than to
-and it must give a title of the invention. The
+make the provisional application comply with the patent statute
-cover sheet must also give the name and registration
+and all applicable regulations, may be made to the provisional
-number of the attorney or agent (if applicable), the
+application after the filing date of the provisional application.
-docket number used by the person filing the application
-(if applicable) and the correspondence address. If
-there is a governmental interest, the cover sheet must
-include a statement as to rights to inventions made under
-Federally sponsored research and development
-(See MPEP § 310). 37 CFR 1.51(c)(1)(viii) requires
-the name of the Government agency and the contract
-number, if the invention was developed by or while
-under contract with an agency of the U.S. Government.
+<p style="padding-left: +20px;">(1) A provisional application must also include the cover
+sheet required by § 1.51(c)(1), which may be an application data
+sheet (§ 1.76), or a cover letter identifying the application as a
+provisional application. Otherwise, the application will be treated
+as an application filed under paragraph (b) of this section.</p>
-Unlike applications filed under 35 U.S.C. 111(a),
+<p style="padding-left: +20px;">(2) An application for patent filed under paragraph (b) of
-provisional applications should not include an information
+this section may be converted to a provisional application and be
-disclosure statement. See 37 CFR 1.51(d).
+accorded the original filing date of the application filed under
-Since no substantive examination is made, such statements
+paragraph (b) of this section. The grant of such a request for conversion
-are unnecessary. The Office will not accept an
+will not entitle applicant to a refund of the fees that were
-information disclosure statement in a provisional
+properly paid in the application filed under paragraph (b) of this
-application. Any such statement received, will be
+section. Such a request for conversion must be accompanied by
-returned or disposed of at the convenience of the
+the processing fee set forth in § 1.17(q) and be filed prior to the
-Office.
+earliest of:</p>
-This cover sheet information enables the Office to
+<p style="padding-left: +40px;">(i) Abandonment of the application filed under paragraph
-prepare a proper filing receipt and provides the Office
+(b) of this section;</p>
-of Initial Patent Examination (OIPE) with most of
-the information needed to process the provisional
-application. See MPEP § 201.04(b) for a sample
-cover sheet.
-III.THE APPLICATION
+<p style="padding-left: +40px;">(ii) Payment of the issue fee on the application filed
+under paragraph (b) of this section;</p>
-The parts of the application may be included in a
+<p style="padding-left: +40px;">(iii) Expiration of twelve months after the filing date of
-single document.
+the application filed under paragraph (b) of this section; or</p>
-The paper standard requirements for papers submitted
+<p style="padding-left: +40px;">(iv) The filing of a request for a statutory invention
-as part of the record of a patent application is covered
+registration under § 1.293 in the application filed under paragraph
-in MPEP § 608.01 under the heading “Paper
+(b) of this section.</p>
-Requirement.”
-Determination of completeness of an application is
+<p style="padding-left: +20px;">(3) A provisional application filed under paragraph
-covered in MPEP § 506 and § 601.01 - § 601.01(g).
+(c) of this section may be converted to a nonprovisional application
+filed under paragraph (b) of this section and accorded the
-The elements of the application are secured
+original filing date of the provisional application. The conversion
-together in a file wrapper, bearing appropriate identifying
+of a provisional application to a nonprovisional application will
-data including the application number and filing
+not result in either the refund of any fee properly paid in the provisional
-date (MPEP § 719).
+application or the application of any such fee to the filing
+fee, or any other fee, for the nonprovisional application. Conversion
+of a provisional application to a nonprovisional application
+under this paragraph will result in the term of any patent to issue
+from the application being measured from at least the filing date
+of the provisional application for which conversion is requested.
+Thus, applicants should consider avoiding this adverse patent term
+impact by filing a nonprovisional application claiming the benefit
+of the provisional application under 35 U.S.C. 119(e) (rather than
+converting the provisional application into a nonprovisional application
+pursuant to this paragraph). A request to convert a provisional
+application to a nonprovisional application must be
+accompanied by the fee set forth in § 1.17(i) and an amendment
+including at least one claim as prescribed by the second paragraph
+of 35 U.S.C. 112, unless the provisional application under paragraph
+(c) of this section otherwise contains at least one claim as
+prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional
+application resulting from conversion of a provisional
+application must also include the filing fee, search fee, and examination
+fee for a nonprovisional application, an oath or declaration
+by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge
+required by § 1.16(f) if either the basic filing fee for a nonprovisional
+application or the oath or declaration was not present
+on the filing date accorded the resulting nonprovisional application
+(i.e., the filing date of the original provisional application). A
+request to convert a provisional application to a nonprovisional
+application must also be filed prior to the earliest of:</p>
+<p style="padding-left: +40px;">(i) Abandonment of the provisional application filed
+under paragraph (c) of this section; or</p>
+<p style="padding-left: +40px;">(ii) Expiration of twelve months after the filing date of
+the provisional application filed under paragraph (c) of this section.</p>
+<p style="padding-left: +20px;">(4) A provisional application is not entitled to the right of
+priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35
+U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under
+U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application
+based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding
+application disclosures containing nucleotide and/or amino
+acid sequences are not mandatory for provisional applications.</p>
+(d) Application filing requirements - Continued prosecution
+(nonprovisional) application.
-Note
+<p style="padding-left: +20px;">(1) A continuation or divisional application (but not a
+continuation-in-part) of a prior nonprovisional application may be
+filed as a continued prosecution application under this paragraph,
+provided that:</p>
-Provisional applications, MPEP § 201.04(b).
+<p style="padding-left: +40px;">(i) The application is for a design patent;</p>
-Divisional applications, MPEP § 201.06.
+<p style="padding-left: +40px;">(ii) The prior nonprovisional application is a design
+application that is complete as defined by § 1.51(b); and</p>
-Continuation applications, MPEP § 201.07.
+<p style="padding-left: +40px;">(iii) The application under this paragraph is filed
+before the earliest of:</p>
-Continued prosecution applications, MPEP §
+<p style="padding-left: +60px;">(A) Payment of the issue fee on the prior application,
-.06(d).
+unless a petition under § 1.313(c) is granted in the prior
+application;</p>
-Reissue applications, MPEP § 1401.
+<p style="padding-left: +60px;">(B) Abandonment of the prior application; or</p>
-Design applications, MPEP Chapter 1500.
+<p style="padding-left: +60px;">(C) Termination of proceedings on the prior application.</p>
-Plant applications, MPEP Chapter 1600.
+<p style="padding-left: +20px;">(2) The filing date of a continued prosecution application
+is the date on which a request on a separate paper for an application
+under this paragraph is filed. An application filed under this
+paragraph:</p>
-Ex Parte Reexamination, MPEP Chapter 2200.
+<p style="padding-left: +40px;">(i) Must identify the prior application;</p>
-Inter Partes Reexamination, MPEP Chapter 2600.
+<p style="padding-left: +40px;">(ii) Discloses and claims only subject matter disclosed
+in the prior application;</p>
-A model, exhibit, or specimen is normally not
+<p style="padding-left: +40px;">(iii) Names as inventors the same inventors named in
-admitted as part of the application, although it may be
+the prior application on the date the application under this paragraph
-required in the prosecution of the application (37 CFR
+was filed, except as provided in paragraph (d)(4) of this section;</p>
-.91 and 1.93, MPEP § 608.03).
-Copies of an application will be provided by the
+<p style="padding-left: +40px;">(iv) Includes the request for an application under this
-USPTO upon request and payment of the fee set forth
+paragraph, will utilize the file jacket and contents of the prior
-in 37 CFR 1.19(b) unless the application has been disposed
+application, including the specification, drawings and oath or declaration
-of (see 37 CFR 1.53(e), (f) and (g)).
+from the prior application, to constitute the new application,
+and will be assigned the application number of the prior
+application for identification purposes; and</p>
-All applicants are requested to include a preliminary
+<p style="padding-left: +40px;">(v) Is a request to expressly abandon the prior application
-classification on newly filed patent applications.
+as of the filing date of the request for an application under this
-The preliminary classification, preferably class and
+paragraph.</p>
-subclass designations, should be identified in the
-upper right-hand corner of the letter of transmittal
-accompanying the application papers, or in the application
-data sheet after the title of the invention (see 37
-CFR 1.76(b)(3)), for example “Proposed Class 2, subclass
-.”
-===601.01Complete Application===
+<p style="padding-left: +20px;">(3) The filing fee, search fee, and examination fee for
+a continued prosecution application filed under this paragraph are
+the basic filing fee as set forth in § 1.16(b), the search fee as set
+forth in § 1.16 (l), and the examination fee as set forth in §
+.16(p).</p>
-{{Statute|37 CFR 1.53. Application number, filing date, and completion of application.}}
+<p style="padding-left: +20px;">(4) An application filed under this paragraph may be filed
-(a) Application number. Any papers received in the Patent
+by fewer than all the inventors named in the prior application, provided
-and Trademark Office which purport to be an application for a
+that the request for an application under this paragraph
-patent will be assigned an application number for identification
+when filed is accompanied by a statement requesting deletion of
-purposes.
+the name or names of the person or persons who are not inventors
+of the invention being claimed in the new application. No person
-(b) Application filing requirements - Nonprovisional application.
+may be named as an inventor in an application filed under this
-The filing date of an application for patent filed under this
+paragraph who was not named as an inventor in the prior application
-section, except for a provisional application under paragraph (c)
+on the date the application under this paragraph was filed,
-of this section or a continued prosecution application under paragraph
+except by way of correction of inventorship under § 1.48.</p>
-(d) of this section, is the date on which a specification as
-prescribed by 35 U.S.C. 112 containing a description pursuant to §
-.71 and at least one claim pursuant to § 1.75, and any drawing
-required by § 1.81(a) are filed in the Patent and Trademark Office.
-No new matter may be introduced into an application after its filing
-date. A continuing application, which may be a continuation,
-divisional, or continuation-in-part application, may be filed under
-the conditions specified in 35
-U.S.C. 120, 121 or 365(c) and § 1.78(a).
-<p style="padding-left: +20px;">(1) A continuation or divisional application that names as
+<p style="padding-left: +20px;">(5) Any new change must be made in the form of an
-inventors the same or fewer than all of
+amendment to the prior application as it existed prior to the filing
-the inventors named in the
+of an application under this paragraph. No amendment in an application
-prior application may be
+under this paragraph (a continued prosecution application)
-filed under this paragraph or paragraph
+may introduce new matter or matter that would have been new
-(d) of this section.</p>
+matter in the prior application. Any new specification filed with
+the request for an application under this paragraph will not be considered
+part of the original application papers, but will be treated
+as a substitute specification in accordance with § 1.125.</p>
-<p style="padding-left: +20px;">(2) A continuation-in-part application (which may disclose
+<p style="padding-left: +20px;">(6) The filing of a continued prosecution application
-and claim subject matter not disclosed in the prior application)
+under this paragraph will be construed to include a waiver of confidentiality
-or a continuation or divisional application naming an
+by the applicant under 35
-inventor not named in the prior application must be filed under
+U.S.C. 122 to the extent that
-this paragraph.</p>
+any member of the public, who is entitled under the provisions of
+§ 1.14 to access to, copies of, or information concerning either the
+prior application or any continuing application filed under the provisions
+of this paragraph, may be given similar access to, copies
+of, or similar information concerning the other application or
+applications in the file jacket.</p>
-(c) Application filing requirements - Provisional application.
+<p style="padding-left: +20px;">(7) A request for an application under this paragraph is
-The filing date of a provisional application is the date on
+the specific reference required by 35
-which a specification as prescribed by the first paragraph of
+U.S.C. 120 to every application
-U.S.C. 112, and any drawing required by § 1.81(a) are filed in
+assigned the application number identified in such request.
-the Patent and Trademark Office. No amendment, other than to
+No amendment in an application under this paragraph may delete
-make the provisional application comply with the patent statute
+this specific reference to any prior application.</p>
-and all applicable regulations, may be made to the provisional
-application after the filing date of the provisional application.
-<p style="padding-left: +20px;">(1) A provisional application must also include the cover
+<p style="padding-left: +20px;">(8) In addition to identifying the application number of
-sheet required by § 1.51(c)(1), which may be an application data
+the prior application, applicant should furnish in the request for an
-sheet (§ 1.76), or a cover letter identifying the application as a
+application under this paragraph the following information relating
-provisional application. Otherwise, the application will be treated
+to the prior application to the best of his or her ability:</p>
-as an application filed under paragraph (b) of this section.</p>
-<p style="padding-left: +20px;">(2) An application for patent filed under paragraph (b) of
+<p style="padding-left: +40px;">(i) Title of invention;</p>
-this section may be converted to a provisional application and be
-accorded the original filing date of the application filed under
-paragraph (b) of this section. The grant of such a request for conversion
-will not entitle applicant to a refund of the fees that were
-properly paid in the application filed under paragraph (b) of this
-section. Such a request for conversion must be accompanied by
-the processing fee set forth in § 1.17(q) and be filed prior to the
-earliest of:</p>
-<p style="padding-left: +40px;">(i) Abandonment of the application filed under paragraph
+<p style="padding-left: +40px;">(ii) Name of applicant(s); and</p>
-(b) of this section;</p>
-<p style="padding-left: +40px;">(ii) Payment of the issue fee on the application filed
+<p style="padding-left: +40px;">(iii) Correspondence address.</p>
-under paragraph (b) of this section;</p>
-<p style="padding-left: +40px;">(iii) Expiration of twelve months after the filing date of
+<p style="padding-left: +20px;">(9) See § 1.103(b) for requesting a limited suspension
-the application filed under paragraph (b) of this section; or</p>
+of action in an application filed under this paragraph.</p>
-<p style="padding-left: +40px;">(iv) The filing of a request for a statutory invention
+(e) Failure to meet filing date requirements.
-registration under § 1.293 in the application filed under paragraph
-(b) of this section.</p>
-<p style="padding-left: +20px;">(3) A provisional application filed under paragraph
+<p style="padding-left: +20px;">(1) If an application deposited under paragraph (b), (c), or
-(c) of this section may be converted to a nonprovisional application
+(d) of this section does not meet the requirements of such paragraph
-filed under paragraph (b) of this section and accorded the
+to be entitled to a filing date, applicant will be so notified, if
-original filing date of the provisional application. The conversion
+a correspondence address has been provided, and given a period
-of a provisional application to a nonprovisional application will
+of time within which to correct the filing error. If, however, a
-not result in either the refund of any fee properly paid in the provisional
+request for an application under paragraph (d) of this section does
-application or the application of any such fee to the filing
+not meet the requirements of that paragraph because the application
-fee, or any other fee, for the nonprovisional application. Conversion
+in which the request was filed is not a design application, and
-of a provisional application to a nonprovisional application
+if the application in which the request was filed was itself filed on
-under this paragraph will result in the term of any patent to issue
+or after June 8, 1995, the request for an application under paragraph
-from the application being measured from at least the filing date
+(d) of this section will be treated as a request for continued
-of the provisional application for which conversion is requested.
+examination under § 1.114.</p>
-Thus, applicants should consider avoiding this adverse patent term
-impact by filing a nonprovisional application claiming the benefit
+<p style="padding-left: +20px;">(2) Any request for review of a notification pursuant to
-of the provisional application under 35 U.S.C. 119(e) (rather than
+paragraph (e)(1) of this section, or a notification that the original
-converting the provisional application into a nonprovisional application
+application papers lack a portion of the specification or drawing(
-pursuant to this paragraph). A request to convert a provisional
+s), must be by way of a petition pursuant to this paragraph
-application to a nonprovisional application must be
+accompanied by the fee set forth in § 1.17(f). In the absence of a
-accompanied by the fee set forth in § 1.17(i) and an amendment
+timely (§ 1.181(f)) petition pursuant to this paragraph, the filing
-including at least one claim as prescribed by the second paragraph
+date of an application in which the applicant was notified of a filing
-of 35 U.S.C. 112, unless the provisional application under paragraph
+error pursuant to paragraph (e)(1) of this section will be the
-(c) of this section otherwise contains at least one claim as
+date the filing error is corrected.</p>
-prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional
-application resulting from conversion of a provisional
-application must also include the filing fee, search fee, and examination
-fee for a nonprovisional application, an oath or declaration
-by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge
-required by § 1.16(f) if either the basic filing fee for a nonprovisional
-application or the oath or declaration was not present
-on the filing date accorded the resulting nonprovisional application
-(i.e., the filing date of the original provisional application). A
-request to convert a provisional application to a nonprovisional
-application must also be filed prior to the earliest of:</p>
-<p style="padding-left: +40px;">(i) Abandonment of the provisional application filed
+<p style="padding-left: +20px;">(3) If an applicant is notified of a filing error pursuant to
-under paragraph (c) of this section; or</p>
+paragraph (e)(1) of this section, but fails to correct the filing error
+within the given time period or otherwise timely (§ 1.181(f)) take
+action pursuant to this paragraph, proceedings in the application
+will be considered terminated. Where proceedings in an application
+are terminated pursuant to this paragraph, the application may
+be disposed of, and any filing fees, less the handling fee set forth
+in 1.21(n), will be refunded.</p>
-<p style="padding-left: +40px;">(ii) Expiration of twelve months after the filing date of
+(f) Completion of application subsequent to filing—
-the provisional application filed under paragraph (c) of this section.</p>
+Nonprovisional (including continued prosecution or reissue)
+application.
-<p style="padding-left: +20px;">(4) A provisional application is not entitled to the right of
+<p style="padding-left: +20px;">(1) If an application which has been accorded a filing date
-priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35
+pursuant to paragraph (b) or (d) of this section does not include
-U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under
+the basic filing fee, the search fee, or the examination fee, or if an
-U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application
+application which has been accorded a filing date pursuant to
-based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding
+paragraph (b) of this section does not include an oath or declaration
-application disclosures containing nucleotide and/or amino
+by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and
-acid sequences are not mandatory for provisional applications.</p>
+applicant has provided a correspondence address (§1.33(a)),
+applicant will be notified and given a period of time within which
+to pay the basic filing fee, search fee, and examination fee, file an
+oath or declaration in an application under paragraph (b) of this
+section, and pay the surcharge if required by § 1.16(f) to avoid
+abandonment.</p>
-(d) Application filing requirements - Continued prosecution
+<p style="padding-left: +20px;">(2) If an application which has been accorded a filing date
-(nonprovisional) application.
+pursuant to paragraph (b) of this section does not include the basic
+filing fee, the search fee, the examination fee, or an oath or declaration
-<p style="padding-left: +20px;">(1) A continuation or divisional application (but not a
+by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and
-continuation-in-part) of a prior nonprovisional application may be
+applicant has not provided a correspondence address (§ 1.33(a)),
-filed as a continued prosecution application under this paragraph,
+applicant has two months from the filing date of the application
-provided that:</p>
+within which to pay the basic filing fee, search fee, and examination
+fee, file an oath or declaration, and pay the surcharge required
+by § 1.16(f) to avoid abandonment.</p>
-<p style="padding-left: +40px;">(i) The application is for a design patent;</p>
+<p style="padding-left: +20px;">(3) If the excess claims fees required by §§ 1.16(h) and
+(i) and multiple dependent claim fee required by § 1.16(j) are not
+paid on filing or on later presentation of the claims for which the
+excess claims or multiple dependent claim fees are due, the fees
+required by §§ 1.16(h), (i) and (j) must be paid or the claims canceled
+by amendment prior to the expiration of the time period set
+for reply by the Office in any notice of fee deficiency. If the application
+size fee required by § 1.16(s) (if any) is not paid on filing or
+on later presentation of the amendment necessitating a fee or additional
+fee under § 1.16(s), the fee required by § 1.16(s) must be
+paid prior to the expiration of the time period set for reply by the
+Office in any notice of fee deficiency in order to avoid abandonment.</p>
-<p style="padding-left: +40px;">(ii) The prior nonprovisional application is a design
+<p style="padding-left: +20px;">(4) This paragraph applies to continuation or divisional
-application that is complete as defined by § 1.51(b); and</p>
+applications under paragraphs (b) or (d) of this section and to continuation-
+in-part applications under paragraph (b) of this section.
+See § 1.63(d) concerning the submission of a copy of the oath or
+declaration from the prior application for a continuation or divisional
+application under paragraph (b) of this section.</p>
-<p style="padding-left: +40px;">(iii) The application under this paragraph is filed
+<p style="padding-left: +20px;">(5) If applicant does not pay the basic filing fee during
-before the earliest of:</p>
+the pendency of the application, the Office may dispose of the
+application.</p>
-<p style="padding-left: +60px;">(A) Payment of the issue fee on the prior application,
+(g) Completion of application subsequent to filing—Provisional
-unless a petition under § 1.313(c) is granted in the prior
+application.
-application;</p>
-<p style="padding-left: +60px;">(B) Abandonment of the prior application; or</p>
+<p style="padding-left: +20px;">(1) If a provisional application which has been accorded a
+filing date pursuant to paragraph (c) of this section does not
+include the cover sheet required by § 1.51(c)(1) or the basic filing
+fee (§ 1.16(d)), and applicant has provided a correspondence
+address (§ 1.33(a)), applicant will be notified and given a period
+of time within which to pay the basic filing fee, file a cover sheet
+(§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to
+avoid abandonment.</p>
-<p style="padding-left: +60px;">(C) Termination of proceedings on the prior application.</p>
+<p style="padding-left: +20px;">(2) If a provisional application which has been accorded a
+filing date pursuant to paragraph (c) of this section does not
+include the cover sheet required by § 1.51(c)(1) or the basic filing
+fee (§ 1.16(d)), and applicant has not provided a correspondence
+address (§ 1.33(a)), applicant has two months from the filing date
+of the application within which to pay the basic filing fee, file a
+cover sheet (§ 1.51(c)(1)), and pay the surcharge required by §
+.16(g) to avoid abandonment.</p>
-<p style="padding-left: +20px;">(2) The filing date of a continued prosecution application
+<p style="padding-left: +20px;">(3) If the application size fee required by § 1.16(s) (if
-is the date on which a request on a separate paper for an application
+any) is not paid on filing, the fee required by § 1.16(s) must be
-under this paragraph is filed. An application filed under this
+paid prior to the expiration of the time period set for reply by the
-paragraph:</p>
+Office in any notice of fee deficiency in order to avoid abandonment.</p>
-<p style="padding-left: +40px;">(i) Must identify the prior application;</p>
+<p style="padding-left: +20px;">(4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.</p>
-<p style="padding-left: +40px;">(ii) Discloses and claims only subject matter disclosed
+(h) Subsequent treatment of application - Nonprovisional
-in the prior application;</p>
+(including continued prosecution) application. An application for
+a patent filed under paragraphs (b) or (d) of this section will not be
+placed on the files for examination until all its required parts,
+complying with the rules relating thereto, are received, except that
+certain minor informalities may be waived subject to subsequent
+correction whenever required.
+(i) Subsequent treatment of application - Provisional application.
+A provisional application for a patent filed under paragraph
+(c) of this section will not be placed on the files for
+examination and will become abandoned no later than twelve
+months after its filing date pursuant to 35
+U.S.C. 111(b)(1).
-<p style="padding-left: +40px;">(iii) Names as inventors the same inventors named in
+(j) Filing date of international application. The filing date
-the prior application on the date the application under this paragraph
+of an international application designating the United States of
-was filed, except as provided in paragraph (d)(4) of this section;</p>
+America is treated as the filing date in the United States of America
+under PCT Article 11(3), except as provided in 35
+U.S.C.
+(e).
+|}
-<p style="padding-left: +40px;">(iv) Includes the request for an application under this
-paragraph, will utilize the file jacket and contents of the prior
-application, including the specification, drawings and oath or declaration
-from the prior application, to constitute the new application,
-and will be assigned the application number of the prior
-application for identification purposes; and</p>
-<p style="padding-left: +40px;">(v) Is a request to expressly abandon the prior application
+CFR 1.53 relates to application numbers, filing dates, and completion of applications. An application number is assigned for identification purposes to any paper which purports to be an application for a patent, even if the application is incomplete or informal. The remaining sections of 37 CFR 1.53 treat nonprovisional applications filed under 35 U.S.C. 111(a) separately from provisional applications filed under 35 U.S.C. 111(b).
-as of the filing date of the request for an application under this
-paragraph.</p>
+CFR 1.53(d) sets forth the filing date requirements for a continued prosecution application (CPA) which is a nonprovisional application which must be filed on or after December 1, 1997. Only a continuation or divisional application (but not a continuation-in-part) may be filed as a CPA. See MPEP § 201.06(d). Effective July 14, 2003, CPA practice under 37 CFR 1.53(d) does not apply to utility and  plant applications. CPAs can only be filed in design            applications.
+====601.01(a) Nonprovisional Applications Filed Under 35 U.S.C. 111(a)====
-<p style="padding-left: +20px;">(3) The filing fee, search fee, and examination fee for
+The procedure for filing a nonprovisional application under 35 U.S.C. 111(a) is set forth in 37 CFR 1.53(b) and 37 CFR 1.53(d). 37 CFR 1.53(b) may be used to file any original, reissue, or substitute nonprovisional application and any continuing application, i.e., continuation, divisional, or continuation-in-part. Under 37 CFR 1.53(b), a filing date is assigned to a
-a continued prosecution application filed under this paragraph are
+nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the USPTO. Failure to meet any of the requirements in 37 CFR 1.53(b) will result in the application being denied a filing date. The filing date to be accorded such an application is the date on which all of the requirements of 37 CFR 1.53(b) are met.
-the basic filing fee as set forth in § 1.16(b), the search fee as set
-forth in § 1.16 (l), and the examination fee as set forth in §
-.16(p).</p>
-<p style="padding-left: +20px;">(4) An application filed under this paragraph may be filed
+CFR 1.53(d) may be used to file either a continuation or a divisional application (but not a continuation-in-part) of a design application. The prior nonprovisional application must be a design application that is complete as defined by 37 CFR 1.51(b). Any application filed under 37 CFR 1.53(d) must disclose and claim only subject matter disclosed in the prior nonprovisional application and must name as inventors the same or less than all of the inventors named in the prior nonprovisional application. Under 37 CFR 1.53(d), the filing date assigned is the date on which a request, on a separate paper, for an application under 37 CFR 1.53(d) is filed. An application filed under 37 CFR 1.53(d) must be filed before the earliest of:
-by fewer than all the inventors named in the prior application, provided
-that the request for an application under this paragraph
-when filed is accompanied by a statement requesting deletion of
-the name or names of the person or persons who are not inventors
-of the invention being claimed in the new application. No person
-may be named as an inventor in an application filed under this
-paragraph who was not named as an inventor in the prior application
-on the date the application under this paragraph was filed,
-except by way of correction of inventorship under § 1.48.</p>
-<p style="padding-left: +20px;">(5) Any new change must be made in the form of an
+:(A)payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application;
-amendment to the prior application as it existed prior to the filing
-of an application under this paragraph. No amendment in an application
-under this paragraph (a continued prosecution application)
-may introduce new matter or matter that would have been new
-matter in the prior application. Any new specification filed with
-the request for an application under this paragraph will not be considered
-part of the original application papers, but will be treated
-as a substitute specification in accordance with § 1.125.</p>
-<p style="padding-left: +20px;">(6) The filing of a continued prosecution application
+:(B)abandonment of the prior application; or
-under this paragraph will be construed to include a waiver of confidentiality
-by the applicant under 35
+:(C)termination of proceedings on the prior application.
-U.S.C. 122 to the extent that
-any member of the public, who is entitled under the provisions of
+The filing fee , search fee and examination fee for an application filed under 37 CFR 1.53(b) or 37 CFR 1.53(d) and the oath or declaration for an application filed under 37 CFR 1.53(b) can be submitted after the filing date. However, no amendment may introduce new matter into the disclosure of an application after its filing date.
-§ 1.14 to access to, copies of, or information concerning either the
-prior application or any continuing application filed under the provisions
-of this paragraph, may be given similar access to, copies
-of, or similar information concerning the other application or
-applications in the file jacket.</p>
-<p style="padding-left: +20px;">(7) A request for an application under this paragraph is
+CFR 1.53(e) provides for notifying applicant of any application which is incomplete under 37 CFR 1.53(b) or 37 CFR 1.53(d) and giving the applicant a time period to correct any omission. If the omission is not corrected within the time period given, the application will be returned or otherwise disposed of and a handling fee set forth in 37 CFR 1.21(n) will be retained from any refund of a filing fee.
-the specific reference required by 35
-U.S.C. 120 to every application
-assigned the application number identified in such request.
-No amendment in an application under this paragraph may delete
-this specific reference to any prior application.</p>
-<p style="padding-left: +20px;">(8) In addition to identifying the application number of
+CFR 1.53(f) provides that, where a filing date has been assigned to an application filed under 37 CFR 1.53(b) or 37 CFR 1.53(d), the applicant will be notified if a correspondence address has been provided and be given a period of time in which to file the missing fees, oath or declaration, and to pay any surcharge (37 CFR 1.16(f)) due in order to prevent abandonment of the application. The time period usually set is 2 months from the mailing date of notification by the USPTO. This time period may be extended under 37 CFR 1.136(a).
-the prior application, applicant should furnish in the request for an
-application under this paragraph the following information relating
-to the prior application to the best of his or her ability:</p>
-<p style="padding-left: +40px;">(i) Title of invention;</p>
+For applications filed on or after December 8, 2004 but prior to July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(b) or (d), if the search and/or examination fees are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is not required. For applications filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(b) or (d), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required.
-<p style="padding-left: +40px;">(ii) Name of applicant(s); and</p>
+If the required basic filing fee is not timely paid, or the processing and retention fee set forth in 37 CFR 1.21(l) is not paid during the pendency of the application, the application will be disposed of. Effective July 1, 2005, the processing and retention fee (formerly
+CFR 1.21(l)) practice has been eliminated. The basic filing fee (rather than just the processing and retention fee set forth in former 37 CFR 1.21(l)) must be paid within the pendency of a nonprovisional application in order to permit benefit of the application
+to be claimed under 35 U.S.C. 120, 121, or 365(c) in a subsequent nonprovisional or international application. The notification under 37 CFR 1.53(f) may be made simultaneously with any notification pursuant to 37 CFR 1.53(e). If no correspondence address is included in the application, applicant has 2 months from the filing date to file the fee(s), oath or declaration and to pay the required surcharge as set forth in 37 CFR 1.16(f) in order to prevent abandonment of the application.
-<p style="padding-left: +40px;">(iii) Correspondence address.</p>
+Copies of an application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b) unless the application has been disposed of (see 37 CFR 1.53(e) and (f)). Prior to July 1, 2005, the basic filing fee or the processing and retention fee must be paid in a nonprovisional application, if any claim for benefits under 35 U.S.C. 120, 121, or 365(c) based on that application is made in a subsequently filed copending nonprovisional application. Effective July 1, 2005, the basic filing fee must be paid within the pendency of a nonprovisional application in order to permit benefit of the application to be claimed under 35 U.S.C. 120, 121 or 365(c) in a subsequent nonprovisional or international application. See 37 CFR 1.78(a)(1).
-<p style="padding-left: +20px;">(9) See § 1.103(b) for requesting a limited suspension
+CFR 1.53(h) indicates that a patent application will not be forwarded for examination on the merits until all required parts have been received. 37 CFR 1.53(j) indicates that international applications filed under the Patent Cooperation Treaty which designate the United States of America are considered to have a United States filing date under PCT Article 11(3), except as provided in 35 U.S.C. 102(e), on the date the requirements of PCT Article 11(1)(i) to (iii) are
-of action in an application filed under this paragraph.</p>
+met.
-(e) Failure to meet filing date requirements.
+In accordance with the provisions of 35 U.S.C. 111(a) and 37 CFR 1.53(b), a filing date is granted to a nonprovisional application for patent, which includes at least a specification containing a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing referred to in the specification or required by 37 CFR 1.81(a),
+which is filed in the U.S. Patent and Trademark Office. If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or oath or declaration, applicant will be so notified and given a period of time within which to file the missing parts to complete the application and to pay the surcharge as set
+forth in 37 CFR 1.16(f) in order to prevent abandonment of the application.
-<p style="padding-left: +20px;">(1) If an application deposited under paragraph (b), (c), or
+Applicants should submit a copy of the notice(s) to file missing parts and the notice(s) of incomplete applications with the reply submitted to the U.S. Patent and Trademark Office. Applicants should also include the application number on all correspondence to the Office. These measures will aid the Office in matching papers to applications, thereby expediting
-(d) of this section does not meet the requirements of such paragraph
+the processing of applications.
-to be entitled to a filing date, applicant will be so notified, if
-a correspondence address has been provided, and given a period
-of time within which to correct the filing error. If, however, a
-request for an application under paragraph (d) of this section does
-not meet the requirements of that paragraph because the application
-in which the request was filed is not a design application, and
-if the application in which the request was filed was itself filed on
-or after June 8, 1995, the request for an application under paragraph
-(d) of this section will be treated as a request for continued
-examination under § 1.114.</p>
-<p style="padding-left: +20px;">(2) Any request for review of a notification pursuant to
+In order for the Office to so notify the applicant, a correspondence address must also be provided in the application. The correspondence address may be different from the mailing (post office) address of the applicant. For example, the address of applicant’s registered attorney or agent may be used as the correspondence address. If applicant fails to provide the Office with a correspondence address, the Office will be unable to provide applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f). In such a case, applicant will be considered to have constructive notice as of the filing date that the application must be completed within 2 months from the filing date before abandonment occurs per 37 CFR 1.53(f). This time period may be extended pursuant to 37 CFR 1.136.
-paragraph (e)(1) of this section, or a notification that the original
-application papers lack a portion of the specification or drawing(
-s), must be by way of a petition pursuant to this paragraph
-accompanied by the fee set forth in § 1.17(f). In the absence of a
-timely (§ 1.181(f)) petition pursuant to this paragraph, the filing
-date of an application in which the applicant was notified of a filing
-error pursuant to paragraph (e)(1) of this section will be the
-date the filing error is corrected.</p>
-<p style="padding-left: +20px;">(3) If an applicant is notified of a filing error pursuant to
+The oath or declaration filed in reply to such a notice under 37 CFR 1.53(f) must be executed by the inventors and must identify the specification and any amendment filed with the specification which includes subject matter not otherwise included in the specification (including claims) or drawings of the application as filed. See MPEP § 602. If an amendment
-paragraph (e)(1) of this section, but fails to correct the filing error
+is filed with the oath or declaration filed after the filing date of the application, it may be identified in the oath or declaration but may not include new matter. No new matter may be included after the filing date of the application. See MPEP §608.04(b). If the oath or declaration improperly refers to an amendment filed after the filing date of the application
-within the given time period or otherwise timely (§ 1.181(f)) take
+which contains new matter, a supplemental oath or declaration will be required pursuant to 37 CFR 1.67(b), deleting the reference to the amendment containing new matter. If an amendment is filed on the same day that the application filed under 37 CFR 1.53(b) is filed  it is a part of the original application papers and the question of new matter is not considered. Similarly, if the application papers are altered prior to execution of the oath or declaration and the filing of the application, new matter is not a consideration since the alteration is considered as part of the original disclosure.
-action pursuant to this paragraph, proceedings in the application
-will be considered terminated. Where proceedings in an application
-are terminated pursuant to this paragraph, the application may
-be disposed of, and any filing fees, less the handling fee set forth
-in 1.21(n), will be refunded.</p>
-(f) Completion of application subsequent to filing—
+====601.01(b) Provisional Applications FiledUnder 35 U.S.C. 111 (b)====
-Nonprovisional (including continued prosecution or reissue)
-application.
-<p style="padding-left: +20px;">(1) If an application which has been accorded a filing date
+A provisional application will be given a filing date
-pursuant to paragraph (b) or (d) of this section does not include
+in accordance with 37 CFR 1.53(c) as of the date the
-the basic filing fee, the search fee, or the examination fee, or if an
+written description and any necessary drawings are
-application which has been accorded a filing date pursuant to
+filed in the Office. The filing date requirements for a
-paragraph (b) of this section does not include an oath or declaration
+provisional application set forth in 37 CFR 1.53(c)
-by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and
+parallel the requirements for a nonprovisional application
-applicant has provided a correspondence address (§1.33(a)),
+set forth in 37 CFR 1.53(b), except that no claim
-applicant will be notified and given a period of time within which
+is required. Amendments, other than those required to
-to pay the basic filing fee, search fee, and examination fee, file an
+make the provisional application comply with applicable
-oath or declaration in an application under paragraph (b) of this
+regulations, are not permitted after the filing
-section, and pay the surcharge if required by § 1.16(f) to avoid
+date of the provisional application.
-abandonment.</p>
-<p style="padding-left: +20px;">(2) If an application which has been accorded a filing date
+When the specification or drawing are omitted,
-pursuant to paragraph (b) of this section does not include the basic
+CFR 1.53(e) requires that the applicant be notified and given a time period in which to submit the missing element to complete the filing. See MPEP § 601.01(f) and § 601.01(g) for treatment of applications
-filing fee, the search fee, the examination fee, or an oath or declaration
+filed without drawings, or filed without all figures
-by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and
+of drawings, respectively.
-applicant has not provided a correspondence address (§ 1.33(a)),
-applicant has two months from the filing date of the application
-within which to pay the basic filing fee, search fee, and examination
-fee, file an oath or declaration, and pay the surcharge required
-by § 1.16(f) to avoid abandonment.</p>
-<p style="padding-left: +20px;">(3) If the excess claims fees required by §§ 1.16(h) and
+CFR 1.53(c)(1) requires all provisional applications
-(i) and multiple dependent claim fee required by § 1.16(j) are not
+be filed with a cover sheet, which may be an
-paid on filing or on later presentation of the claims for which the
+application data sheet (37 CFR 1.76) or a cover letter
-excess claims or multiple dependent claim fees are due, the fees
+identifying the application as a provisional application.
-required by §§ 1.16(h), (i) and (j) must be paid or the claims canceled
+The Office will treat an application as having
-by amendment prior to the expiration of the time period set
+been filed under paragraph (b), unless the application
-for reply by the Office in any notice of fee deficiency. If the application
+is clearly identified as a provisional application. A
-size fee required by § 1.16(s) (if any) is not paid on filing or
+provisional application, which is identified as such,
-on later presentation of the amendment necessitating a fee or additional
+but which does not have a complete cover sheet as
-fee under § 1.16(s), the fee required by § 1.16(s) must be
+required by 37 CFR 1.51(c)(1) will be treated as a
-paid prior to the expiration of the time period set for reply by the
+provisional application. However, the complete cover
-Office in any notice of fee deficiency in order to avoid abandonment.</p>
+sheet and a surcharge will be required to be submitted
+at a later date in conformance with 37 CFR 1.53(g).
-<p style="padding-left: +20px;">(4) This paragraph applies to continuation or divisional
+When the provisional application does not have a
-applications under paragraphs (b) or (d) of this section and to continuation-
+complete cover sheet or the appropriate fee, the applicant
-in-part applications under paragraph (b) of this section.
+will be notified pursuant to 37 CFR 1.53(g) and
-See § 1.63(d) concerning the submission of a copy of the oath or
+given a time period in which to provide the necessary
-declaration from the prior application for a continuation or divisional
+fee or cover sheet and to pay the surcharge as set forth
-application under paragraph (b) of this section.</p>
+in 37 CFR 1.16(g) in order to avoid abandonment
+of the application. The time period will usually be set
+at 2 months from the date of notification. This time
+period may be extended under 37 CFR 1.136(a). If the
+filing fee is not timely paid, the Office may dispose of
+the provisional application. If no correspondence
+address has been provided, applicant has 2 months
+from the filing date to file the basic filing fee, cover
+sheet, and to pay the surcharge as set forth in 37 CFR
+.16(g) in order to avoid abandonment of the provisional
+application. Copies of a provisional application
+will be provided by the USPTO upon request and
+payment of the fee set forth in 37 CFR 1.19(b) unless
+the provisional application has been disposed of (see
+CFR 1.53(e) and (g)).
-<p style="padding-left: +20px;">(5) If applicant does not pay the basic filing fee during
+The basic filing fee must be paid in a provisional
-the pendency of the application, the Office may dispose of the
+application on filing or within the time period set
-application.</p>
+forth in 37 CFR 1.53(g), and the provisional application
+must be entitled to a filing date under 37 CFR
+.53(c), if any claim for benefits under 35 U.S.C.
+(e) based on that application is made in a subsequently
+filed nonprovisional application. 37 CFR
+.78(a)(4).
-(g) Completion of application subsequent to filing—Provisional
+CFR 1.53(e)(2) requires that any request for
-application.
+review of a refusal to accord an application a filing
+date be made by way of a petition accompanied by the
-<p style="padding-left: +20px;">(1) If a provisional application which has been accorded a
+fee set forth in 37
-filing date pursuant to paragraph (c) of this section does not
+CFR 1.17(f) (see MPEP §
-include the cover sheet required by § 1.51(c)(1) or the basic filing
+.02).
-fee (§ 1.16(d)), and applicant has provided a correspondence
-address (§ 1.33(a)), applicant will be notified and given a period
-of time within which to pay the basic filing fee, file a cover sheet
-(§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to
-avoid abandonment.</p>
-<p style="padding-left: +20px;">(2) If a provisional application which has been accorded a
+====601.01(c) Conversion to or From a Provisional Application====
-filing date pursuant to paragraph (c) of this section does not
-include the cover sheet required by § 1.51(c)(1) or the basic filing
-fee (§ 1.16(d)), and applicant has not provided a correspondence
-address (§ 1.33(a)), applicant has two months from the filing date
-of the application within which to pay the basic filing fee, file a
-cover sheet (§ 1.51(c)(1)), and pay the surcharge required by §
-.16(g) to avoid abandonment.</p>
-<p style="padding-left: +20px;">(3) If the application size fee required by § 1.16(s) (if
+======I.CONVERSION FROM A NONPROVISIONAL APPLICATION TO A PROVISIONAL APPLICATION======
-any) is not paid on filing, the fee required by § 1.16(s) must be
-paid prior to the expiration of the time period set for reply by the
-Office in any notice of fee deficiency in order to avoid abandonment.</p>
-<p style="padding-left: +20px;">(4) If applicant does not pay the basic filing fee during
+{{Statute|37 CFR 1.53. Application number, filing date, and completion of application.}}
-the pendency of the application, the Office may dispose of the
+{{Ellipsis}}
-application.</p>
+(c)(2) An application for patent filed under paragraph (b) of
+this section may be converted to a provisional application and be
+accorded the original filing date of the application filed under
+paragraph (b) of this section. The grant of such a request for conversion
+will not entitle applicant to a refund of the fees that were
+properly paid in the application filed under paragraph (b) of this
+section. Such a request for conversion must be accompanied by
+the processing fee set forth in § 1.17(q) and be filed prior to the
+earliest of:
+{{tab1}}(i) Abandonment of the application filed under paragraph (b) of this section;</p>
-(h) Subsequent treatment of application - Nonprovisional
+{{tab1}}(ii) Payment of the issue fee on the application filed under paragraph (b) of this section;</p>
-(including continued prosecution) application. An application for
-a patent filed under paragraphs (b) or (d) of this section will not be
-placed on the files for examination until all its required parts,
-complying with the rules relating thereto, are received, except that
-certain minor informalities may be waived subject to subsequent
-correction whenever required.
-(i) Subsequent treatment of application - Provisional application.
+{{tab1}}(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or</p>
-A provisional application for a patent filed under paragraph
-(c) of this section will not be placed on the files for
-examination and will become abandoned no later than twelve
-months after its filing date pursuant to 35
-U.S.C. 111(b)(1).
-(j) Filing date of international application. The filing date
+{{tab1}}(iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.</p>
-of an international application designating the United States of
-America is treated as the filing date in the United States of America
-under PCT Article 11(3), except as provided in 35
-U.S.C.
-(e).
 |}
-CFR 1.53 relates to application numbers, filing
+An application filed under 37 CFR 1.53(b) may be
-dates, and completion of applications. 37 CFR 1.53(a)
+converted to a provisional application in accordance
-indicates that an application number is assigned for
+with the procedure described in 37 CFR 1.53(c)(2).
-identification purposes to any paper which purports to
+The procedure requires the filing of a request for conversion
-be an application for a patent, even if the application
+and the processing fee set forth in 37 CFR
-is incomplete or informal. The remaining sections of
+.17(q). Filing of the request in the nonprovisional
-CFR 1.53 treat nonprovisional applications filed
+application is required prior to the abandonment of
-under 35 U.S.C. 111(a) separately from provisional
+the 37 CFR 1.53(b) application, the payment of the
-applications filed under 35
+issue fee, the expiration of 12 months after the filing
-U.S.C. 111(b).
+date of the 37 CFR 1.53(b) application, or the filing of
+a request for a statutory invention registration under
-CFR 1.53(d) sets forth the filing date requirements
+CFR 1.293, whichever event is earlier. The grant of
-for a continued prosecution application (CPA).
+any such request does not entitle applicant to a refund
-A CPA is a nonprovisional application which must be
+of the fees properly paid in the application filed under
-filed on or after December 1, 1997. Only a continuation
+CFR 1.53(b).
-or divisional application (but not a continuation-
-in-part) may be filed as a CPA. See MPEP §
-.06(d). Effective July 14, 2003, CPA practice
-under 37 CFR 1.53(d) does not apply to utility and
-plant applications. CPAs can only be filed in design
-applications.
-====601.01(a) Nonprovisional Applications Filed Under 35 U.S.C. 111(a)====
-The procedure for filing a nonprovisional application
+Converting a nonprovisional application to a provisional
-under 35 U.S.C. 111(a) is set forth in 37 CFR
+application will not avoid the publication of the
-.53(b) and 37 CFR 1.53(d). 37 CFR 1.53(b) may be
+nonprovisional application unless the request to convert
-used to file any original, reissue, or substitute nonprovisional
+is recognized in sufficient time to permit the
-application and any continuing application,
+appropriate officials to remove the nonprovisional
-i.e., continuation, divisional, or continuation-in-part.
+application from the publication process. The Office
-Under 37 CFR 1.53(b), a filing date is assigned to a
+cannot ensure that it can remove an application from
-nonprovisional application as of the date a specification
+publication or avoid publication of application information
-containing a description and claim and any necessary
+any time after the publication process for the
-drawings are filed in the U.S. Patent and
+application has been initiated. For information on procedures
-Trademark Office (USPTO). Failure to meet any of
+for removing an application from publication,
-the requirements in 37 CFR 1.53(b) will result in the
+see MPEP § 1120.
-application being denied a filing date. The filing date
-to be accorded such an application is the date on
-which all of the requirements of 37 CFR 1.53(b) are
-met.
-CFR 1.53(d) may be used to file either a continuation
+A provisional application is not entitled to claim
-or a divisional application (but not a continuation-
+priority to or benefit of a prior-filed application under
-in-part) of a design application. The prior
+U.S.C. 119, 120, 121, or 365. See MPEP §
-nonprovisional application must be a design application
+.04(b). After the nonprovisonal application has
-that is complete as defined by 37 CFR 1.51(b).
+been converted to a provisional application, any priority
-Any application filed under 37 CFR 1.53(d) must disclose
+or benefit claims submitted in the nonprovisional
-and claim only subject matter disclosed in the
+application will be disregarded.
-prior nonprovisional application and must name as
-inventors the same or less than all of the inventors
-named in the prior nonprovisional application. Under
-CFR 1.53(d), the filing date assigned is the date on
-which a request, on a separate paper, for an application
-under 37 CFR 1.53(d) is filed. An application
-filed under 37 CFR 1.53(d) must be filed before the
-earliest of:
-(A)payment of the issue fee on the prior application,
+Applicants who wish to file a request for conversion
-unless a petition under 37 CFR 1.313(c) is
+under 37 CFR 1.53(c)(2) by mail should designate
-granted in the prior application;
+“Mail Stop Conversion” as part of the U. S.
+Patent and Trademark Office address.
-(B)abandonment of the prior application; or
+======II. CONVERSION FROM A PROVISIONAL APPLICATION TO A NONPROVISIONAL APPLICATION======
-(C)termination of proceedings on the prior application.
+{{Statute|37 CFR 1.53. Application number, filing date, and completion of application.}}
+{{Ellipsis}}
+(3) A provisional application filed under paragraph (c) of
-The filing fee , search fee and examination fee
+this section may be converted to a nonprovisional application filed
-for an application filed under 37 CFR 1.53(b) or 37
+under paragraph (b) of this section and accorded the original filing
-CFR 1.53(d) and the oath or declaration for an application
+date of the provisional application. The conversion of a provisional
-filed under 37 CFR 1.53(b) can be submitted
+application to a nonprovisional application will not result in
-after the filing date. However, no amendment may
+either the refund of any fee properly paid in the provisional application
-introduce new matter into the disclosure of an application
+or the application of any such fee to the filing fee, or any
-after its filing date.
+other fee, for the nonprovisional application. Conversion of a provisional
+application to a nonprovisional application under this
-CFR 1.53(e) provides for notifying applicant of
+paragraph will result in the term of any patent to issue from the
-any application which is incomplete under 37 CFR
+application being measured from at least the filing date of the provisional
-.53(b) or 37 CFR 1.53(d) and giving the applicant a
+application for which conversion is requested. Thus,
-time period to correct any omission. If the omission is
+applicants should consider avoiding this adverse patent term
-not corrected within the time period given, the application
+impact by filing a nonprovisional application claiming the benefit
-will be returned or otherwise disposed of and a
+of the provisional application under 35 U.S.C. 119(e) (rather than
-handling fee set forth in 37 CFR 1.21(n) will be
+converting the provisional application into a nonprovisional application
-retained from any refund of a filing fee.
+pursuant to this paragraph). A request to convert a provisional
+application to a nonprovisional application must be
-CFR 1.53(f) provides that, where a filing date
+accompanied by the fee set forth in § 1.17(i) and an amendment
-has been assigned to an application filed under 37
+including at least one claim as prescribed by the second paragraph of 35
-CFR 1.53(b) or 37 CFR 1.53(d), the applicant will be
+U.S.C. 112, unless the provisional application under paragraph
-notified if a correspondence address has been provided
+(c) of this section otherwise contains at least one claim as
-and be given a period of time in which to file
+prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional
-the missing fees, oath or declaration, and to pay
+application resulting from conversion of a provisional
-any surcharge (37 CFR 1.16(f)) due in order to
+application must also include the filing fee, search fee, and examination
-prevent abandonment of the application. The time
+fee for a nonprovisional application, an oath or declaration
-period usually set is 2 months from the mailing date
+by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge
-of notification by the USPTO. This time period may
+required by § 1.16(f) if either the basic filing fee for a nonprovisional
-be extended under 37 CFR 1.136(a).
+application or the oath or declaration was not present
+on the filing date accorded the resulting nonprovisional application
+(i.e., the filing date of the original provisional application). A
+request to convert a provisional application to a nonprovisional
+application must also be filed prior to the earliest of:
-For applications filed on or after December 8, 2004
-but prior to July 1, 2005, which have been accorded a
-filing date under 37 CFR 1.53(b) or (d), if the search
-and/or examination fees are paid on a date later than
-the filing date of the application, the surcharge under
-CFR 1.16(f) is not required. For applications filed
-on or after July 1, 2005, which have been accorded a
-filing date under 37 CFR 1.53(b) or (d), if any of the
-basic filing fee, the search fee, or the examination fee
-are paid on a date later than the filing date of the
-application, the surcharge under 37 CFR 1.16(f) is
-required.
-If the required basic filing fee is not timely paid, or
-the processing and retention fee set forth in 37 CFR
-.21(l) is not paid during the pendency of the application,
-the application will be disposed of. Effective
-July 1, 2005, the processing and retention fee (formerly
-CFR 1.21(l)) practice has been eliminated.
-The basic filing fee (rather than just the processing
-and retention fee set forth in former 37 CFR 1.21(l))
-must be paid within the pendency of a nonprovisional
-application in order to permit benefit of the application
-to be claimed under 35 U.S.C. 120, 121, or 365(c)
-in a subsequent nonprovisional or international application.
-The notification under 37 CFR 1.53(f) may
-be made simultaneously with any notification pursuant
-to 37 CFR 1.53(e). If no correspondence address
-is included in the application, applicant has 2 months
-from the filing date to file the fee(s), oath or declaration
-and to pay the required surcharge as set
-forth in 37 CFR 1.16(f) in order to prevent abandonment
-of the application.
-Copies of an application will be provided by the
-USPTO upon request and payment of the fee set forth
-in 37 CFR 1.19(b) unless the application has been disposed
-of (see 37
-CFR 1.53(e) and (f)). Prior to July
-, 2005, the basic filing fee or the processing and
-retention fee must be paid in a nonprovisional application,
-if any claim for benefits under 35 U.S.C. 120,
-, or 365(c) based on that application is made in a
-subsequently filed copending nonprovisional application.
-Effective July 1, 2005, the basic filing fee
-must be paid within the pendency of a nonprovisional
-application in order to permit benefit of the application
-to be claimed under 35 U.S.C. 120, 121 or 365(c)
-in a subsequent nonprovisional or international application.
-See 37 CFR 1.78(a)(1).
-CFR 1.53(h) indicates that a patent application
+{{tab1}}(i) Abandonment of the provisional application filed under paragraph (c) of this section; or</p>
-will not be forwarded for examination on the merits
-until all required parts have been received. 37 CFR
-.53(j) indicates that international applications filed
-under the Patent Cooperation Treaty which designate
-the United States of America are considered to have a
-United States filing date under PCT Article 11(3),
-except as provided in 35 U.S.C. 102(e), on the date
-the requirements of PCT Article 11(1)(i) to (iii) are
-met.
-In accordance with the provisions of 35 U.S.C.
+{{tab1}}(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.</p>
-(a) and 37 CFR 1.53(b), a filing date is granted to
+|}
-a nonprovisional application for patent, which
-includes at least a specification containing a description
-pursuant to 37 CFR 1.71 and at least one claim
-pursuant to 37 CFR 1.75, and any drawing referred to
-in the specification or required by 37 CFR 1.81(a),
-which is filed in the U.S. Patent and Trademark
-Office. If an application which has been accorded a
-filing date does not include the appropriate filing
-fee, search fee, examination fee, or oath or declaration,
-applicant will be so notified and given a period
-of time within which to file the missing parts to complete
-the application and to pay the surcharge as set
-forth in 37 CFR 1.16(f) in order to prevent abandonment
-of the application.
-Applicants should submit a copy of the notice(s) to
-file missing parts and the notice(s) of incomplete
-applications with the reply submitted to the U.S.
-Patent and Trademark Office. Applicants should also
-include the application number on all correspondence
-to the Office. These measures will aid the Office in
-matching papers to applications, thereby expediting
-the processing of applications.
-In order for the Office to so notify the applicant, a
+An application filed under 37 CFR 1.53(c) may be
-correspondence address must also be provided in the
+converted to a nonprovisional application in accordance
-application. The correspondence address may be different
+with the procedure described in 37 CFR
-from the mailing (post office) address of the
+.53(c)(3). Applicants should carefully consider the
-applicant. For example, the address of applicant’s registered
+patent term consequences of requesting conversion
-attorney or agent may be used as the correspondence
+rather than simply filing a nonprovisional application
-address. If applicant fails to provide the
+claiming the benefit of the filing date of the provisional
-Office with a correspondence address, the Office will
+application under 35 U.S.C. 119(e). Claiming
-be unable to provide applicant with notification to
+the benefit of the provisional application under 35
-complete the application and to pay the surcharge as
+U.S.C. 119(e) is less expensive and will result in a
-set forth in 37 CFR 1.16(f). In such a case, applicant
+longer patent term. The procedure requires the filing
-will be considered to have constructive notice as
+of a request for the conversion of the provisional
-of the filing date that the application must be completed
+application to a nonprovisional application and the fee
-within 2 months from the filing date before
+set forth in 37 CFR 1.17(i) as well as the basic filing
+fee , search fee, and examination fee for the nonprovisional
+application. In addition, if the provisional
+application was not filed with an executed oath or
+declaration and the appropriate fees for a nonprovisional
+application, the surcharge set forth in 37
+CFR 1.16(f) is required. See MPEP §
-abandonment occurs per 37 CFR 1.53(f). This time
+.01(a). Filing of the request for conversion in the
-period may be extended pursuant to 37 CFR 1.136.
+provisional application is required prior to the abandonment
+of the provisional application or the expiration
+of 12 months after the filing date of the 37 CFR
+.53(c) application, whichever event is earlier. The
+grant of any such request does not entitle applicant to
+a refund of the fees properly paid in the application
+filed under 37 CFR 1.53(c).
-The oath or declaration filed in reply to such a
+Applicants who wish to file a request for conversion
-notice under 37 CFR 1.53(f) must be executed by the
+under 37 CFR 1.53(c)(3) by mail should designate
-inventors and must identify the specification and any
+“Mail Stop Conversion” as part of the U. S.
-amendment filed with the specification which
+Patent and Trademark Office address.
-includes subject matter not otherwise included in the
-specification (including claims) or drawings of the
-application as filed. See MPEP § 602. If an amendment
-is filed with the oath or declaration filed after
-the filing date of the application, it may be identified
-in the oath or declaration but may not include new
-matter. No new matter may be included after the filing
-date of the application. See MPEP §
-.04(b). If the
-oath or declaration improperly refers to an amendment
-filed after the filing date of the application
-which contains new matter, a supplemental oath or
-declaration will be required pursuant to 37 CFR
-.67(b), deleting the reference to the amendment containing
-new matter. If an amendment is filed on the
-same day that the application filed under 37 CFR
-.53(b) is filed  it is a part of the original application
-papers and the question of new matter is not
-considered. Similarly, if the application papers are
-altered prior to execution of the oath or declaration
-and the filing of the application, new matter is not a
-consideration since
-the alteration is considered as part
-of the original disclosure.
-.01(b)Provisional Applications FiledUnder 35 U.S.C. 111(b) [R-3]
+====601.01(d) Application Filed Without AllPages of Specification====
-A provisional application will be given a filing date
+The Office of Initial Patent Examination (OIPE)
-in accordance with 37 CFR 1.53(c) as of the date the
+reviews application papers to determine whether all of
-written description and any necessary drawings are
+the pages of specification are present in the application.
-filed in the Office. The filing date requirements for a
+If the application is filed without all of the
-provisional application set forth in 37 CFR 1.53(c)
+page(s) of the specification, but containing something
-parallel the requirements for a nonprovisional application
+that can be construed as a written description, at least
-set forth in 37 CFR 1.53(b), except that no claim
+one drawing figure, if necessary under 35 U.S.C. 113(first sentence), and, in a nonprovisional application,
-is required. Amendments, other than those required to
+at least one claim, OIPE will mail a “Notice of Omitted
-make the provisional application comply with applicable
+Items” indicating that the application papers so
-regulations, are not permitted after the filing
+deposited have been accorded a filing date, but are
-date of the provisional application.
+lacking some page(s) of the specification.
+If the application does not contain anything that
+can be construed as a written description, OIPE will
+mail a Notice of Incomplete Application indicating
+that the application lacks the specification required by
+U.S.C. 112 and no filing date is granted.
+======I. APPLICATION ENTITLED TO FILING DATE======
-When the specification or drawing are omitted,
+The mailing of a “Notice of Omitted Item(s)” will
+permit the applicant to:
-CFR 1.53(e) requires that the applicant be
-notified
-and given a
-time period in which to submit
-the missing element
-to
-complete the filing. See MPEP
-§
-.01(f) and § 601.01(g) for treatment of applications
-filed without drawings, or filed without all figures
-of drawings, respectively.
-CFR 1.53(c)(1) requires all provisional applications
+(A) promptly establish prior receipt in the USPTO
-be filed with a cover sheet, which may be an
+of the page(s) at issue. An applicant asserting that the
-application data sheet (37 CFR 1.76) or a cover letter
+page(s) was in fact received by the USPTO with the
-identifying the application as a provisional application.
+application papers must, within 2 months from the
-The Office will treat an application as having
+date of the “Notice of Omitted Item(s),” file a petition
-been filed under paragraph (b), unless the application
+under 37 CFR 1.53(e) with the petition fee set forth in
-is clearly identified as a provisional application. A
+CFR 1.17(f), along with evidence of such deposit
-provisional application, which is identified as such,
+(37 CFR 1.181(f)). The petition fee will be refunded if
-but which does not have a complete cover sheet as
+it is determined that the page(s) was in fact received
-required by 37 CFR 1.51(c)(1) will be treated as a
+by the USPTO with the application papers deposited
-provisional application. However, the complete cover
+on filing. The 2-month period is not extendable under
-sheet and a surcharge will be required to be submitted
+CFR 1.136;
-at a later date in conformance with 37 CFR 1.53(g).
-When the provisional application does not have a
+(B) promptly submit the omitted page(s) in a nonprovisional
-complete cover sheet or the appropriate fee, the applicant
+application and accept the date of such
-will be notified pursuant to 37 CFR 1.53(g) and
+submission as the application filing date. An applicant
-given a time period in which to provide the necessary
+desiring to submit the omitted page(s) in a nonprovisional
-fee or cover sheet and to pay the surcharge as set forth
+application and accept the date of such submission
-in 37 CFR 1.16(g) in order to avoid abandonment
+as the application filing date must, within 2
-of the application. The time period will usually be set
+months from the date of the “Notice of Omitted
-at 2 months from the date of notification. This time
+Item(s),” file any omitted page(s) with an oath or declaration in compliance with 37 CFR 1.63 and 37 CFR
-period may be extended under 37 CFR 1.136(a). If the
+.64 referring to such page(s) and a petition under 37
-filing fee is not timely paid, the Office may dispose of
+CFR 1.182 with the petition fee set forth in 37 CFR
-the provisional application. If no correspondence
+.17(f), requesting the later filing date (37 CFR
-address has been provided, applicant has 2 months
+.181(f)). The 2-month period is not extendable under
-from the filing date to file the basic filing fee, cover
+CFR 1.136; or
-sheet, and to pay the surcharge as set forth in 37 CFR
-.16(g) in order to avoid abandonment of the provisional
-application. Copies of a provisional application
-will be provided by the USPTO upon request and
-payment of the fee set forth in 37 CFR 1.19(b) unless
-the provisional application has been disposed of (see
-CFR 1.53(e) and (g)).
-The basic filing fee must be paid in a provisional
-application on filing or within the time period set
-forth in 37 CFR 1.53(g), and the provisional application
-must be entitled to a filing date under 37 CFR
-.53(c), if any claim for benefits under 35 U.S.C.
-(e) based on that application is made in a subsequently
-filed nonprovisional application. 37 CFR
-.78(a)(4).
+(C) accept the application as deposited in the
+USPTO. Applicant may accept the application as
+deposited in the USPTO by either:
+(1) not filing a petition under 37 CFR 1.53(e)
+or 37 CFR 1.182 (and the required petition fee) as discussed
+above within 2 months of the date of the
+“Notice of Omitted Item(s)”. The failure to file a petition
+under 37 CFR 1.53(e) or 37 CFR 1.182 will be
+treated as constructive acceptance by the applicant of
+the application as deposited in the USPTO. The application
+will maintain the filing date as of the date of
+deposit of the application papers in the USPTO, and
+the original application papers (i.e., the original disclosure
+of the invention) will include only those application
+papers present in the USPTO on the date of
+deposit. Amendment of the specification is required in
+a nonprovisional application to renumber the pages
+consecutively and cancel any incomplete sentences
+caused by the absence of the omitted page(s). Such
+amendment should be by way of preliminary amendment
+submitted prior to the first Office action to avoid
+delays in the prosecution of the application, or
+(2) filing an amendment under 37 CFR
+.57(a). If an application was filed on or after September
+, 2004, and contains a claim under 37 CFR 1.55for priority of a prior-filed foreign application, or a
+claim under 37 CFR 1.78 for the benefit of a prior-
+filed provisional, nonprovisional, or international
+application that was present on the filing date of the
+application, and the omitted portion of the specification
+was inadvertently omitted from the application
+and is completely contained in the prior-filed application,
+applicant may submit an amendment to include
+the inadvertently omitted portion of the specification
+pursuant to 37 CFR 1.57(a). Such amendment should
+be by way of a preliminary amendment and the preliminary
+amendment must be submitted within 2
+months from the date of the “Notice of Omitted
+Item(s).” The amendment should be identified as an
+amendment pursuant to 37 CFR 1.57(a) and must
+comply with the requirements of 37 CFR 1.57(a) and
+CFR 1.121. See MPEP § 201.17. The application
+will maintain the filing date as of the date of deposit
+of the original application papers in the USPTO. The
+original application papers (i.e., the original disclosure
+of the invention) will include only those application
+papers present in the USPTO on the original date
+of deposit. The 2-month period is not extendable
+under 37 CFR 1.136.
+Any petition under 37 CFR 1.53(e) or 37 CFR
+.182 not filed within the 2-month period set in the
-CFR 1.53(e)(2) requires that any request for
+“Notice of Omitted Item(s)” may be dismissed as
-review of a refusal to accord an application a filing
+untimely. 37 CFR 1.181(f). Under the adopted procedure,
-date be made by way of a petition accompanied by the
+the USPTO may strictly adhere to the 2-month
-fee set forth in 37
+period set forth in 37 CFR 1.181(f), and dismiss as
-CFR 1.17(f) (see MPEP §
+untimely any petition not filed within the 2-month
-.02).
+period. This strict adherence to the 2-month period set
+forth in 37 CFR 1.181(f) is justified as such applications
-.01(c)Conversion to or From a Provisional
+will now be forwarded for examination at the
-Application [R-3]
+end of the 2-month period. It is further justified in
+instances in which applicant seeks to submit the omitted
-I.CONVERSION FROM A NONPROVISIONAL
+page(s) in a nonprovisional application and
-APPLICATION TO A PROVISIONAL
+request the date of such submission as the application
-APPLICATION
+filing date as: (A) according the application a filing
+date later than the date of deposit may affect the date
-CFR 1.53. Application number, filing date, and
+of expiration of any patent issuing on the application
-completion of application.
+due to the changes to 35 U.S.C. 154 contained in Public
+Law 103-465, § 532, 108 Stat. 4809 (1994); and
+(B) the filing of a continuation-in-part application is a
+sufficiently equivalent mechanism for adding additional
-(c)(2) An application for patent filed under paragraph (b) of
+subject matter to avoid the loss of patent rights.
-this section may be converted to a provisional application and be
-accorded the original filing date of the application filed under
-paragraph (b) of this section. The grant of such a request for conversion
-will not entitle applicant to a refund of the fees that were
-properly paid in the application filed under paragraph (b) of this
-section. Such a request for conversion must be accompanied by
-the processing fee set forth in § 1.17(q) and be filed prior to the
-earliest of:
-(i)Abandonment of the application filed under paragraph
-(b) of this section;
-(ii)Payment of the issue fee on the application filed
-under paragraph (b) of this section;
-(iii)Expiration of twelve months after the filing date of
-the application filed under paragraph (b) of this section; or
-(iv)The filing of a request for a statutory invention registration
-under § 1.293 in the application filed under paragraph (b)
-of this section.
+The submission of omitted page(s) in a nonprovisional
+application and acceptance of the date of such
+submission as the application filing date is tantamount
+to simply filing a new application. Thus, applicants
+should consider filing a new application as an alternative
+to submitting a petition under 37 CFR 1.182 (with
+the petition fee under 37 CFR 1.17(f)) with any omitted
+page(s), which is a cost effective alternative in
+instances in which a nonprovisional application is
+deposited without filing fees. Likewise, in view of the
+relatively low filing fee for provisional applications,
+and 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
+page(s) and accord an application filing date as of the
+date of such submission in provisional applications.
+The applicant should simply file a new completed
+provisional application.
-An application filed under 37 CFR 1.53(b) may be
+Applications in which a “Notice of Omitted
-converted to a provisional application in accordance
+Item(s)” has been mailed will be retained in OIPE for
-with the procedure described in 37 CFR 1.53(c)(2).
+a period of 2 months from the mailing date of the
-The procedure requires the filing of a request for conversion
+notice. Nonprovisional applications that are complete
-and the processing fee set forth in 37 CFR
+under 37 CFR 1.51(b) will then be forwarded to the
-.17(q). Filing of the request in the nonprovisional
+appropriate Technology Center for examination of the
-application is required prior to the abandonment of
+application. Provisional applications that are complete
-the 37 CFR 1.53(b) application, the payment of the
+under 37 CFR 1.51(c) will then be forwarded to the
-issue fee, the expiration of 12 months after the filing
+Files Repository. The current practice for treating
-date of the 37 CFR 1.53(b) application, or the filing of
+applications that are not complete under 37 CFR
-a request for a statutory invention registration under
+.51(b) and (c) will remain unchanged (37 CFR
-CFR 1.293, whichever event is earlier. The grant of
+.53(f) and (g)).
-any such request does not entitle applicant to a refund
-of the fees properly paid in the application filed under
-CFR 1.53(b).
-Converting a nonprovisional application to a provisional
+======II. APPLICATION NOT ENTITLED TO FILING DATE======
-application will not avoid the publication of the
-nonprovisional application unless the request to convert
-is recognized in sufficient time to permit the
-appropriate officials to remove the nonprovisional
-application from the publication process. The Office
-cannot ensure that it can remove an application from
-publication or avoid publication of application information
-any time after the publication process for the
-application has been initiated. For information on procedures
-for removing an application from publication,
-see MPEP § 1120.
-A provisional application is not entitled to claim
+If the application does not contain anything that can
-priority to or benefit of a prior-filed application under
+be construed as a written description, OIPE will mail
-U.S.C. 119, 120, 121, or 365. See MPEP §
+a Notice of Incomplete Application indicating that the
-.04(b). After the nonprovisonal application has
+application lacks the specification required by 35
-been converted to a provisional application, any priority
+U.S.C. 112. Applicant may:
-or benefit claims submitted in the nonprovisional
-application will be disregarded.
-Applicants who wish to file a request for conversion
+(A) file a petition under 37 CFR 1.53(e) with the
-under 37 CFR 1.53(c)(2) by mail should designate
+petition fee set forth in 37 CFR 1.17(f), asserting that
-“Mail Stop Conversion” as part of the U. S.
+(1) the missing specification was submitted, or (2) the
-Patent and Trademark Office address.
+application papers as deposited contain an adequate
+written description under 35 U.S.C. 112. The petition
+under 37 CFR 1.53(e) must be accompanied by sufficient
+evidence (37 CFR 1.181(b)) to establish applicant’s
+entitlement to the requested filing date (e.g., a
+date-stamped postcard receipt (MPEP § 503) to establish
+prior receipt in the USPTO of the missing specification);
-II.CONVERSION FROM A PROVISIONAL
-APPLICATION TO A NONPROVISIONAL
-APPLICATION
-CFR 1.53. Application number, filing date, and
+(B) submit the omitted specification, including at
-completion of application.
+least one claim in a nonprovisional application,
+accompanied by an oath or declaration in compliance
+with 37 CFR 1.63 and 37 CFR 1.64 referring to the
+specification being submitted and accept the date of
+such submission as the application filing date; or
+(C) submit an amendment under 37 CFR 1.57(a).
+If an application was filed on or after September 21,
+, and contains a claim under 37 CFR 1.55 for priority
+of a prior-filed foreign application, or a claim
+under 37 CFR 1.78 for the benefit of a prior-filed provisional,
+nonprovisional, or international application
+that was present on the filing date of the application,
+and the specification was inadvertently omitted from
+the application and is completely contained in the
+prior-filed application, applicant may submit an
+amendment to include the inadvertently omitted specification
+pursuant to 37 CFR 1.57(a). The amendment
+must be accompanied by a petition under 37 CFR
+.57(a)(3) along with the petition fee set forth in 37
+CFR 1.17(f). See MPEP § 201.17. The amendment
+should be identified as an amendment pursuant to 37
+CFR 1.57(a) and must comply with the requirements
+of 37 CFR 1.57(a) and 37 CFR 1.121. The 2-month
+period is not extendable under 37 CFR 1.136.
+Applications in which a “Notice of Incomplete
+Application” has been mailed will be retained in
+OIPE to await action by the applicant since further
+action by the applicant is necessary for the application
+to be accorded a filing date. Unless applicant completes
+the application, or files a petition under 37 CFR
+.53(e) with the petition fee set forth in 37 CFR
+.17(f), or files a petition under 37 CFR 1.57(a)(3)
+with the petition fee set forth in 37 CFR 1.17(f),
+within the period set in the “Notice of Incomplete
+Application,” the application will be processed as an
+incomplete application under 37 CFR 1.53(e).
+======III. APPLICATION LOCATED IN A TECHNOLOGY CENTER======
+If it is discovered that an application, located in a
+Technology Center (TC), was filed without all of the
+page(s) of the specification, and a Notice of Omitted
+Items has not been mailed by OIPE, the examiner
+should review the application to determine whether
+the application is entitled to a filing date. An application
+is entitled to a filing date if the application contains
+something that can be construed as a written
+description, at least one drawing figure (if necessary
+under 35 U.S.C. 113, first sentence), and at least one
+claim.
-(3)A provisional application filed under paragraph (c) of
+A. Application Entitled to a Filing Date
-this section may be converted to a nonprovisional application filed
-under paragraph (b) of this section and accorded the original filing
+If the application is entitled to a filing date, the
-date of the provisional application. The conversion of a provisional
+examiner should notify applicant of the omission in
-application to a nonprovisional application will not result in
+the next Office action and require applicant to do one
-either the refund of any fee properly paid in the provisional application
+of the following:
-or the application of any such fee to the filing fee, or any
-other fee, for the nonprovisional application. Conversion of a provisional
-application to a nonprovisional application under this
-paragraph will result in the term of any patent to issue from the
-application being measured from at least the filing date of the provisional
-application for which conversion is requested. Thus,
-applicants should consider avoiding this adverse patent term
-impact by filing a nonprovisional application claiming the benefit
-of the provisional application under 35 U.S.C. 119(e) (rather than
-converting the provisional application into a nonprovisional application
-pursuant to this paragraph). A request to convert a provisional
-application to a nonprovisional application must be
-accompanied by the fee set forth in §
-.17(i) and an amendment
-including at least one claim as prescribed by the second paragraph
-of 35
-U.S.C. 112, unless the provisional application under paragraph
-(c) of this section otherwise contains at least one claim as
-prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional
-application resulting from conversion of a provisional
-application must also include the filing fee, search fee, and examination
-fee for a nonprovisional application, an oath or declaration
-by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge
-required by § 1.16(f) if either the basic filing fee for a nonprovisional
-application or the oath or declaration was not present
-on the filing date accorded the resulting nonprovisional application
-(i.e., the filing date of the original provisional application). A
-request to convert a provisional application to a nonprovisional
-application must also be filed prior to the earliest of:
-(i)Abandonment of the provisional application filed
-under paragraph (c) of this section; or
-(ii)Expiration of twelve months after the filing date of
-the provisional application filed under paragraph (c) of this section.
+(A) accept the application, as filed, without all of
+the page(s) of the specification;
+(B) file any omitted page(s) with an oath or declaration
+in compliance with 37 CFR 1.63 and 37 CFR
+.64 referring to the omitted page(s) and a petition
+under 37 CFR 1.182 with the petition fee set forth in 37 CFR 1.17(f), requesting the date of submission of
+the omitted page(s) as the application filing date; or
+(C) file a petition under 37 CFR 1.53(e) with the
+petition fee set forth in 37 CFR 1.17(f) alleging that
+the page(s) indicated as omitted was in fact deposited
+with the USPTO with the application papers, including
+any and all evidence supporting the allegation.
+See MPEP § 503. The petition fee will be refunded if
+it is determined that the page(s) was in fact received
+by the USPTO with the application papers deposited
+on filing.
-An application filed under 37 CFR 1.53(c) may be
+If applicant is willing to accept the application, as
-converted to a nonprovisional application in accordance
+filed, without all of the page(s) of the application
-with the procedure described in 37 CFR
+(item A above), an amendment of the specification is
-.53(c)(3). Applicants should carefully consider the
+required to renumber the pages of the application consecutively
-patent term consequences of requesting conversion
+and to cancel any incomplete sentences
-rather than simply filing a nonprovisional application
+caused by the absence of the omitted page(s). The
-claiming the benefit of the filing date of the provisional
+amendment should be submitted in response to the
-application under 35 U.S.C. 119(e). Claiming
+Office action.
-the benefit of the provisional application under 35
-U.S.C. 119(e) is less expensive and will result in a
-longer patent term. The procedure requires the filing
-of a request for the conversion of the provisional
-application to a nonprovisional application and the fee
-set forth in 37 CFR 1.17(i) as well as the basic filing
-fee , search fee, and examination fee for the nonprovisional
-application. In addition, if the provisional
-application was not filed with an executed oath or
-declaration and the appropriate fees for a nonprovisional
-application, the surcharge set forth in 37
-CFR 1.16(f) is required. See MPEP §
-.01(a). Filing of the request for conversion in the
-provisional application is required prior to the abandonment
-of the provisional application or the expiration
-of 12 months after the filing date of the 37 CFR
-.53(c) application, whichever event is earlier. The
-grant of any such request does not entitle applicant to
-a refund of the fees properly paid in the application
-filed under 37 CFR 1.53(c).
-Applicants who wish to file a request for conversion
+If an application was filed on or after September
-under 37 CFR 1.53(c)(3) by mail should designate
+, 2004, and contains a claim under 37 CFR 1.55 for
-“Mail Stop Conversion” as part of the U. S.
+priority of a prior-filed foreign application, or a claim
-Patent and Trademark Office address.
+under 37 CFR 1.78 for the benefit of a prior-filed provisional,
+nonprovisional, or international application
-.01(d)Application Filed Without AllPages of Specification [R-5]
+that was present on the filing date of the application,
+and the omitted portion of the specification was inadvertently
+omitted from the application and is completely
+contained in the prior-filed application,
+applicant may submit an amendment to include the
+inadvertently omitted portion of the specification pursuant
+to 37 CFR 1.57(a). The amendment should be
+submitted in response to the Office action and must
+comply with 37 CFR 1.57(a) and 37 CFR 1.121. See
+MPEP § 201.17.
+Any petition filed in accordance with item B or C
+above should be filed with the TC. The TC will match
+the petition with the application file and forward the
+application file with the petition to the Office of Petitions,
+along with a brief explanation as to the page(s)
+of the specification that has been omitted on filing, for
+consideration of the petition in due course. For Image
+File Wrapper (IFW) processing, see IFW Manual section
+.3.
-The Office of Initial Patent Examination (OIPE)
+B. Application NOT Entitled to a Filing Date
-reviews application papers to determine whether all of
-the pages of specification are present in the application.
-If the application is filed without all of the
-page(s) of the specification, but containing something
-that can be construed as a written description, at least
-one drawing figure, if necessary under 35 U.S.C. 113(first sentence), and, in a nonprovisional application,
-at least one claim, OIPE will mail a “Notice of Omitted
-Items” indicating that the application papers so
-deposited have been accorded a filing date, but are
-lacking some page(s) of the specification.
-If the application does not contain anything that
+If upon review of the application, the examiner
-can be construed as a written description, OIPE will
+determines that the application is NOT entitled to a
-mail a Notice of Incomplete Application indicating
+filing date, the examiner should forward the application
-that the application lacks the specification required by
+to OIPE for mailing of a “Notice of Incomplete
-U.S.C. 112 and no filing date is granted.
+Application.”
-I.APPLICATION ENTITLED TO FILING
+====601.01(e) Nonprovisional Application Filed Without At Least One Claim====
-DATE
-The mailing of a “Notice of Omitted Item(s)” will
+U.S.C. 111(a)(2) requires that an application for
-permit the applicant to:
+patent include, inter alia, “a specification as prescribed
+by section 112 of this title,” and 35 U.S.C.
+(a)(4) provides that the “filing date of an application
+shall be the date on which the specification and
+any required drawing are received in the Patent and
+Trademark Office.” 35 U.S.C. 112, first paragraph,
+provides, in part, that “[t]he specification shall contain
+a written description of the invention,” and 35
+U.S.C. 112, second paragraph, provides that “[t]he
+specification shall conclude with one or more claims
+particularly pointing out and distinctly claiming the
+subject matter which the applicant regards as his
+invention.” Also, the Court of Appeals for the Federal
+Circuit stated in Litton Systems, Inc. v. Whirlpool
+Corp.:
-(A)promptly establish prior receipt in the USPTO
+Both statute, 35 U.S.C. 111 [(a)], and federal regulations,
-of the page(s) at issue. An applicant asserting that the
+CFR 1.51 [(b)], make clear the requirement that an
-page(s) was in fact received by the USPTO with the
+application for a patent must include. . . a specification
-application papers must, within 2 months from the
+and claims. . . . The omission of any one of these component
-date of the “Notice of Omitted Item(s),” file a petition
+parts makes a patent application incomplete and thus
-under 37 CFR 1.53(e) with the petition fee set forth in
+not entitled to a filing date.
-CFR 1.17(f), along with evidence of such deposit
-(37 CFR 1.181(f)). The petition fee will be refunded if
-it is determined that the page(s) was in fact received
-by the USPTO with the application papers deposited
-on filing. The 2-month period is not extendable under
-CFR 1.136;
-(B)promptly submit the omitted page(s) in a nonprovisional
+F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir.
-application and accept the date of such
+)(citing Gearon v. United States, 121 F. Supp
-submission as the application filing date. An applicant
+, 654, 101 USPQ 460, 461 (Ct. Cl. 1954), cert.
-desiring to submit the omitted page(s) in a nonprovisional
+denied, 348 U.S. 942, 104 USPQ 409 (1955))(emphasis
-application and accept the date of such submission
+in the original).
-as the application filing date must, within 2
-months from the date of the “Notice of Omitted
-Item(s),” file any omitted page(s) with an oath or dec
+Therefore, in an application filed under 35 U.S.C.
+(a), a claim is a statutory requirement for according
+a filing date to the application. 35 U.S.C. 162 and
+U.S.C. 171 make 35 U.S.C. 112 applicable to plant
+and design applications, and 35 U.S.C. 162 specifically
+requires the specification in a plant patent application
+to contain a claim. 35 U.S.C. 111(b)(2),
+however, provides that “[a] claim, as required by the
+second through fifth paragraphs of section 112, shall
+not be required in a provisional application.” Thus,
+with the exception of provisional applications filed
+under 35 U.S.C. 111(b), any application filed without
+at least one claim is incomplete and not entitled to a
+filing date.
+If a nonprovisional application does not contain at
+least one claim, a “Notice of Incomplete Application”
+will be mailed to the applicant(s) indicating that no
+filing date has been granted and setting a period for
+submitting a claim. The filing date will be the date of
+receipt of at least one claim. See In re Mattson, 208
+USPQ 168 (Comm’r Pat. 1980). An oath or declaration
+in compliance with 37 CFR 1.63 and 37 CFR
+.64 referring to the claim being submitted is also
+required.
+If a nonprovisional application is accompanied by a
+preliminary amendment which cancels all claims
+without presenting any new or substitute claims,
+the Office will disapprove such an amendment.
+See 37 CFR 1.115(b)(1) and Exxon Corp. v. Phillips
+Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368
+(Fed. Cir. 2001). Thus, the application will not be
+denied a filing date merely because such a preliminary
+amendment was submitted on filing. For fee calculation
+purposes, the Office will treat such an
+application as containing only a single claim.
+As 37 CFR 1.53(c)(2) permits the conversion of an
+application filed under 35 U.S.C. 111(a) to an application
+under 35 U.S.C. 111(b), an applicant in an application,
+other than for a design patent, filed under 35
+U.S.C. 111(a) on or after June 8, 1995, without at least
+one claim has the alternative of filing a petition under
+CFR 1.53(c)(2) to convert such application into an
+application under 35
+U.S.C. 111(b), which does not
+require a claim to be entitled to its date of deposit as a
+filing date. Such a petition, however, must be filed
+prior to the expiration of 12 months after the date of
+deposit of the application under 35 U.S.C. 111(a), and
+comply with the other requirements of 37 CFR
+.53(c)(2). See MPEP § 601.01(c).
+The treatment of an application subsequent to the
+mailing of a “Notice of Incomplete Application” is
-laration in compliance with 37 CFR 1.63 and 37 CFR
+discussed in MPEP § 601.01(d).
-.64 referring to such page(s) and a petition under 37
-CFR 1.182 with the petition fee set forth in 37 CFR
+====601.01(f) Applications Filed Without Drawings====
-.17(f), requesting the later filing date (37 CFR
-.181(f)). The 2-month period is not extendable under
-CFR 1.136; or
-(C)accept the application as deposited in the
-USPTO. Applicant may accept the application as
-deposited in the USPTO by either:
-(1)not filing a petition under 37 CFR 1.53(e)
-or 37 CFR 1.182 (and the required petition fee) as discussed
-above within 2 months of the date of the
-“Notice of Omitted Item(s)”. The failure to file a petition
-under 37 CFR 1.53(e) or 37 CFR 1.182 will be
-treated as constructive acceptance by the applicant of
-the application as deposited in the USPTO. The application
-will maintain the filing date as of the date of
-deposit of the application papers in the USPTO, and
-the original application papers (i.e., the original disclosure
-of the invention) will include only those application
-papers present in the USPTO on the date of
-deposit. Amendment of the specification is required in
-a nonprovisional application to renumber the pages
-consecutively and cancel any incomplete sentences
-caused by the absence of the omitted page(s). Such
-amendment should be by way of preliminary amendment
-submitted prior to the first Office action to avoid
-delays in the prosecution of the application, or
-(2)filing an amendment under 37 CFR
-.57(a). If an application was filed on or after September
-, 2004, and contains a claim under 37 CFR 1.55for priority of a prior-filed foreign application, or a
-claim under 37 CFR 1.78 for the benefit of a prior-
-filed provisional, nonprovisional, or international
-application that was present on the filing date of the
-application, and the omitted portion of the specification
-was inadvertently omitted from the application
-and is completely contained in the prior-filed application,
-applicant may submit an amendment to include
-the inadvertently omitted portion of the specification
-pursuant to 37 CFR 1.57(a). Such amendment should
-be by way of a preliminary amendment and the preliminary
-amendment must be submitted within 2
-months from the date of the “Notice of Omitted
-Item(s).” The amendment should be identified as an
-amendment pursuant to 37 CFR 1.57(a) and must
-comply with the requirements of 37 CFR 1.57(a) and
-CFR 1.121. See MPEP § 201.17. The application
-will maintain the filing date as of the date of deposit
-of the original application papers in the USPTO. The
-original application papers (i.e., the original disclosure
-of the invention) will include only those application
-papers present in the USPTO on the original date
-of deposit. The 2-month period is not extendable
-under 37 CFR 1.136.
-Any petition under 37 CFR 1.53(e) or 37 CFR
-.182 not filed within the 2-month period set in the
-“Notice of Omitted Item(s)” may be dismissed as
-untimely. 37 CFR 1.181(f). Under the adopted procedure,
-the USPTO may strictly adhere to the 2-month
-period set forth in 37 CFR 1.181(f), and dismiss as
-untimely any petition not filed within the 2-month
-period. This strict adherence to the 2-month period set
-forth in 37 CFR 1.181(f) is justified as such applications
-will now be forwarded for examination at the
-end of the 2-month period. It is further justified in
-instances in which applicant seeks to submit the omitted
-page(s) in a nonprovisional application and
-request the date of such submission as the application
-filing date as: (A) according the application a filing
-date later than the date of deposit may affect the date
-of expiration of any patent issuing on the application
-due to the changes to 35 U.S.C. 154 contained in Public
-Law 103-465, § 532, 108 Stat. 4809 (1994); and
-(B) the filing of a continuation-in-part application is a
-sufficiently equivalent mechanism for adding additional
-subject matter to avoid the loss of patent rights.
-The submission of omitted page(s) in a nonprovisional
-application and acceptance of the date of such
-submission as the application filing date is tantamount
-to simply filing a new application. Thus, applicants
-should consider filing a new application as an alternative
-to submitting a petition under 37 CFR 1.182 (with
-the petition fee under 37 CFR 1.17(f)) with any omitted
-page(s), which is a cost effective alternative in
-instances in which a nonprovisional application is
-deposited without filing fees. Likewise, in view of the
-relatively low filing fee for provisional applications,
-and 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
-page(s) and accord an application filing date as of the
-date of such submission in provisional applications.
-The applicant should simply file a new completed
-provisional application.
+U.S.C. 111(a)(2)(B) and 35 U.S.C. 111(b)(1)(B)
+each provide, in part, that an “application shall
+include . . . a drawing as prescribed by section 113 of
+this title” and 35
+U.S.C. 111(a)(4) and 35 U.S.C.
+(b)(4) each provide, in part, that the “filing date. . .
+shall be the date on which . . . any required drawing
+are received in the Patent and Trademark Office.” 35
+U.S.C. 113 (first sentence) in turn provides that an
+“applicant shall furnish a drawing where necessary for
+the understanding of the subject matter sought to be
+patented.”
+Applications filed without drawings are initially
+inspected to determine whether a drawing is referred
+to in the specification, and if not, whether a drawing is
+necessary for the understanding of the invention. 35
+U.S.C. 113 (first sentence).
+It has been USPTO practice to treat an application
+that contains at least one process or method claim as
+an application for which a drawing is not necessary
+for an understanding of the invention under 35 U.S.C.
+(first sentence). The same practice has been followed
+in composition applications. Other situations in
+which drawings are usually not considered necessary
+for the understanding of the invention under 35
+U.S.C. 113 (first sentence) are:
+(A) Coated articles or products: where the invention
+resides solely in coating or impregnating a conventional
+sheet (e.g., paper or cloth, or an article of
+known and conventional character with a particular
+composition), unless significant details of structure or
+arrangement are involved in the article claims;
-Applications in which a “Notice of Omitted
+(B) Articles made from a particular material or
-Item(s)” has been mailed will be retained in OIPE for
+composition: where the invention consists in making
-a period of 2 months from the mailing date of the
+an article of a particular material or composition,
-notice. Nonprovisional applications that are complete
+unless significant details of structure or arrangement
-under 37 CFR 1.51(b) will then be forwarded to the
+are involved in the article claims;
-appropriate Technology Center for examination of the
-application. Provisional applications that are complete
-under 37 CFR 1.51(c) will then be forwarded to the
-Files Repository. The current practice for treating
-applications that are not complete under 37 CFR
-.51(b) and (c) will remain unchanged (37 CFR
-.53(f) and (g)).
-II.APPLICATION NOT ENTITLED TO
+(C) Laminated structures: where the claimed
-FILING DATE
+invention involves only laminations of sheets (and
+coatings) of specified material unless significant
-If the application does not contain anything that can
+details of structure or arrangement (other than the
-be construed as a written description, OIPE will mail
+mere order of the layers) are involved in the article
-a Notice of Incomplete Application indicating that the
+claims; or
-application lacks the specification required by 35
-U.S.C. 112. Applicant may:
-(A)file a petition under 37 CFR 1.53(e) with the
+(D) Articles, apparatus, or systems where sole
-petition fee set forth in 37 CFR 1.17(f), asserting that
+distinguishing feature is presence of a particular
-(1) the missing specification was submitted, or (2) the
+material: where the invention resides solely in the use
-application papers as deposited contain an adequate
+of a particular material in an otherwise old article,
-written description under 35 U.S.C. 112. The petition
+apparatus or system recited broadly in the claims, for
-under 37
+example:
-CFR 1.53(e) must be accompanied by sufficient
-evidence (37 CFR 1.181(b)) to establish applicant’s
-entitlement to the requested filing date (e.g., a
-date-stamped postcard receipt (MPEP § 503) to establish
-prior receipt in the USPTO of the missing specification);
+(1) A hydraulic system distinguished solely by
+the use therein of a particular hydraulic fluid;
-(B)submit the omitted specification, including at
+(2) Packaged sutures wherein the structure and
-least one claim in a nonprovisional application,
+arrangement of the package are conventional and the
-accompanied by an oath or declaration in compliance
+only distinguishing feature is the use of a particular
-with 37 CFR 1.63 and 37 CFR 1.64 referring to the
+material.
-specification being submitted and accept the date of
-such submission as the application filing date; or
-(C)submit an amendment under 37 CFR 1.57(a).
+A nonprovisional application having at least one
-If an application was filed on or after September 21,
+claim, or a provisional application having at least
-, and contains a claim under 37 CFR 1.55 for priority
+some disclosure, directed to the subject matter discussed
-of a prior-filed foreign application, or a claim
+above for which a drawing is usually not considered
-under 37 CFR 1.78 for the benefit of a prior-filed provisional,
+essential for a filing date, not describing
-nonprovisional, or international application
+drawing figures in the specification, and filed without
-that was present on the filing date of the application,
+drawings will simply be processed , so long as the
-and the specification was inadvertently omitted from
+application contains something that can be construed
-the application and is completely contained in the
+as a written description. A nonprovisional application
-prior-filed application, applicant may submit an
+having at least one claim, or a provisional application
-amendment to include the inadvertently omitted specification
+having at least some disclosure, directed to the subject
-pursuant to 37 CFR 1.57(a). The amendment
+matter discussed above for which a drawing is usually
-must be accompanied by a petition under 37 CFR
+not considered essential for a filing date, describing
-.57(a)(3) along with the petition fee set forth in 37
+drawing figure(s) in the specification, but filed without
-CFR 1.17(f). See MPEP § 201.17. The amendment
+drawings will be treated as an application filed
-should be identified as an amendment pursuant to 37
+without all of the drawing figures referred to in the
-CFR 1.57(a) and must comply with the requirements
+specification as discussed in MPEP § 601.01(g), so
-of 37 CFR 1.57(a) and 37 CFR 1.121. The 2-month
+long as the application contains something that can be
-period is not extendable under 37 CFR 1.136.
+construed as a written description. In a situation in
+which the appropriate Technology Center (TC) determines
+that drawings are necessary under 35 U.S.C.
+(first sentence) the filing date issue will be reconsidered
+by the USPTO. The application will be
+returned to the Office of Initial Patent Examination (OIPE) for mailing of a “Notice of Incomplete Application.”
+If a nonprovisional application does not have at
+least one claim directed to the subject matter discussed
+above for which a drawing is usually not considered
+essential for a filing date, or a provisional
+application does not have at least some disclosure
+directed to the subject matter discussed above for
+which a drawing is usually not considered essential
+for a filing date, and is filed without drawings, OIPE
+will mail a “Notice of Incomplete Application” indicating
+that the application lacks drawings and that
+U.S.C. 113 (first sentence) requires a drawing
+where necessary for the understanding of the subject
+matter sought to be patented.
-Applications in which a “Notice of Incomplete
+Applicant may file a petition under 37 CFR 1.53(e)
-Application” has been mailed will be retained in
-OIPE to await action by the applicant since further
-action by the applicant is necessary for the application
-to be accorded a filing date. Unless applicant completes
-the application, or files a petition under 37 CFR
-.53(e) with the petition fee set forth in 37 CFR
-.17(f), or files a petition under 37 CFR 1.57(a)(3)
 with the petition fee set forth in 37 CFR 1.17(f),
-within the period set in the “Notice of Incomplete
+asserting that (A) the drawing(s) at issue was submitted,
-Application,” the application will be processed as an
+or (B) the drawing(s) is not necessary
-incomplete application under 37 CFR 1.53(e).
+under 35 U.S.C. 113 (first sentence) for a filing date.
+The petition must be accompanied by sufficient evidence
+to establish applicant’s entitlement to the
+requested filing date (e.g., a date-stamped postcard
+receipt (MPEP § 503) to establish prior receipt in the
+USPTO of the drawing(s) at issue). Alternatively,
+applicant may submit drawing(s) accompanied by an
+oath or declaration in compliance with 37 CFR 1.63and 1.64 referring to the drawing(s) being submitted
+and accept the date of such submission as the application
+filing date.
-III.APPLICATION LOCATED IN A TECHNOLOGY
+As an alternative to a petition under 37 CFR
-CENTER
+.53(e), if the drawing(s) was inadvertently omitted
+from an application filed on or after September 21,
+, and the application contains a claim under 37
+CFR 1.55 for priority of a prior-filed foreign application,
+or a claim under 37 CFR 1.78 for the benefit of a
+prior-filed provisional, nonprovisional, or international
+application, that was present on the filing date
+of the application, and the inadvertently omitted
+drawing(s) is completely contained in the prior-filed
+application, the applicant may submit the omitted
+drawing(s) by way of an amendment in compliance
+with 37 CFR 1.57(a). The amendment must be by way
+of a petition under 37 CFR 1.57(a)(3) accompanied by
+the petition fee set forth in 37 CFR 1.17(f). See MPEP
+§ 201.17.
-If it is discovered that an application, located in a
+In design applications, OIPE will mail a “Notice of
-Technology Center (TC), was filed without all of the
+Incomplete Application” indicating that the application
-page(s) of the specification, and a Notice of Omitted
+lacks the drawings required under 35 U.S.C. 113(first sentence). The applicant may: (A) promptly
-Items has not been mailed by OIPE, the examiner
+file a petition under 37 CFR 1.53(e) with the petition
-should review the application to determine whether
+fee set forth in 37
-the application is entitled to a filing date. An application
+CFR 1.17(f), asserting that the
-is entitled to a filing date if the application contains
+missing drawing(s) was submitted; or (B)
-something that can be construed as a written
+promptly submit drawing(s) accompanied by an oath
-description, at least one drawing figure (if necessary
+or declaration in compliance with 37 CFR 1.63 and 37
-under 35 U.S.C. 113, first sentence), and at least one
+CFR 1.64 and accept the date of such submission as
-claim.
+the application filing date. Applicant may also be
+able to file an amendment by way of a petition under
+CFR 1.57(a)(3) as discussed above. 37 CFR
+.153(a) provides that the claim in a design application
+“shall be in formal terms to the ornamental
+design for the article (specifying name) as shown, or
+as shown and described.” As such, petitions under 37
+CFR 1.53(e) asserting that drawings are unnecessary
+under 35 U.S.C. 113 (first sentence) for a filing date in
+a design application will not be found persuasive.
-A. Application Entitled to a Filing Date
+The treatment of an application subsequent to the
+mailing of a “Notice of Incomplete Application” is
+discussed in MPEP § 601.01(d).
- If the application is entitled to a filing date, the
+====601.01(g)Applications Filed Without All Figures of Drawings====
-examiner should notify applicant of the omission in
-the next Office action and require applicant to do one
-of the following:
-(A)accept the application, as filed, without all of
+The Office of Initial Patent Examination (OIPE)
-the page(s) of the specification;
+reviews application papers to determine whether all of
+the figures of the drawings that are mentioned in the
-(B)file any omitted page(s) with an oath or declaration
+specification are present in the application. If the
-in compliance with 37 CFR 1.63 and 37 CFR
+application is filed without all of the drawing figure(s)
-.64 referring to the omitted page(s) and a petition
+referred to in the specification, and the application
-under 37 CFR 1.182 with the petition fee set forth in
+contains something that can be construed as a written
+description, at least one drawing, if necessary under
+U.S.C. 113 (first sentence), and, in a nonprovisional
+application, at least one claim, OIPE will mail a
+“Notice of Omitted Item(s)” indicating that the application
+papers so deposited have been accorded a filing
+date, but are lacking some of the figures of drawings
+described in the specification.
+The mailing of a “Notice of Omitted Item(s)”
+will permit the applicant to:
+(A) promptly establish prior receipt in the USPTO
+of the drawing(s) at issue. An applicant asserting that
+the drawing(s) was in fact received by the USPTO
+with the application papers must, within 2 months
+from the date of the “Notice of Omitted Item(s),” file
+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 (37 CFR 1.181(f)). The petition fee will
+be refunded if it is determined that the drawing(s) was
+in fact received by the USPTO with the application
+papers deposited on filing. The 2-month period is notextendable under 37 CFR 1.136;
+(B) promptly submit the omitted drawing(s) in a
+nonprovisional application and accept the date of such
+submission as the application filing date. An applicant
+desiring to submit the omitted drawing(s) in a nonprovisional
+application and accept the date of such submission
+as the application filing date must, within 2
+months from the date of the “Notice of Omitted
+Item(s),” file any omitted drawing(s) with an oath or
+declaration in compliance with 37 CFR 1.63 and 37
+CFR 1.64 referring to such drawing(s) and a petition
+under 37 CFR 1.182 with the petition fee set forth in
+CFR 1.17(f), requesting the later filing date (37
+CFR 1.181(f)). The 2-month period is not extendable
+under 37 CFR 1.136; or
+(C) accept the application as deposited in the
+USPTO. Applicant may accept the application as
+deposited in the USPTO by either:
-CFR 1.17(f), requesting the date of submission of
+(1) not filing a petition under 37 CFR 1.53(e)
-the omitted page(s) as the application filing date; or
+or 37 CFR 1.182 (and the required petition fee) as discussed
+above within 2 months of the date of the
-(C)file a petition under 37 CFR 1.53(e) with the
+“Notice of Omitted Item(s).” The failure to file a petition
-petition fee set forth in 37 CFR 1.17(f) alleging that
+under 37 CFR 1.53(e) or 37 CFR 1.182 will be
-the page(s) indicated as omitted was in fact deposited
+treated as constructive acceptance by the applicant of
-with the USPTO with the application papers, including
+the application as deposited in the USPTO. The application
-any and all evidence supporting the allegation.
+will maintain the filing date as of the date of
-See MPEP § 503. The petition fee will be refunded if
+deposit of the original application papers in the
-it is determined that the page(s) was in fact received
+USPTO. The original application papers (i.e., the original
-by the USPTO with the application papers deposited
+disclosure of the invention) will include only
-on filing.
+those application papers present in the USPTO on the
+original date of deposit. Amendment of the specification
+is required in a nonprovisional application to cancel
+all references to the omitted drawing, both in the
+brief and detailed descriptions of the drawings and
+including any reference numerals shown only in the
+omitted drawings. In addition, an amendment with
+replacement sheets of drawings in compliance with 37
+CFR 1.121(d) is required in a nonprovisional application
+to renumber the drawing figures consecutively, if
+necessary, and amendment of the specification is
+required to correct the references to the drawing figures
+to correspond with any relabeled drawing figures,
+both in the brief and detailed descriptions of the
+drawings. Such amendment should be by way of preliminary
+amendment submitted prior to the first
+Office action to avoid delays in the prosecution of the
+application, or
-If applicant is willing to accept the application, as
+(2) filing an amendment under 37 CFR
-filed, without all of the page(s) of the application
+.57(a). If an application was filed on or after September
-(item A above), an amendment of the specification is
+, 2004, and contains a claim under 37 CFR 1.55for priority of a prior-filed foreign application, or a
-required to renumber the pages of the application consecutively
+claim under 37 CFR 1.78 for the benefit of a prior-
-and to cancel any incomplete sentences
+filed provisional, nonprovisional, or international
-caused by the absence of the omitted page(s). The
+application that was present on the filing date of the
-amendment should be submitted in response to the
+application, and the omitted portion of the drawings
-Office action.
+was inadvertently omitted from the application and is
+completely contained in the prior-filed application,
-If an application was filed on or after September
-, 2004, and contains a claim under 37 CFR 1.55 for
-priority of a prior-filed foreign application, or a claim
-under 37 CFR 1.78 for the benefit of a prior-filed provisional,
-nonprovisional, or international application
-that was present on the filing date of the application,
-and the omitted portion of the specification was inadvertently
-omitted from the application and is completely
-contained in the prior-filed application,
 applicant may submit an amendment to include the
-inadvertently omitted portion of the specification pursuant
+inadvertently omitted portion of the drawings pursuant
-to 37 CFR 1.57(a). The amendment should be
+to 37 CFR 1.57(a). Such amendment should be by
-submitted in response to the Office action and must
+way of a preliminary amendment and the preliminary
-comply with 37 CFR 1.57(a) and 37 CFR 1.121. See
+amendment must be submitted within 2 months from
-MPEP § 201.17.
+the date of the “Notice of Omitted Item(s).” The
+amendment should be identified as an amendment
+pursuant to 37 CFR 1.57(a) and must comply with the
+requirements of 37 CFR 1.57(a) and 37 CFR 1.121.
- Any petition filed in accordance with item B or C
+See MPEP § 201.17. The application will maintain
-above should be filed with the TC. The TC will match
+the filing date as of the date of deposit of the original
-the petition with the application file and forward the
+application papers in the USPTO. The original application
-application file with the petition to the Office of Petitions,
+papers (i.e., the original disclosure of the
-along with a brief explanation as to the page(s)
+invention) will include only those application papers
-of the specification that has been omitted on filing, for
+present in the USPTO on the original date of deposit.
-consideration of the petition in due course. For Image
+The 2-month period is not extendable under 37 CFR
-File Wrapper (IFW) processing, see IFW Manual section
+.136.
-.3.
-B. Application NOT Entitled to a Filing Date
+Any petition under 37 CFR 1.53(e) or 37 CFR
+.182 not filed within the 2-month period set in the
-If upon review of the application, the examiner
+“Notice of Omitted Item(s)” may be dismissed as
-determines that the application is NOT entitled to a
+untimely. 37 CFR 1.181(f). Under the adopted procedure,
-filing date, the examiner should forward the application
+the USPTO may strictly adhere to the 2-month
-to OIPE for mailing of a “Notice of Incomplete
+period set forth in 37 CFR 1.181(f), and dismiss as
-Application.”
+untimely any petition not filed within the 2-month
+period. This strict adherence to the 2-month period set
-.01(e)Nonprovisional Application
+forth in 37 CFR 1.181(f) is justified as such applications
-Filed Without At Least One
+will now be forwarded for examination at the
-Claim [R-3]
+end of the 2-month period. It is further justified in
+instances in which applicant seeks to submit the omitted
-U.S.C. 111(a)(2) requires that an application for
+drawing(s) in a nonprovisional application and
-patent include, inter alia, “a specification as prescribed
+request the date of such submission as the application
-by section 112 of this title,” and 35 U.S.C.
+filing date as: (A) according the application a filing
-(a)(4) provides that the “filing date of an application
+date later than the date of deposit may affect the date
-shall be the date on which the specification and
+of expiration of any patent issuing on the application
-any required drawing are received in the Patent and
+due to the changes to 35 U.S.C. 154 contained in Public
-Trademark Office.” 35 U.S.C. 112, first paragraph,
+Law 103-465, § 532, 108 Stat. 4809 (1994); and
-provides, in part, that “[t]he specification shall contain
+(B) the filing of a continuation-in-part application is a
-a written description of the invention,” and 35
+sufficiently equivalent mechanism for adding additional
-U.S.C. 112, second paragraph, provides that “[t]he
+subject matter to avoid the loss of patent rights.
-specification shall conclude with one or more claims
-particularly pointing out and distinctly claiming the
-subject matter which the applicant regards as his
-invention.” Also, the Court of Appeals for the Federal
-Circuit stated in Litton Systems, Inc. v. Whirlpool
-Corp.:
-Both statute, 35 U.S.C. 111 [(a)], and federal regulations,
+The submission of omitted drawing(s) in a nonprovisional
-CFR 1.51 [(b)], make clear the requirement that an
+application and acceptance of the date of
-application for a patent must include. . . a specification
+such submission as the application filing date is tantamount
-and claims. . . . The omission of any one of these component
+to simply filing a new application. Thus, applicants
-parts makes a patent application incomplete and thus
+should consider filing a new application as an
-not entitled to a filing date.
+alternative to submitting a petition under 37 CFR
+.182 (with the petition fee under 37 CFR 1.17(f))
+with any omitted drawing(s), which is a cost effective
+alternative in instances in which a nonprovisional
+application is deposited without filing fees. Likewise,
+in view of the relatively low filing fee for provisional
+applications, and 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. The applicant should simply file a new
+completed provisional application.
-F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir.
+Applications in which a “Notice of Omitted
-)(citing Gearon v. United States, 121 F. Supp
+Item(s)” has been mailed will be retained in OIPE for
-, 654, 101 USPQ 460, 461 (Ct. Cl. 1954), cert.
+a period of 2 months from the mailing date of the
-denied, 348 U.S. 942, 104 USPQ 409 (1955))(emphasis
+notice. Nonprovisional applications that are complete
-in the original).
+under 37 CFR 1.51(b) will then be forwarded to the
+appropriate Technology Center for examination of the
-Therefore, in an application filed under 35 U.S.C.
+application. Provisional applications that are complete
-(a), a claim is a statutory requirement for according
+under 37 CFR 1.51(c) will then be forwarded to the
-a filing date to the application. 35 U.S.C. 162 and
+Files Repository. The current practice for treating
-U.S.C. 171 make 35 U.S.C. 112 applicable to plant
+applications that are not complete under 37 CFR
-and design applications, and 35 U.S.C. 162 specifically
+.51(b) and (c) will remain unchanged (37 CFR
-requires the specification in a plant patent application
+.53(f) and (g)).
-to contain a claim. 35 U.S.C. 111(b)(2),
-however, provides that “[a] claim, as required by the
-second through fifth paragraphs of section 112, shall
-not be required in a provisional application.” Thus,
-with the exception of provisional applications filed
-under 35 U.S.C. 111(b), any application filed without
-at least one claim is incomplete and not entitled to a
-filing date.
+The treatment of an application subsequent to the
+mailing of a “Notice of Omitted Item(s)” is discussed
+in MPEP § 601.01(d).
+Applications are often filed with drawings with
+several views of the invention where the views are
+labeled using a number-letter combination, e.g., Fig.
+A, Fig. 1B, and Fig. 1C. OIPE will not mail a
+“Notice of Omitted Item(s)” if a figure which is
+referred to in the specification by a particular number
+cannot be located among the drawings, if the drawings
+include at least one figure labeled with that particular
+number in combination with a letter. For
+example, if the drawings show Figures 1A, 1B, and
+C and the brief description of the drawings refers
+only to Figure 1, this is an error in the specification
+which must be corrected, rather than an application
+filed without all figures of drawings.
+APPLICATION LOCATED IN A TECHNOLOGY CENTER
+If it is discovered that an application, located in a
+Technology Center (TC), was filed without all of the
-If a nonprovisional application does not contain at
+drawing figure(s) referred to in the specification, and
-least one claim, a “Notice of Incomplete Application”
+a Notice of Omitted Items has not been mailed by
-will be mailed to the applicant(s) indicating that no
+the OIPE, the examiner should review the application
-filing date has been granted and setting a period for
+to determine whether the application is entitled to a
-submitting a claim. The filing date will be the date of
+filing date. An application is entitled to a filing
-receipt of at least one claim. See In re Mattson, 208
+date if the application contains something that can be
-USPQ 168 (Comm’r Pat. 1980). An oath or declaration
+construed as a written description, at least one drawing
-in compliance with 37 CFR 1.63 and 37 CFR
+figure (if necessary under 35 U.S.C. 113, first sentence),
-.64 referring to the claim being submitted is also
+and at least one claim.
-required.
+A. Application Entitled to a Filing Date
-If a nonprovisional application is accompanied by a
-preliminary amendment which cancels all claims
-without presenting any new or substitute claims,
-the Office will disapprove such an amendment.
-See 37 CFR 1.115(b)(1) and Exxon Corp. v. Phillips
-Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368
-(Fed. Cir. 2001). Thus, the application will not be
-denied a filing date merely because such a preliminary
-amendment was submitted on filing. For fee calculation
-purposes, the Office will treat such an
-application as containing only a single claim.
-As 37 CFR 1.53(c)(2) permits the conversion of an
-application filed under 35 U.S.C. 111(a) to an application
-under 35 U.S.C. 111(b), an applicant in an application,
-other than for a design patent, filed under 35
-U.S.C. 111(a) on or after June 8, 1995, without at least
-one claim has the alternative of filing a petition under
-CFR 1.53(c)(2) to convert such application into an
-application under 35
-U.S.C. 111(b), which does not
-require a claim to be entitled to its date of deposit as a
-filing date. Such a petition, however, must be filed
-prior to the expiration of 12 months after the date of
-deposit of the application under 35 U.S.C. 111(a), and
-comply with the other requirements of 37 CFR
-.53(c)(2). See MPEP § 601.01(c).
-The treatment of an application subsequent to the
+If the application is entitled to a filing date, the
-mailing of a “Notice of Incomplete Application” is
+examiner should notify applicant of the omission in the next Office action and require applicant to do one
-discussed in MPEP § 601.01(d).
+of the following:
-.01(f)Applications Filed WithoutDrawings [R-3]
+(A) accept the application, as filed, without all of
+the drawing figure(s) referred to in the specification;
-U.S.C. 111(a)(2)(B) and 35 U.S.C. 111(b)(1)(B)
+(B) file any omitted drawing figure(s) with an
-each provide, in part, that an “application shall
+oath or declaration in compliance with 37 CFR 1.63and 37 CFR 1.64 referring to the omitted drawing figure(
-include . . . a drawing as prescribed by section 113 of
+s) and a petition under 37 CFR 1.182 with the
-this title” and 35
+petition fee set forth in 37 CFR 1.17(f), requesting the
-U.S.C. 111(a)(4) and 35 U.S.C.
+date of submission of the omitted drawing figure(s) as
-(b)(4) each provide, in part, that the “filing date. . .
+the application filing date; or
-shall be the date on which . . . any required drawing
-are received in the Patent and Trademark Office.” 35
-U.S.C. 113 (first sentence) in turn provides that an
-“applicant shall furnish a drawing where necessary for
-the understanding of the subject matter sought to be
-patented.”
-Applications filed without drawings are initially
+(C) file a petition under 37 CFR 1.53(e) with the
-inspected to determine whether a drawing is referred
+petition fee set forth in 37 CFR 1.17(f) alleging that
-to in the specification, and if not, whether a drawing is
+the drawing figure(s) indicated as omitted was in fact
-necessary for the understanding of the invention. 35
+deposited with the USPTO with the application
-U.S.C. 113 (first sentence).
+papers, including any and all evidence supporting the
+allegation. See MPEP § 503. The petition fee will be
+refunded if it is determined that the drawing figure(s)
+was in fact received by the USPTO with the application
+papers deposited on filing.
-It has been USPTO practice to treat an application
+If applicant is willing to accept the application, as
-that contains at least one process or method claim as
+filed, without all of the drawing figure(s) referred to
-an application for which a drawing is not necessary
+in the application (item A above), applicant is
-for an understanding of the invention under 35 U.S.C.
+required to submit (1) an amendment to the specification
-(first sentence). The same practice has been followed
+canceling all references to the omitted drawing
-in composition applications. Other situations in
+figure(s) including any reference numerals shown
-which drawings are usually not considered necessary
+only in the omitted drawing figure(s), (2) an amendment
-for the understanding of the invention under 35
+with replacement sheets of drawings in compliance
-U.S.C. 113 (first sentence) are:
+with 37 CFR 1.121(d) renumbering the drawing
+figure(s) submitted on filing consecutively, and (3) a
+further amendment to the specification correcting references
+to drawing figure(s) to correspond with the
+relabeled drawing figure(s), both in the brief and
+detailed descriptions of the drawings. The amendment
+should be submitted in response to the Office action.
-(A)Coated articles or products: where the invention
+If an application was filed on or after September
-resides solely in coating or impregnating a conventional
+, 2004, and contains a claim under 37 CFR 1.55 for
-sheet (e.g., paper or cloth, or an article of
+priority of a prior-filed foreign application, or a claim
-known and conventional character with a particular
+under 37 CFR 1.78 for the benefit of a prior-filed provisional,
-composition), unless significant details of structure or
+nonprovisional, or international application
-arrangement are involved in the article claims;
+that was present on the filing date of the application,
+and the omitted portion of the drawing(s) was inadvertently
-(B)Articles made from a particular material or
+omitted from the application and is completely
-composition: where the invention consists in making
+contained in the prior-filed application,
-an article of a particular material or composition,
+applicant may submit an amendment to include the
-unless significant details of structure or arrangement
+inadvertently omitted portion of the drawing(s) pursuant
-are involved in the article claims;
+to 37 CFR 1.57(a). The amendment should be submitted
+in response to the Office action and must
+comply with 37 CFR 1.57(a) and 37 CFR 1.121. See
+MPEP § 201.17.
-(C)Laminated structures: where the claimed
+Any petition filed in accordance with item (B) or
-invention involves only laminations of sheets (and
+(C) above should be filed with the TC. The TC will
-coatings) of specified material unless significant
+match the petition with the application file and forward
-details of structure or arrangement (other than the
+the application file with the petition to the Office
-mere order of the layers) are involved in the article
+of Petitions, along with a brief explanation as to the
-claims; or
+drawing figure(s) that has been omitted on filing, for
+consideration of the petition in due course.
-(D)Articles, apparatus, or systems where sole
+B. Application NOT Entitled to a Filing Date
-distinguishing feature is presence of a particular
-material: where the invention resides solely in the use
-of a particular material in an otherwise old article,
-apparatus or system recited broadly in the claims, for
-example:
-(1)A hydraulic system distinguished solely by
+If upon review of the application, the examiner
-the use therein of a particular hydraulic fluid;
+determines that the application is NOT entitled to a
+filing date because the application does not contain
-(2)Packaged sutures wherein the structure and
+any drawing figure, and at least one drawing figure is
-arrangement of the package are conventional and the
+necessary under 35 U.S.C 113, first sentence, the
-only distinguishing feature is the use of a particular
+examiner should forward the application to OIPE for
-material.
+mailing of a “Notice of Incomplete Application.”
+====601.01(h) Forms====
+The Office of Initial Patent Examination (OIPE) is
+no longer using pre-printed forms and is instead using
+individualized notices generated by a computer to
+notify applicants of defects.
+===601.02 Power of Attorney===
+The attorney’s or agent’s full mailing address
+(including ZIP Code) must be given in every power of
+attorney. The telephone and fax numbers of the attorney
+or agent should also be included in the power. The
+prompt delivery of communications will thereby be
+facilitated.
+A power of attorney may be incorporated in the
+oath or declaration form when the power of attorney
+is given by inventors. Otherwise, a separate power of
+attorney (e.g., PTO/SB/81) should be used. (See
+MPEP § 402.)
+===601.03 Change of Correspondence Address===
+{{Statute|37 CFR 1.33. Correspondence respecting patent applications, reexamination proceedings, and other proceedings.}}
-A nonprovisional application having at least one
+(a) Correspondence address and daytime telephone number.
-claim, or a provisional application having at least
+When filing an application, a correspondence address must be set
-some disclosure, directed to the subject matter discussed
+forth in either an application data sheet (§ 1.76), or elsewhere, in a
-above for which a drawing is usually not considered
+clearly identifiable manner, in any paper submitted with an application
-essential for a filing date, not describing
+filing. If no correspondence address is specified, the Office
-drawing figures in the specification, and filed without
+may treat the mailing address of the first named inventor (if provided,
-drawings will simply be processed , so long as the
+see §§ 1.76(b)(1) and 1.63(c)(2)) as the correspondence
-application contains something that can be construed
+address. The Office will direct all notices, official letters, and
-as a written description. A nonprovisional application
+other communications relating to the application to the correspondence
-having at least one claim, or a provisional application
+address. The Office will not engage in double correspondence
-having at least some disclosure, directed to the subject
+with an applicant and a patent practitioner, or with more
-matter discussed above for which a drawing is usually
+than one patent practitioner except as deemed necessary by the
-not considered essential for a filing date, describing
+Director. If more than one correspondence address is specified in
-drawing figure(s) in the specification, but filed without
+a single document, the Office will select one of the specified
-drawings will be treated as an application filed
+addresses for use as the correspondence address and, if given, will
-without all of the drawing figures referred to in the
+select the address associated with a Customer Number over a
-specification as discussed in MPEP § 601.01(g), so
+typed correspondence address. For the party to whom correspondence
-long as the application contains something that can be
+is to be addressed, a daytime telephone number should be
-construed as a written description. In a situation in
+supplied in a clearly identifiable manner and may be changed by
-which the appropriate Technology Center (TC) determines
+any party who may change the correspondence address. The correspondence
-that drawings are necessary under 35 U.S.C.
+address may be changed as follows:
-(first sentence) the filing date issue will be reconsidered
-by the USPTO. The application will be
-returned to the Office of Initial Patent Examination
-(OIPE) for mailing of a “Notice of Incomplete Application.”
+{{tab1}}(1) Prior to filing of § 1.63 oath or declaration by any of the inventors. If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.</p>
-If a nonprovisional application does not have at
+{{tab1}}(2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).</p>
-least one claim directed to the subject matter discussed
+|}
-above for which a drawing is usually not considered
-essential for a filing date, or a provisional
-application does not have at least some disclosure
-directed to the subject matter discussed above for
-which a drawing is usually not considered essential
-for a filing date, and is filed without drawings, OIPE
-will mail a “Notice of Incomplete Application” indicating
-that the application lacks drawings and that
-U.S.C. 113 (first sentence) requires a drawing
-where necessary for the understanding of the subject
-matter sought to be patented.
-Applicant may file a petition under 37 CFR 1.53(e)
-with the petition fee set forth in 37 CFR 1.17(f),
-asserting that (A) the drawing(s) at issue was submitted,
-or (B) the drawing(s) is not necessary
-under 35 U.S.C. 113 (first sentence) for a filing date.
-The petition must be accompanied by sufficient evidence
-to establish applicant’s entitlement to the
-requested filing date (e.g., a date-stamped postcard
-receipt (MPEP §
-) to establish prior receipt in the
-USPTO of the drawing(s) at issue). Alternatively,
-applicant may submit drawing(s) accompanied by an
-oath or declaration in compliance with 37 CFR 1.63and 1.64 referring to the drawing(s) being submitted
-and accept the date of such submission as the application
-filing date.
-As an alternative to a petition under 37 CFR
+CFR 1.33(a) provides that the application must
-.53(e), if the drawing(s) was inadvertently omitted
+specify a correspondence address to which the Office
-from an application filed on or after September 21,
+will send notice, letters, and other communications
-, and the application contains a claim under 37
+relating to an application. The correspondence
-CFR 1.55 for priority of a prior-filed foreign application,
+address must either be in an application data sheet (37
-or a claim under 37 CFR 1.78 for the benefit of a
+CFR 1.76) or in a clearly identifiable manner elsewhere
-prior-filed provisional, nonprovisional, or international
+in any papers submitted with the application
-application, that was present on the filing date
+filing. If more than one correspondence address is
-of the application, and the inadvertently omitted
+specified in a single document, the Office will
-drawing(s) is completely contained in the prior-filed
+select one of the specified addresses for use as the
-application, the applicant may submit the omitted
+correspondence address and, if given, will select the
-drawing(s) by way of an amendment in compliance
+address associated with a Customer Number over a
-with 37 CFR 1.57(a). The amendment must be by way
+typed correspondence address. Additionally, applicants
-of a petition under 37 CFR 1.57(a)(3) accompanied by
+will often specify the correspondence address in
-the petition fee set forth in 37 CFR 1.17(f). See MPEP
+more than one paper that is filed with an application,
-§ 201.17.
+and the address given in the different places sometimes
+conflicts. Where the applicant specifically
+directs the Office to use non-matching correspondence
+addresses in more than one paper, priority will
+be accorded to the correspondence address specified
+in the following order: (A) Application data sheet
+(ADS); (B) application transmittal; (C) oath or declaration
+(unless power of attorney is more current); and
+(D) power of attorney. Accordingly, if the ADS
+includes a typed correspondence address, and the declaration
+gives a different address (i.e., the address
+associated with a Customer Number) as the correspondence
+address, the Office will use the typed correspondence
+address as included on the ADS. In the
+experience of the Office, the ADS is the most recently
+created document and tends to have the most current
+address. After the correspondence address has been
+entered according to the above procedure, it will only
+be changed pursuant to 37 CFR 1.33(a)(1).
+The submission of a daytime telephone number of
+the party to whom correspondence is to be addressed
+is requested pursuant to 37 CFR 1.33(a). While business
+is to be conducted on the written record (37 CFR
+.2), a daytime telephone number would be useful in
+initiating contact that could later be reduced to writing.
+Any party who could change the correspondence
+address could also change the telephone number.
-In design applications, OIPE will mail a “Notice of
+CFR 1.33(a)(1) provides that the party filing the
-Incomplete Application” indicating that the application
+application and setting forth a correspondence address
-lacks the drawings required under 35 U.S.C. 113(first sentence). The applicant may: (A) promptly
+may later change the correspondence address provided
-file a petition under 37 CFR 1.53(e) with the petition
+that an executed oath or declaration under 37
-fee set forth in 37
+CFR 1.63 by any of the inventors has not been filed. If
-CFR 1.17(f), asserting that the
+a patent practitioner (i.e., registered attorney or
-missing drawing(s) was submitted; or (B)
+agent) filed the application, any other patent
-promptly submit drawing(s) accompanied by an oath
+practitioners named in the transmittal letter may
-or declaration in compliance with 37 CFR 1.63 and 37
+also change the correspondence address. A
-CFR 1.64 and accept the date of such submission as
+patent practitioner named in a letterhead would
-the application filing date. Applicant may also be
+not be considered as being named in the transmittal
-able to file an amendment by way of a petition under
+letter for purposes of changing the correspondence
-CFR 1.57(a)(3) as discussed above. 37 CFR
+address. A clear identification of the individual as a
-.153(a) provides that the claim in a design application
+representative would be required. If an application is
-“shall be in formal terms to the ornamental
+filed by a company to whom the invention has been assigned or to whom there is an obligation to assign
-design for the article (specifying name) as shown, or
+the invention, a person who has the authority to act on
-as shown and described.” As such, petitions under 37
+behalf of the company may change the correspondence
-CFR 1.53(e) asserting that drawings are unnecessary
+address. Thus, the inventor(s), any patent
-under 35 U.S.C. 113 (first sentence) for a filing date in
+practitioner named in the transmittal papers accompanying
-a design application will not be found persuasive.
+the original application, or a party that will be
+the assignee who filed the application, may change
-The treatment of an application subsequent to the
+the correspondence address pursuant to 37 CFR
-mailing of a “Notice of Incomplete Application” is
+.33(a)(1). The filing of an executed oath or declaration
-discussed in MPEP § 601.01(d).
+that does not include a correspondence address
+does not affect any correspondence address previously
+established on filing of the application, or
+changed pursuant to 37 CFR 1.33(a)(1).
+Where a correspondence address has been established
+on filing of the application or changed pursuant
+to 37 CFR 1.33(a)(1) (prior to the filing of an executed
+oath or declaration under 37 CFR 1.63 by any of
+the inventors), that correspondence address remains in
+effect upon filing of an executed oath or declaration
+under 37 CFR 1.63 and can only be subsequently
+changed pursuant to 37 CFR 1.33(a)(2). Under 37
+CFR 1.33(a)(2), where an executed oath or declaration
+under 37 CFR 1.63 has been filed by any of the
+inventors, the correspondence address may be
+changed by (A) a patent practitioner of record,
+(B) an assignee as provided for under 37 CFR
+.71(b), or (C) all of the applicants (37 CFR
+.41(b)) for patent, unless there is an assignee of the
+entire interest and such assignee has taken action in
+the application in accordance with 37 CFR 3.71. See
+CFR1.33(a)(2).
+Where an attorney or agent of record (or applicant,
+if he or she is prosecuting the application pro se)
+changes his or her correspondence address, he or she
+is responsible for promptly notifying the U.S. Patent
+and Trademark Office of the new correspondence
+address (including ZIP Code). See 37 CFR 11.11.
+The notification should also include his or her telephone
+number. A change of correspondence address
+may not be signed by an attorney or agent not of
+record (see MPEP § 405).
+Unless the correspondence address is designated as
+the address associated with a Customer Number, a
+separate notification must be filed in each application
+for which a person is intended to receive communications
+from the Office. See MPEP § 403 for Customer
+Number Practice. In those instances where a change
+in the correspondence address of a registered attorney
+or agent is necessary in a plurality of applications, the
+notification filed in each application may be a reproduction
+of a properly executed, original notification.
+The original notice may either be sent to the Office of
+Enrollment and Discipline as notification to the Attorney’s
+Roster of the change of address, or may be
+retained by applicant. See MPEP § 502.02.
+Special care should be taken in continuation or
+divisional applications to ensure that any change of
-.01(g)Applications Filed Without AllFigures of Drawings [R-5]
+correspondence address in a prior application is
+reflected in the continuation or divisional application.
-The Office of Initial Patent Examination (OIPE)
+For example, where a copy of the oath or declaration
-reviews application papers to determine whether all of
+from the prior application is submitted for a continuation
-the figures of the drawings that are mentioned in the
+or divisional application filed under 37 CFR
-specification are present in the application. If the
+.53(b) and the copy of the oath or declaration from
-application is filed without all of the drawing figure(s)
+the prior application designates an old correspondence
-referred to in the specification, and the application
+address, the Office may not recognize, in the continuation
-contains something that can be construed as a written
+or divisional application, the change of correspondence
-description, at least one drawing, if necessary under
+address made during the prosecution of the
-U.S.C. 113 (first sentence), and, in a nonprovisional
+prior application. Applicant is required to identify the
-application, at least one claim, OIPE will mail a
+change of correspondence address in the continuation
-“Notice of Omitted Item(s)” indicating that the application
+or divisional application to ensure that communications
-papers so deposited have been accorded a filing
+from the Office are mailed to the current correspondence
-date, but are lacking some of the figures of drawings
+address. 37 CFR 1.63(d)(4).
-described in the specification.
-The mailing of a “Notice of Omitted Item(s)”
+See MPEP § 711.03(c) for treatment of petitions to
-will permit the applicant to:
+revive applications abandoned as a consequence of
+failure to timely receive an Office action addressed to
+the old correspondence address.
-(A)promptly establish prior receipt in the USPTO
+The required notification of change of correspondence
-of the drawing(s) at issue. An applicant asserting that
+address need take no particular form. However,
-the drawing(s) was in fact received by the USPTO
+it should be provided in a manner calling attention to
-with the application papers must, within 2 months
+the fact that a change of address is being made. Thus,
-from the date of the “Notice of Omitted Item(s),” file
+the mere inclusion, in a paper being filed for another
-a petition under 37 CFR 1.53(e) with the petition fee
+purpose, of an address which is different from the previously
-set forth in 37 CFR 1.17(f), along with evidence of
+provided correspondence address, without
-such deposit (37 CFR 1.181(f)). The petition fee will
+mention of the fact that an address change is being
-be refunded if it is determined that the drawing(s) was
+made would not ordinarily be recognized or deemed
-in fact received by the USPTO with the application
+as instructions to change the correspondence address
-papers deposited on filing. The 2-month period is notextendable under 37 CFR 1.136;
+on the file record.
+The obligation (see 37 CFR 11.11) of a registered
+attorney or agent to notify the Attorney’s Roster by
+letter of any change of his or her address for entry on
+the register is separate from the obligation to file a
+notice of change of address filed in individual applications.
+See MPEP § 402.
+===601.04 National Stage Requirements ofthe United States as a Designated Office===
-(B)promptly submit the omitted drawing(s) in a
+See MPEP Chapter 1800, especially MPEP §
-nonprovisional application and accept the date of such
+.01 for requirements for entry into the national
-submission as the application filing date. An applicant
+stage before the Designated Office or Elected Office
-desiring to submit the omitted drawing(s) in a nonprovisional
+under the Patent Cooperation Treaty (PCT).
-application and accept the date of such submission
-as the application filing date must, within 2
+===601.05 Bibliographic Information - Application Data Sheet (ADS)===
-months from the date of the “Notice of Omitted
-Item(s),” file any omitted drawing(s) with an oath or
-declaration in compliance with 37 CFR 1.63 and 37
-CFR 1.64 referring to such drawing(s) and a petition
-under 37 CFR 1.182 with the petition fee set forth in
-CFR 1.17(f), requesting the later filing date (37
-CFR 1.181(f)). The 2-month period is not extendable
-under 37 CFR 1.136; or
-(C)accept the application as deposited in the
+{{Statute|37 CFR 1.76. Application Data Sheet}}
-USPTO. Applicant may accept the application as
+(a) Application data sheet. An application data sheet is a
-deposited in the USPTO by either:
+sheet or sheets, that may be voluntarily submitted in either provisional
+or nonprovisional applications, which contains bibliographic
+data, arranged in a format specified by the Office. An
+application data sheet must be titled “Application Data Sheet” and
+must contain all of the section headings listed in paragraph (b) of
+this section, with any appropriate data for each section heading. If
+an application data sheet is provided, the application data sheet is
+part of the provisional or nonprovisional application for which it
+has been submitted.
-(1)not filing a petition under 37 CFR 1.53(e)
+(b) Bibliographic data. Bibliographic data as used in paragraph
-or 37 CFR 1.182 (and the required petition fee) as discussed
+(a) of this section includes:
-above within 2 months of the date of the
-“Notice of Omitted Item(s).” The failure to file a petition
+(1) Applicant information. This information includes the
-under 37 CFR 1.53(e) or 37 CFR 1.182 will be
+name, residence, mailing address, and citizenship of each applicant
-treated as constructive acceptance by the applicant of
+(§ 1.41(b)). The name of each applicant must include the
-the application as deposited in the USPTO. The application
+family name, and at least one given name without abbreviation
-will maintain the filing date as of the date of
+together with any other given name or initial. If the applicant is
-deposit of the original application papers in the
+not an inventor, this information also includes the applicant’s
-USPTO. The original application papers (i.e., the original
+authority (§§ 1.42, 1.43, and 1.47) to apply for the patent on
-disclosure of the invention) will include only
+behalf of the inventor.
-those application papers present in the USPTO on the
-original date of deposit. Amendment of the specification
-is required in a nonprovisional application to cancel
-all references to the omitted drawing, both in the
-brief and detailed descriptions of the drawings and
-including any reference numerals shown only in the
-omitted drawings. In addition, an amendment with
-replacement sheets of drawings in compliance with 37
-CFR 1.121(d) is required in a nonprovisional application
-to renumber the drawing figures consecutively, if
-necessary, and amendment of the specification is
-required to correct the references to the drawing figures
-to correspond with any relabeled drawing figures,
-both in the brief and detailed descriptions of the
-drawings. Such amendment should be by way of preliminary
-amendment submitted prior to the first
-Office action to avoid delays in the prosecution of the
-application, or
-(2)filing an amendment under 37 CFR
+(2) Correspondence information. This information
-.57(a). If an application was filed on or after September
+includes the correspondence address, which may be indicated by
-, 2004, and contains a claim under 37 CFR 1.55for priority of a prior-filed foreign application, or a
+reference to a customer number, to which correspondence is to be
-claim under 37 CFR 1.78 for the benefit of a prior-
+directed (see § 1.33(a)).
-filed provisional, nonprovisional, or international
-application that was present on the filing date of the
-application, and the omitted portion of the drawings
-was inadvertently omitted from the application and is
-completely contained in the prior-filed application,
-applicant may submit an amendment to include the
-inadvertently omitted portion of the drawings pursuant
-to 37 CFR 1.57(a). Such amendment should be by
-way of a preliminary amendment and the preliminary
-amendment must be submitted within 2 months from
-the date of the “Notice of Omitted Item(s).” The
-amendment should be identified as an amendment
-pursuant to 37 CFR 1.57(a) and must comply with the
-requirements of 37 CFR 1.57(a) and 37 CFR 1.121.
+(3) Application information. This information includes
+the title of the invention, a suggested classification, by class and
+subclass, the Technology Center to which the subject matter of the
+invention is assigned, the total number of drawing sheets, a suggested
+drawing figure for publication (in a nonprovisional application),
+any docket number assigned to the application, the type of
+application (e.g., utility, plant, design, reissue, provisional),
+whether the application discloses any significant part of the subject
+matter of an application under a secrecy order pursuant to §
+.2 of this chapter (see § 5.2(c)), and, for plant applications, the
+Latin name of the genus and species of the plant claimed, as well
+as the variety denomination. The suggested classification and
+Technology Center information should be supplied for provisional
+applications whether or not claims are present. If claims are not
+present in a provisional application, the suggested classification
+and Technology Center should be based upon the disclosure.
+(4) Representative information. This information includes
+the registration number of each practitioner having a power of
+attorney in the application (preferably by reference to a customer
+number). Providing this information in the application data sheet
+does not constitute a power of attorney in the application (see §
+.32).
+(5) Domestic priority information. This information
+includes the application number, the filing date, the status (including
+patent number if available), and relationship of each application
+for which a benefit is claimed under 35 U.S.C. 119(e), 120,
+, or 365(c). Providing this information in the application data
+sheet constitutes the specific reference required by 35 U.S.C.
+(e) or 120, and § 1.78(a)(2) or § 1.78(a)(5), and need not otherwise
+be made part of the specification.
+(6) Foreign priority information. This information
+includes the application number, country, and filing date of each
+foreign application for which priority is claimed, as well as any
+foreign application having a filing date before that of the application
+for which priority is claimed. Providing this information in
+the application data sheet constitutes the claim for priority as
+required by 35 U.S.C. 119(b) and § 1.55(a).
+(7) Assignee information. This information includes the
+name (either person or juristic entity) and address of the assignee
+of the entire right, title, and interest in an application. Providing
+this information in the application data sheet does not substitute
+for compliance with any requirement of part 3 of this chapter to
+have an assignment recorded by the Office.
-See MPEP § 201.17. The application will maintain
+(c) Supplemental application data sheets. Supplemental
-the filing date as of the date of deposit of the original
+application data sheets:
-application papers in the USPTO. The original application
-papers (i.e., the original disclosure of the
-invention) will include only those application papers
-present in the USPTO on the original date of deposit.
-The 2-month period is not extendable under 37 CFR
-.136.
-Any petition under 37 CFR 1.53(e) or 37 CFR
+(1) May be subsequently supplied prior to payment of the
-.182 not filed within the 2-month period set in the
+issue fee either to correct or update information in a previously
-“Notice of Omitted Item(s)” may be dismissed as
+submitted application data sheet, or an oath or declaration under §
-untimely. 37 CFR 1.181(f). Under the adopted procedure,
+.63 or § 1.67, except that inventorship changes are governed by §
-the USPTO may strictly adhere to the 2-month
+.48, correspondence changes are governed by § 1.33(a), and citizenship
-period set forth in 37 CFR 1.181(f), and dismiss as
+changes are governed by § 1.63 or § 1.67; and
-untimely any petition not filed within the 2-month
-period. This strict adherence to the 2-month period set
+(2) Must be titled “Supplemental Application Data
-forth in 37 CFR 1.181(f) is justified as such applications
+Sheet,” include all of the section headings listed in paragraph (b)
-will now be forwarded for examination at the
+of this section, include all appropriate data for each section heading,
-end of the 2-month period. It is further justified in
+and must identify the information that is being changed, preferably
-instances in which applicant seeks to submit the omitted
+with underlining for insertions, and strike-through or
-drawing(s) in a nonprovisional application and
+brackets for text removed.
-request the date of such submission as the application
-filing date as: (A) according the application a filing
-date later than the date of deposit may affect the date
-of expiration of any patent issuing on the application
-due to the changes to 35 U.S.C. 154 contained in Public
-Law 103-465, § 532, 108 Stat. 4809 (1994); and
-(B) the filing of a continuation-in-part application is a
-sufficiently equivalent mechanism for adding additional
-subject matter to avoid the loss of patent rights.
-The submission of omitted drawing(s) in a nonprovisional
+(d) Inconsistencies between application data sheet and other
-application and acceptance of the date of
+documents. For inconsistencies between information that is supplied
-such submission as the application filing date is tantamount
+by both an application data sheet under this section and other
-to simply filing a new application. Thus, applicants
+documents.
-should consider filing a new application as an
-alternative to submitting a petition under 37 CFR
-.182 (with the petition fee under 37 CFR 1.17(f))
-with any omitted drawing(s), which is a cost effective
-alternative in instances in which a nonprovisional
-application is deposited without filing fees. Likewise,
-in view of the relatively low filing fee for provisional
-applications, and 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. The applicant should simply file a new
-completed provisional application.
-Applications in which a “Notice of Omitted
+(1) The latest submitted information will govern notwithstanding
-Item(s)” has been mailed will be retained in OIPE for
+whether supplied by an application data sheet, an amendment
-a period of 2 months from the mailing date of the
+to the specification, a designation of a correspondence
-notice. Nonprovisional applications that are complete
+address, or by a § 1.63 or § 1.67 oath or declaration, except as
-under 37 CFR 1.51(b) will then be forwarded to the
+provided by paragraph (d)(3) of this section;
-appropriate Technology Center for examination of the
-application. Provisional applications that are complete
-under 37 CFR 1.51(c) will then be forwarded to the
-Files Repository. The current practice for treating
-applications that are not complete under 37 CFR
-.51(b) and (c) will remain unchanged (37 CFR
-.53(f) and (g)).
-The treatment of an application subsequent to the
+(2) The information in the application data sheet will
-mailing of a “Notice of Omitted Item(s)” is discussed
+govern when the inconsistent information is supplied at the same
-in MPEP § 601.01(d).
+time by an amendment to the specification, a designation of correspondence
+address, or a § 1.63 or § 1.67 oath or declaration,
+except as provided by paragraph (d)(3) of this section;
-Applications are often filed with drawings with
+(3) The oath or declaration under § 1.63 or § 1.67 governs
-several views of the invention where the views are
+inconsistencies with the application data sheet in the naming of inventors (§ 1.41 (a)(1)) and setting forth their citizenship (35
-labeled using a number-letter combination, e.g., Fig.
+U.S.C. 115);
-A, Fig. 1B, and Fig. 1C. OIPE will not mail a
-“Notice of Omitted Item(s)” if a figure which is
-referred to in the specification by a particular number
-cannot be located among the drawings, if the drawings
-include at least one figure labeled with that particular
-number in combination with a letter. For
-example, if the drawings show Figures 1A, 1B, and
-C and the brief description of the drawings refers
-only to Figure 1, this is an error in the specification
-which must be corrected, rather than an application
-filed without all figures of drawings.
-APPLICATION LOCATED IN A TECHNOLOGY
+(4) The Office will capture bibliographic information
-CENTER
+from the application data sheet (notwithstanding whether an oath
+or declaration governs the information). Thus, the Office shall
+generally, for example, not look to an oath or declaration under §
+.63 to see if the bibliographic information contained therein is
+consistent with the bibliographic information captured from an
+application data sheet (whether the oath or declaration is submitted
+prior to or subsequent to the application data sheet). Captured
+bibliographic information derived from an application data sheet
+containing errors may be corrected if applicant submits a request
+therefor and a supplemental application data sheet.
+|}
-If it is discovered that an application, located in a
-Technology Center (TC), was filed without all of the
-drawing figure(s) referred to in the specification, and
-a Notice of Omitted Items has not been mailed by
-the
-OIPE, the examiner should review the application
-to determine whether the application is entitled to a
-filing date. An application is entitled to a filing
-date
-if
-the application contains something that can be
-construed as a written description, at least one drawing
-figure (if necessary under 35 U.S.C. 113, first sentence),
-and at least one claim.
-A. Application Entitled to a Filing Date
+CFR 1.76 provides for the voluntary inclusion of
+an application data sheet in provisional and nonprovisional
+applications. A guide to preparing an application
+data sheet (Patent Application Bibliographic Data Entry
+Format) can be found on the U.S. Patent and Trademark
+Office (Office) Web site “http:\\www.uspto.gov”.
-If the application is entitled to a filing date, the
+An application data sheet (ADS) is a sheet or set of
-examiner should notify applicant of the omission in
+sheets containing bibliographic data, which is
+arranged in a format specified by the Office. When an
+application data sheet is provided in a provisional or
+nonprovisional application, the application data sheet
+becomes part of the provisional or nonprovisional
+application and must comply with 37 CFR 1.52.
+While the use of an application data sheet is optional,
-the next Office action and require applicant to do one
+the Office prefers its use to help facilitate the electronic
-of the following:
+capturing of this important data. For example,
+in a national stage application filed under 35 U.S.C.
+, the Office could look to the publication of the
+international application for the title (see MPEP §
+.03(e)) and to other documents for the listing of
+inventors and the correspondence address, but it is
+more desirable for the Office to only refer to a single
+document, i.e., an application data sheet. The data that
+is suggested to be supplied by way of an application
+data sheet can also be provided elsewhere in the application
+papers, but it is to applicant’s advantage to submit
+the data via an application data sheet. To help
+ensure that the Office can, in fact, efficiently capture
+the data, the Office specifies a particular format to be
+used. The Office does not, however, provide an application
+data sheet paper form because of the variability
+in the data submitted (e.g., one application may have
+no domestic priority data and a single inventor, and
+others may have domestic priority data to a number of
+prior U.S. applications and have multiple joint inventors).
-(A)accept the application, as filed, without all of
+CFR 1.76(a) requires that any ADS contain the
-the drawing figure(s) referred to in the specification;
+seven headings listed in 37 CFR 1.76(b) with any
+appropriate data for each section heading. The ADS
-(B)file any omitted drawing figure(s) with an
+must be titled “Application Data Sheet” and any label
-oath or declaration in compliance with 37 CFR 1.63and 37 CFR 1.64 referring to the omitted drawing figure(
+(e.g., the label “Given Name” in the “Applicant Information”
-s) and a petition under 37 CFR 1.182 with the
+heading) that does not contain any corresponding
-petition fee set forth in 37 CFR 1.17(f), requesting the
+data will be interpreted by the Office to
-date of submission of the omitted drawing figure(s) as
+mean that there is no corresponding data for that label
-the application filing date; or
+anywhere in the application. By requiring an ADS to
+contain all seven section headings, and any appropriate
+data for the sections, the accuracy of bibliographic
+data in patent applications will be enhanced and the
+need for corrected filing receipts related to Office
+errors will be reduced.
+Bibliographic data under 37 CFR 1.76(b) includes:
+(1) applicant information;
+(2) correspondence information;
+(3) application information;
+(4) representative information;
+(5) domestic priority information;
+(6) foreign priority information; and
+(7) assignee information.
-(C)file a petition under 37 CFR 1.53(e) with the
+The naming of the inventors and the setting forth of the citizenship of each inventor must be provided in the oath or declaration under 37 CFR 1.63 (as is required by 35 U.S.C 115) even if this information is provided in the application data sheet.
-petition fee set forth in 37 CFR 1.17(f) alleging that
-the drawing figure(s) indicated as omitted was in fact
-deposited with the USPTO with the application
-papers, including any and all evidence supporting the
-allegation. See MPEP § 503. The petition fee will be
-refunded if it is determined that the drawing figure(s)
-was in fact received by the USPTO with the application
-papers deposited on filing.
-If applicant is willing to accept the application, as
+Applicant information includes the name, residence,
-filed, without all of the drawing figure(s) referred to
+mailing address, and citizenship of each applicant
-in the application (item A above), applicant is
+(37 CFR 1.41(b)). The name of each applicant
-required to submit (1) an amendment to the specification
+must include the family name, and at least one given
-canceling all references to the omitted drawing
+name without abbreviation together with any other
-figure(s) including any reference numerals shown
+given name or initial. If the applicant is not an inventor,
-only in the omitted drawing figure(s), (2) an amendment
+this information also includes the applicant’s
-with replacement sheets of drawings in compliance
+authority (37 CFR 1.42, 1.43, and 1.47) to apply for
-with 37 CFR 1.121(d) renumbering the drawing
+the patent on behalf of the inventor. The “mailing
-figure(s) submitted on filing consecutively, and (3) a
+address” is the address where applicant customarily
-further amendment to the specification correcting references
+receives mail.
-to drawing figure(s) to correspond with the
-relabeled drawing figure(s), both in the brief and
+Correspondence information includes the correspondence
-detailed descriptions of the drawings. The amendment
+address, which may be indicated by reference
-should be submitted in response to the Office action.
+to a customer number, to which correspondence
+is to be directed (see
+CFR 1.33(a)).
-If an application was filed on or after September
+Application information includes the title of the
-, 2004, and contains a claim under 37 CFR 1.55 for
+invention, a suggested classification by class and subclass,
-priority of a prior-filed foreign application, or a claim
+the Technology Center (TC) to which the subject
-under 37 CFR 1.78 for the benefit of a prior-filed provisional,
+matter of the invention is assigned, the total
-nonprovisional, or international application
+number of drawing sheets, a suggested drawing figure
-that was present on the filing date of the application,
+for publication (in a nonprovisional application), any
-and the omitted portion of the drawing(s) was inadvertently
+docket number assigned to the application, and the
-omitted from the application and is completely
+type of application (e.g., utility, plant, design, reissue,
-contained in the prior-filed application,
+provisional). Application information also includes whether the application discloses any significant part
-applicant may submit an amendment to include the
+of the subject matter of an application under a secrecy
-inadvertently omitted portion of the drawing(s) pursuant
+order pursuant to 37 CFR 5.2(c).
-to 37 CFR 1.57(a). The amendment should be submitted
-in response to the Office action and must
-comply with 37 CFR 1.57(a) and 37 CFR 1.121. See
-MPEP § 201.17.
-Any petition filed in accordance with item (B) or
+Although the submission of the information related
-(C) above should be filed with the TC. The TC will
+to a suggested classification and TC is desired for
-match the petition with the application file and forward
+both provisional and nonprovisional applications, the
-the application file with the petition to the Office
+Office will not be bound to follow such information if
-of Petitions, along with a brief explanation as to the
+submitted, as the Office will continue to follow its
-drawing figure(s) that has been omitted on filing, for
+present procedures for classifying and assigning new
-consideration of the petition in due course.
+applications. Similarly for the suggested drawing figure,
+the Office may decide to print another figure on
+the front page of any patent issuing from the application.
-B. Application NOT Entitled to a Filing Date
+Application information also includes information
+about provisional applications, particularly their class
-If upon review of the application, the examiner
+and subclass, and the TC. Provisional applications are
-determines that the application is NOT entitled to a
+not examined or even processed (e.g., having a class
-filing date because the application does not contain
+and subclass assigned or being forwarded to a TC).
-any drawing figure, and at least one drawing figure is
+Even though provisional applications are not examined,
-necessary under 35 U.S.C 113, first sentence, the
+the TC and the class and subclass, if known to
-examiner should forward the application to OIPE for
+applicants, would be of benefit to the Office in giving
-mailing of a “Notice of Incomplete Application.”
+an indication of where nonprovisional applications
+may be eventually received in the Office and their
+technologies so that the Office will be better able to
+plan for future workloads.
-.01(h)Forms
+CFR 1.76(b)(3) also requests that the plant
+patent applicant state the Latin name and the variety
+denomination for the plant claimed. The Latin name
+and the variety denomination of the claimed plant are
+usually included in the specification of the plant
+patent application, and will be included in any plant
+patent or plant patent application publication if
+included in an application data sheet or patent application.
+The Office, pursuant to the “International Convention
+for the Protection of New Varieties of Plants”
+(generally known by its French acronym as the UPOV
+convention), has been asked to compile a database of
+the plants patented and the database must include the
+Latin name and the variety denomination of each patented
+plant. Having this information in separate sections
+of the plant patent will make the process of
+compiling this database more efficient.
-The Office of Initial Patent Examination (OIPE) is
+Representative information includes the registration
-no longer using pre-printed forms and is instead using
+number appointed with a power of attorney in the
-individualized notices generated by a computer to
+application (preferably by reference to a customer
-notify applicants of defects.
+number). 37 CFR 1.76(b)(4) states that providing this
+information in the application data sheet does not constitute
+a power of attorney in the application (see
+CFR 1.32). This is because the Office does not expect
+the application data sheet to be executed by the party
+(applicant or assignee) who may appoint a power of
+attorney in the application.
-.02Power of Attorney [R-5]
+Domestic priority information includes the application
+number (series code and serial number), the filing
-The attorney’s or agent’s full mailing address
+date, the status (including patent number if
-(including ZIP Code) must be given in every power of
+available), and relationship of each application for
-attorney. The telephone and fax numbers of the attorney
+which a benefit is claimed under 35
-or agent should also be included in the power. The
+U.S.C. 119(e),
-prompt delivery of communications will thereby be
+, 121, or 365(c). 37 CFR 1.76(b)(5) states that providing
-facilitated.
+this information in the application data sheet
+constitutes the specific reference required by
-A power of attorney may be incorporated in the
+U.S.C.119(e) or 120. Since the application data
-oath or declaration form when the power of attorney
+sheet, if provided, is considered part of the application,
-is given by inventors. Otherwise, a separate power of
+the specific reference to an earlier filed provisional
-attorney (e.g., PTO/SB/81) should be used. (See
+or nonprovisional application in the application
-MPEP §
+data sheet satisfies the “specific reference” requirement
+of 35 U.S.C.119(e)(1) or 120, and it also complies
-.)
+with 37 CFR 1.78(a)(2) (iii) or (a)(5)(iii). Thus,
+a specific reference does not otherwise have to be
+made in the specification, such as in the first sentence(
+s) of the specification. If continuity data is
+included in an application data sheet, but not in the
+first sentence(s) of the specification, the continuity
+data for the patent front page will be taken from the
+application data sheet. No continuity data will be
+included in the first sentence(s) of the specification if
+applicant does not provide it there. 37 CFR 1.76(b)(5)
+does not apply to provisional applications.
+Foreign priority information includes the application
+number, country, and filing date of each foreign
+application for which priority is claimed, as well as
+any foreign application having a filing date before
+that of the application for which priority is claimed.
+CFR 1.76(b)(6) states that providing this information
+in the application data sheet constitutes the claim
+for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55(a). The patent statute, 35 U.S.C. 119(b), does not require that a claim to the benefit of a prior foreign application take any particular form. 37 CFR 1.76(b)(6) does not apply to provisional applications.
+CFR 1.76(b)(7) provides that the assignee information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. The inclusion of this information in the application data sheet does not substitute for compliance with any requirement of 37 CFR part 3 to have an assignment recorded by the Office. Providing assignee information in the application data sheet is considered a request to include such information on the patent application publication, since there is no other reason for including such information in the application data sheet. Assignment information must be recorded to have legal effect.
+Supplemental application data sheets may be subsequently supplied prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under 37 CFR 1.63 or 1.67. See 37 CFR 1.76(c)(1). A supplemental data sheet cannot be used to correct the following: (1) inventorship changes (37 CFR 1.48); (2) correspondence changes (37 CFR 1.33(a)); and (3) citizenship changes (37 CFR 1.63or 37 CFR 1.67). Supplemental application data sheets must be titled “Supplemental Application Data Sheet” and also contain all of the seven section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading. Supplemental application data sheets identifying only the information that is being changed (added, deleted, or modified) in the supplemental ADS are not acceptable. A supplemental ADS containing only new or changed information is likely to confuse the record, create unnecessary work for the Office, and does not comply with 37 CFR 1.76. If no ADS was originally filed, but applicant wants to submit an ADS to correct, modify, or augment the original application data, the ADS, even though it is the first-filed ADS, must be titled “Supplemental Application Data Sheet.”
+SUPPLEMENTAL ADS SUBMISSIONS
+When submitting an application data sheet supplemental
+to the initial filing of the application, to correct,
+modify, or augment the original application data
+sheet, the following applies:
+(A)the supplemental application data sheet must
+be titled “Supplemental Application Data Sheet”
+(while the title “Supplemental Application Data
+Sheet” is preferred, “Supp. ADS”, “Supplemental
+ADS” or other variations thereof will be accepted);
-Form PTO/SB/61 Power of Attorney and Correspondence Address Indication FormForm PTO/SB/61 Power of Attorney and Correspondence Address Indication Form
+(B)the supplemental application data sheet must
+be a full replacement copy of the original ADS, if any,
+with each of the seven section headings listed in 37
+CFR 1.76(b), and with all appropriate data for the section
+heading;
+(C) the supplemental application data sheet must
+be submitted with all changes indicated, preferably
+with insertions or additions indicated by underlining,
+and deletions, with or without replacement data, indicated
+by strike-through or brackets; and
+(D) the footer information should include the
+word “Supplemental” in place of “Initial” and should
+also contain the Application Number and Filing Date.
+A supplemental ADS that is being used to correct
+data shown in an oath or declaration, such as foreign
+priority or residence information for an inventor,
+would show the original incorrect information with
+strike-through or brackets, and the new information
+with underlining, as if an ADS had originally been
+used to submit the information. For example, if the
+original oath or declaration included a foreign priority
+claim, in order to delete the foreign priority claim,
+applicant should provide a supplemental ADS showing
+the foreign priority claim with strike-through or
+brackets to ensure that the patent will reflect such
+change.
+Resolution of inconsistent information supplied by
+both an application data sheet and other documents
-Form PTO/SB/61 Privacy Act StatementForm PTO/SB/61 Privacy Act Statement
+(e.g., the oath or declaration under
+CFR 1.63, or 37
+CFR 1.67) are addressed in 37 CFR 1.76(d). If an
+ADS is inconsistent with the information provided in
+another document that was submitted at the same time
+or previous to the ADS submission, the ADS will control.
+CFR 1.76(d)(1) provides that the latest submitted
+information will govern notwithstanding
+whether supplied by an application data sheet, an
+amendment to the specification, a designation of a
+correspondence address, or by an oath or declaration
+under 37 CFR 1.63 or 37 CFR 1.67, except as provided
+by 37 CFR 1.76(d)(3). This is because the
+application data sheet is intended as the means by
+which applicants will provide most information to the
+Office. In the small number of instances where
+another document has more accurate information than
+a concurrently supplied application data sheet (37
+CFR 1.76(d)(2)), a supplemental application data
+sheet should be submitted to conform the information
+presented by the supplemental application data sheet
+with the correct information in the other document(s)
+(37 CFR 1.76(d)(1)).
+If an application is filed with an application data
+sheet improperly identifying the residence of one of
+the inventors, inventor B, and an executed 37 CFR 1.63 declaration setting forth the correct but different
+residence of inventor B, the Office will capture the
+residence of inventor B found in the application data
+sheet as the residence of B, and include that information
+in the filing receipt. If applicant desires correction
+of the residence, applicant should submit a
+supplemental application data sheet under 37 CFR
+.76(c), with the name of inventor B and the corrected
+residence for inventor B.
+Pursuant to 37 CFR 1.76(d)(3), the oath or declaration
+under 37 CFR 1.63 or 37 CFR 1.67 governs
+inconsistencies with the application data sheet in the
+naming of inventors and setting forth their citizenship.
+If different inventors are listed in the application data
+sheet than are named in the oath or declaration for the
+application, the inventors named in the oath or declaration
+are considered to be the inventors named in the
+patent application. See 37 CFR 1.76(d)(3). Any
+change in the inventorship set forth in the oath or declaration
+under 37 CFR 1.63 must be by way of a
+request under 37 CFR 1.48(a) notwithstanding identification
+of the correct inventive entity in an application
+data sheet or supplemental application data sheet.
+Similarly, if the oath or declaration under 37 CFR
+.63 incorrectly sets forth the citizenship of one of the
+inventors, that inventor must submit a supplemental
+oath or declaration under 37 CFR 1.67 with the correct
+citizenship notwithstanding the correct identification
+of the citizenship in an application data sheet or
+supplemental application data sheet. If the spelling of
+the inventor’s name is incorrect, however, only a supplemental
+application data sheet is required. See
+MPEP § 605.04(b).
+The Office will rely upon information supplied in
+the application data sheet over an oath or declaration
+to capture the data even where the type of information
+supplied (citizenship, inventorship) is governed by the
+oath or declaration according to statute (35
+U.S.C.
+) or other rule (37 CFR 1.41(a)(1)). Where the
+oath or declaration under 37 CFR 1.63 or 37 CFR
+.67 contains the correct information regarding inventors
+or their citizenship and the application data sheet
+does not, even though the oath or declaration governs
+pursuant to 37 CFR
+.76(d)(3), the information in the
+application data sheet must be corrected by submission
+of a request for correction and a supplemental
+application data sheet. If the spelling of the inventor’s
+name is incorrect, however, only a supplemental
+application data sheet is required. See MPEP §
+.04(b).
+If an application is filed with an application data
+sheet correctly setting forth the citizenship of inventor
+B, and an executed 37 CFR 1.63 declaration
+setting
+forth a different incorrect citizenship of inventor
+B, the Office will capture the citizenship of inventor
+B found in the application data sheet. Applicant,
+however, must submit a supplemental oath or declaration
+under 37 CFR 1.67 by inventor B setting forth the
+correct citizenship even though it appears correctly in
+the application data sheet. A supplemental application
+data sheet cannot be used to correct the citizenship
+error in the oath or declaration. If, however, the error
+is one of residence, no change would be required (37
+CFR 1.76(d)(2)).
+Although 37 CFR 1.76 does not change the practice
+in MPEP § 201.03 and § 605.04(b) regarding correction
+of a typographical or transliteration error in
+the spelling of an inventor’s name whereby all that is
+required is notification of the error to the Office, the
+Office strongly encourages the filing of an application
+data sheet or a supplemental application data sheet to
+correct a typographical or transliteration error in the
+spelling of an inventor’s name. A supplemental oath
+or declaration is not required.
+If applicant merely files a statement notifying the
+Office of the typographical or transliteration error in
+the spelling of an inventor’s name without submitting
+an application data sheet or a supplemental application
+data sheet, any patent to issue is less likely to
+reflect the correct spelling since the spelling of the
+inventor’s name is taken from the oath or declaration,
+or any subsequently filed application data sheet.
+As to the submission of class/subclass information
+in the application data sheet, the Office notes that
-.03Change of Correspondence
+there is a distinction between permitting applicants to
-Address [R-5]
+aid in the identification of the appropriate Art Unit to
+examine the application and requiring the Office to
-CFR 1.33. Correspondence respecting patent
+always honor such identification/request, which could
-applications, reexamination proceedings, and other
+lead to misuse by some applicants of forum shopping.
-proceedings.
+Even when an applicant’s identification of an Art Unit
+is appropriate, internal staffing/workload requirements
+may dictate that the application be handled by
+another Art Unit qualified to do so, particularly when
-(a)Correspondence address and daytime telephone number.
+the art or claims encompass the areas of expertise of
-When filing an application, a correspondence address must be set
+more than one Art Unit.
-forth in either an application data sheet (§ 1.76), or elsewhere, in a
-clearly identifiable manner, in any paper submitted with an application
-filing. If no correspondence address is specified, the Office
-may treat the mailing address of the first named inventor (if provided,
-see §§ 1.76(b)(1) and 1.63(c)(2)) as the correspondence
-address. The Office will direct all notices, official letters, and
-other communications relating to the application to the correspondence
-address. The Office will not engage in double correspondence
-with an applicant and a patent practitioner, or with more
-than one patent practitioner except as deemed necessary by the
-Director. If more than one correspondence address is specified in
-a single document, the Office will select one of the specified
-addresses for use as the correspondence address and, if given, will
-select the address associated with a Customer Number over a
-typed correspondence address. For the party to whom correspondence
-is to be addressed, a daytime telephone number should be
-supplied in a clearly identifiable manner and may be changed by
-any party who may change the correspondence address. The correspondence
-address may be changed as follows:
-(1)Prior to filing of § 1.63 oath or declaration by any of
-the inventors. If a § 1.63 oath or declaration has not been filed by
-any of the inventors, the correspondence address may be changed
-by the party who filed the application. If the application was filed
-by a patent practitioner, any other patent practitioner named in the
-transmittal papers may also change the correspondence address.
-Thus, the inventor(s), any patent practitioner named in the transmittal
-papers accompanying the original application, or a party
-that will be the assignee who filed the application, may change the
-correspondence address in that application under this paragraph.
-(2)Where a § 1.63 oath or declaration has been filed by
-any of the inventors. If a § 1.63 oath or declaration has been filed,
-or is filed concurrent with the filing of an application, by any of
-the inventors, the correspondence address may be changed by the
-parties set forth in paragraph (b) of this section, except for paragraph
-(b)(2).
-CFR 1.33(a) provides that the application must
-specify a correspondence address to which the Office
-will send notice, letters, and other communications
-relating to an application. The correspondence
-address must either be in an application data sheet (37
-CFR 1.76) or in a clearly identifiable manner elsewhere
-in any papers submitted with the application
-filing. If more than one correspondence address is
-specified in a single document, the Office will
-select one of the specified addresses for use as the
-correspondence address and, if given, will select the
-address associated with a Customer Number over a
-typed correspondence address. Additionally, applicants
-will often specify the correspondence address in
-more than one paper that is filed with an application,
-and the address given in the different places sometimes
-conflicts. Where the applicant specifically
-directs the Office to use non-matching correspondence
-addresses in more than one paper, priority will
-be accorded to the correspondence address specified
-in the following order: (A) Application data sheet
-(ADS); (B) application transmittal; (C) oath or declaration
-(unless power of attorney is more current); and
-(D) power of attorney. Accordingly, if the ADS
-includes a typed correspondence address, and the declaration
-gives a different address (i.e., the address
-associated with a Customer Number) as the correspondence
-address, the Office will use the typed correspondence
-address as included on the ADS. In the
-experience of the Office, the ADS is the most recently
-created document and tends to have the most current
-address. After the correspondence address has been
-entered according to the above procedure, it will only
-be changed pursuant to 37 CFR 1.33(a)(1).
- The submission of a daytime telephone number of
-the party to whom correspondence is to be addressed
-is requested pursuant to 37 CFR 1.33(a). While business
-is to be conducted on the written record (37 CFR
-.2), a daytime telephone number would be useful in
-initiating contact that could later be reduced to writing.
-Any party who could change the correspondence
-address could also change the telephone number.
-CFR 1.33(a)(1) provides that the party filing the
-application and setting forth a correspondence address
-may later change the correspondence address provided
-that an executed oath or declaration under 37
-CFR 1.63 by any of the inventors has not been filed. If
-a patent practitioner (i.e., registered attorney or
-agent) filed the application, any other patent
-practitioners named in the transmittal letter may
-also change the correspondence address. A
-patent practitioner named in a letterhead would
-not be considered as being named in the transmittal
-letter for purposes of changing the correspondence
-address. A clear identification of the individual as a
-representative would be required. If an application is
-filed by a company to whom the invention has been
-assigned or to whom there is an obligation to assign
-the invention, a person who has the authority to act on
-behalf of the company may change the correspondence
-address. Thus, the inventor(s), any patent
-practitioner named in the transmittal papers accompanying
-the original application, or a party that will be
-the assignee who filed the application, may change
-the correspondence address pursuant to 37 CFR
-.33(a)(1). The filing of an executed oath or declaration
-that does not include a correspondence address
-does not affect any correspondence address previously
-established on filing of the application, or
-changed pursuant to 37 CFR 1.33(a)(1).
-Where a correspondence address has been established
-on filing of the application or changed pursuant
-to 37 CFR 1.33(a)(1) (prior to the filing of an executed
-oath or declaration under 37 CFR 1.63 by any of
-the inventors), that correspondence address remains in
-effect upon filing of an executed oath or declaration
-under 37 CFR 1.63 and can only be subsequently
-changed pursuant to 37 CFR 1.33(a)(2). Under 37
-CFR 1.33(a)(2), where an executed oath or declaration
-under 37 CFR 1.63 has been filed by any of the
-inventors, the correspondence address may be
-changed by (A) a patent practitioner of record,
-(B) an assignee as provided for under 37 CFR
-.71(b), or (C) all of the applicants (37 CFR
-.41(b)) for patent, unless there is an assignee of the
-entire interest and such assignee has taken action in
-the application in accordance with 37 CFR 3.71. See
-CFR1.33(a)(2).
-Where an attorney or agent of record (or applicant,
-if he or she is prosecuting the application pro se)
-changes his or her correspondence address, he or she
-is responsible for promptly notifying the U.S. Patent
-and Trademark Office of the new correspondence
-address (including ZIP Code). See 37 CFR 11.11.
-The notification should also include his or her telephone
-number. A change of correspondence address
-may not be signed by an attorney or agent not of
-record (see MPEP §
-).
-Unless the correspondence address is designated as
-the address associated with a Customer Number, a
-separate notification must be filed in each application
-for which a person is intended to receive communications
-from the Office. See MPEP § 403 for Customer
-Number Practice. In those instances where a change
-in the correspondence address of a registered attorney
-or agent is necessary in a plurality of applications, the
-notification filed in each application may be a reproduction
-of a properly executed, original notification.
-The original notice may either be sent to the Office of
-Enrollment and Discipline as notification to the Attorney’s
-Roster of the change of address, or may be
-retained by applicant. See MPEP § 502.02.
-Special care should be taken in continuation or
-divisional applications to ensure that any change of
-correspondence address in a prior application is
-reflected in the continuation or divisional application.
-For example, where a copy of the oath or declaration
-from the prior application is submitted for a continuation
-or divisional application filed under 37 CFR
-.53(b) and the copy of the oath or declaration from
-the prior application designates an old correspondence
-address, the Office may not recognize, in the continuation
-or divisional application, the change of correspondence
-address made during the prosecution of the
-prior application. Applicant is required to identify the
-change of correspondence address in the continuation
-or divisional application to ensure that communications
-from the Office are mailed to the current correspondence
-address. 37 CFR 1.63(d)(4).
-See MPEP § 711.03(c) for treatment of petitions to
-revive applications abandoned as a consequence of
-failure to timely receive an Office action addressed to
-the old correspondence address.
-The required notification of change of correspondence
-address need take no particular form. However,
-it should be provided in a manner calling attention to
-the fact that a change of address is being made. Thus,
-the mere inclusion, in a paper being filed for another
-purpose, of an address which is different from the previously
-provided correspondence address, without
-mention of the fact that an address change is being
-made would not ordinarily be recognized or deemed
-as instructions to change the correspondence address
-on the file record.
-The obligation (see 37 CFR 11.11) of a registered
-attorney or agent to notify the Attorney’s Roster by
-letter of any change of his or her address for entry on
-the register is separate from the obligation to file a
-notice of change of address filed in individual applications.
-See MPEP § 402.
-.04National Stage Requirements ofthe United States as a DesignatedOffice
-See MPEP Chapter 1800, especially MPEP §
-.01 for requirements for entry into the national
-stage before the Designated Office or Elected Office
-under the Patent Cooperation Treaty (PCT).
-.05Bibliographic Information - Application
-Data Sheet (ADS) [R-5]
-CFR 1.76. Application Data Sheet
-(a)Application data sheet. An application data sheet is a
-sheet or sheets, that may be voluntarily submitted in either provisional
-or nonprovisional applications, which contains bibliographic
-data, arranged in a format specified by the Office. An
-application data sheet must be titled “Application Data Sheet” and
-must contain all of the section headings listed in paragraph (b) of
-this section, with any appropriate data for each section heading. If
-an application data sheet is provided, the application data sheet is
-part of the provisional or nonprovisional application for which it
-has been submitted.
-(b)Bibliographic data. Bibliographic data as used in paragraph
-(a) of this section includes:
-(1)Applicant information. This information includes the
-name, residence, mailing address, and citizenship of each applicant
-(§ 1.41(b)). The name of each applicant must include the
-family name, and at least one given name without abbreviation
-together with any other given name or initial. If the applicant is
-not an inventor, this information also includes the applicant’s
-authority (§§ 1.42, 1.43, and 1.47) to apply for the patent on
-behalf of the inventor.
-(2)Correspondence information. This information
-includes the correspondence address, which may be indicated by
-reference to a customer number, to which correspondence is to be
-directed (see §
-.33(a)).
-(3)Application information. This information includes
-the title of the invention, a suggested classification, by class and
-subclass, the Technology Center to which the subject matter of the
-invention is assigned, the total number of drawing sheets, a suggested
-drawing figure for publication (in a nonprovisional application),
-any docket number assigned to the application, the type of
-application (e.g., utility, plant, design, reissue, provisional),
-whether the application discloses any significant part of the subject
-matter of an application under a secrecy order pursuant to §
-.2 of this chapter (see § 5.2(c)), and, for plant applications, the
-Latin name of the genus and species of the plant claimed, as well
-as the variety denomination. The suggested classification and
-Technology Center information should be supplied for provisional
-applications whether or not claims are present. If claims are not
-present in a provisional application, the suggested classification
-and Technology Center should be based upon the disclosure.
-(4)Representative information. This information includes
-the registration number of each practitioner having a power of
-attorney in the application (preferably by reference to a customer
-number). Providing this information in the application data sheet
-does not constitute a power of attorney in the application (see §
-.32).
-(5)Domestic priority information. This information
-includes the application number, the filing date, the status (including
-patent number if available), and relationship of each application
-for which a benefit is claimed under 35 U.S.C. 119(e), 120,
-, or 365(c). Providing this information in the application data
-sheet constitutes the specific reference required by 35 U.S.C.
-(e) or 120, and § 1.78(a)(2) or § 1.78(a)(5), and need not otherwise
-be made part of the specification.
-(6)Foreign priority information. This information
-includes the application number, country, and filing date of each
-foreign application for which priority is claimed, as well as any
-foreign application having a filing date before that of the application
-for which priority is claimed. Providing this information in
-the application data sheet constitutes the claim for priority as
-required by 35 U.S.C. 119(b) and §
-.55(a).
-(7)Assignee information. This information includes the
-name (either person or juristic entity) and address of the assignee
-of the entire right, title, and interest in an application. Providing
-this information in the application data sheet does not substitute
-for compliance with any requirement of part 3 of this chapter to
-have an assignment recorded by the Office.
-(c)Supplemental application data sheets. Supplemental
-application data sheets:
-(1)May be subsequently supplied prior to payment of the
-issue fee either to correct or update information in a previously
-submitted application data sheet, or an oath or declaration under §
-.63 or §
-.67, except that inventorship changes are governed by §
-.48, correspondence changes are governed by §
-.33(a), and citizenship
-changes are governed by § 1.63 or § 1.67; and
-(2)Must be titled “Supplemental Application Data
-Sheet,” include all of the section headings listed in paragraph (b)
-of this section, include all appropriate data for each section heading,
-and must identify the information that is being changed, preferably
-with underlining for insertions, and strike-through or
-brackets for text removed.
-(d)Inconsistencies between application data sheet and other
-documents. For inconsistencies between information that is supplied
-by both an application data sheet under this section and other
-documents.
-(1)The latest submitted information will govern notwithstanding
-whether supplied by an application data sheet, an amendment
-to the specification, a designation of a correspondence
-address, or by a § 1.63 or § 1.67 oath or declaration, except as
-provided by paragraph (d)(3) of this section;
-(2)The information in the application data sheet will
-govern when the inconsistent information is supplied at the same
-time by an amendment to the specification, a designation of correspondence
-address, or a § 1.63 or § 1.67 oath or declaration,
-except as provided by paragraph (d)(3) of this section;
-(3)The oath or declaration under § 1.63 or § 1.67 governs
-inconsistencies with the application data sheet in the naming
-of inventors (§ 1.41 (a)(1)) and setting forth their citizenship (35
-U.S.C. 115);
-(4)The Office will capture bibliographic information
-from the application data sheet (notwithstanding whether an oath
-or declaration governs the information). Thus, the Office shall
-generally, for example, not look to an oath or declaration under §
-.63 to see if the bibliographic information contained therein is
-consistent with the bibliographic information captured from an
-application data sheet (whether the oath or declaration is submitted
-prior to or subsequent to the application data sheet). Captured
-bibliographic information derived from an application data sheet
-containing errors may be corrected if applicant submits a request
-therefor and a supplemental application data sheet.
-CFR 1.76 provides for the voluntary inclusion of
-an application data sheet in provisional and nonprovisional
-applications. A guide to preparing an application
-data sheet (Patent Application Bibliographic Data Entry
-Format) can be found on the U.S. Patent and Trademark
-Office (Office) Web site “http:\\www.uspto.gov” .
- An application data sheet (ADS) is a sheet or set of
-sheets containing bibliographic data, which is
-arranged in a format specified by the Office. When an
-application data sheet is provided in a provisional or
-nonprovisional application, the application data sheet
-becomes part of the provisional or nonprovisional
-application and must comply with 37 CFR 1.52.
-While the use of an application data sheet is optional,
-the Office prefers its use to help facilitate the electronic
-capturing of this important data. For example,
-in a national stage application filed under 35 U.S.C.
-, the Office could look to the publication of the
-international application for the title (see MPEP §
-.03(e)) and to other documents for the listing of
-inventors and the correspondence address, but it is
-more desirable for the Office to only refer to a single
-document, i.e., an application data sheet. The data that
-is suggested to be supplied by way of an application
-data sheet can also be provided elsewhere in the application
-papers, but it is to applicant’s advantage to submit
-the data via an application data sheet. To help
-ensure that the Office can, in fact, efficiently capture
-the data, the Office specifies a particular format to be
-used. The Office does not, however, provide an application
-data sheet paper form because of the variability
-in the data submitted (e.g., one application may have
-no domestic priority data and a single inventor, and
-others may have domestic priority data to a number of
-prior U.S. applications and have multiple joint inventors).
-CFR 1.76(a) requires that any ADS contain the
-seven headings listed in 37 CFR 1.76(b) with any
-appropriate data for each section heading. The ADS
-must be titled “Application Data Sheet” and any label
-(e.g., the label “Given Name” in the “Applicant Information”
-heading) that does not contain any corresponding
-data will be interpreted by the Office to
-mean that there is no corresponding data for that label
-anywhere in the application. By requiring an ADS to
-contain all seven section headings, and any appropriate
-data for the sections, the accuracy of bibliographic
-data in patent applications will be enhanced and the
-need for corrected filing receipts related to Office
-errors will be reduced.
-Bibliographic data under 37 CFR 1.76(b) includes:
-(1)
-applicant information; (2) correspondence information;
-(3)
-application information; (4) representative
-information; (5)
-domestic priority information;
-(6)
-foreign priority information; and (7) assignee
-information. The naming of the inventors and the setting
-forth of the citizenship of each inventor must be
-provided in the oath or declaration under
-CFR 1.63
-(as is required by 35
-U.S.C 115) even if this information
-is provided in the application data sheet.
-Applicant information includes the name, residence,
-mailing address, and citizenship of each applicant
-(37 CFR 1.41(b)). The name of each applicant
-must include the family name, and at least one given
-name without abbreviation together with any other
-given name or initial. If the applicant is not an inventor,
-this information also includes the applicant’s
-authority (37 CFR 1.42, 1.43, and 1.47) to apply for
-the patent on behalf of the inventor. The “mailing
-address” is the address where applicant customarily
-receives mail.
-Correspondence information includes the correspondence
-address, which may be indicated by reference
-to a customer number, to which correspondence
-is to be directed (see
-CFR 1.33(a)).
- Application information includes the title of the
-invention, a suggested classification by class and subclass,
-the Technology Center (TC) to which the subject
-matter of the invention is assigned, the total
-number of drawing sheets, a suggested drawing figure
-for publication (in a nonprovisional application), any
-docket number assigned to the application, and the
-type of application (e.g., utility, plant, design, reissue,
-provisional). Application information also includes
-whether the application discloses any significant part
-of the subject matter of an application under a secrecy
-order pursuant to 37 CFR 5.2(c).
- Although the submission of the information related
-to a suggested classification and TC is desired for
-both provisional and nonprovisional applications, the
-Office will not be bound to follow such information if
-submitted, as the Office will continue to follow its
-present procedures for classifying and assigning new
-applications. Similarly for the suggested drawing figure,
-the Office may decide to print another figure on
-the front page of any patent issuing from the application.
-Application information also includes information
-about provisional applications, particularly their class
-and subclass, and the TC. Provisional applications are
-not examined or even processed (e.g., having a class
-and subclass assigned or being forwarded to a TC).
-Even though provisional applications are not examined,
-the TC and the class and subclass, if known to
-applicants, would be of benefit to the Office in giving
-an indication of where nonprovisional applications
-may be eventually received in the Office and their
-technologies so that the Office will be better able to
-plan for future workloads.
-CFR 1.76(b)(3) also requests that the plant
-patent applicant state the Latin name and the variety
-denomination for the plant claimed. The Latin name
-and the variety denomination of the claimed plant are
-usually included in the specification of the plant
-patent application, and will be included in any plant
-patent or plant patent application publication if
-included in an application data sheet or patent application.
-The Office, pursuant to the “International Convention
-for the Protection of New Varieties of Plants”
-(generally known by its French acronym as the UPOV
-convention), has been asked to compile a database of
-the plants patented and the database must include the
-Latin name and the variety denomination of each patented
-plant. Having this information in separate sections
-of the plant patent will make the process of
-compiling this database more efficient.
- Representative information includes the registration
-number appointed with a power of attorney in the
-application (preferably by reference to a customer
-number). 37 CFR 1.76(b)(4) states that providing this
-information in the application data sheet does not constitute
-a power of attorney in the application (see
-CFR 1.32). This is because the Office does not expect
-the application data sheet to be executed by the party
-(applicant or assignee) who may appoint a power of
-attorney in the application.
- Domestic priority information includes the application
-number (series code and serial number), the filing
-date, the status (including patent number if
-available), and relationship of each application for
-which a benefit is claimed under 35
-U.S.C. 119(e),
-, 121, or 365(c). 37 CFR 1.76(b)(5) states that providing
-this information in the application data sheet
-constitutes the specific reference required by
-U.S.C.119(e) or 120. Since the application data
-sheet, if provided, is considered part of the application,
-the specific reference to an earlier filed provisional
-or nonprovisional application in the application
-data sheet satisfies the “specific reference” requirement
-of 35
-U.S.C.119(e)(1) or 120, and it also complies
-with 37 CFR 1.78(a)(2) (iii) or (a)(5)(iii). Thus,
-a specific reference does not otherwise have to be
-made in the specification, such as in the first sentence(
-s) of the specification. If continuity data is
-included in an application data sheet, but not in the
-first sentence(s) of the specification, the continuity
-data for the patent front page will be taken from the
-application data sheet. No continuity data will be
-included in the first sentence(s) of the specification if
-applicant does not provide it there. 37 CFR 1.76(b)(5)
-does not apply to provisional applications.
-Foreign priority information includes the application
-number, country, and filing date of each foreign
-application for which priority is claimed, as well as
-any foreign application having a filing date before
-that of the application for which priority is claimed.
-CFR 1.76(b)(6) states that providing this information
-in the application data sheet constitutes the claim
-for priority as required by 35
-U.S.C. 119(b) and 37
-CFR
-.55(a). The patent statute, 35
-U.S.C. 119(b),
-does not require that a claim to the benefit of a prior
-foreign application take any particular form. 37 CFR
-.76(b)(6) does not apply to provisional applications.
-CFR 1.76(b)(7) provides that the assignee information
-includes the name (either person or juristic
-entity) and address of the assignee of the entire right,
-title, and interest in an application. The inclusion of
-this information in the application data sheet does not
-substitute for compliance with any requirement of 37
-CFR part 3 to have an assignment recorded by the
-Office. Providing assignee information in the application
-data sheet is considered a request to include such
-information on the patent application publication,
-since there is no other reason for including such information
-in the application data sheet. Assignment
-information must be recorded to have legal effect.
- Supplemental application data sheets may be subsequently
-supplied prior to payment of the issue fee to
-either correct or update information in a previously
-submitted application data sheet, or an oath or declaration
-under 37 CFR 1.63 or 1.67. See 37 CFR
-.76(c)(1). A supplemental data sheet cannot be used
-to correct the following: (1) inventorship changes (37
-CFR 1.48); (2) correspondence changes (37 CFR
-.33(a)); and (3) citizenship changes (37 CFR 1.63or
-CFR 1.67). Supplemental application data
-sheets must be titled “Supplemental Application Data
-Sheet” and also contain all of the seven section headings
-listed in 37 CFR 1.76(b) with all appropriate data
-for each heading. Supplemental application data
-sheets identifying only the information that is being
-changed (added, deleted, or modified) in the supplemental
-ADS are not acceptable. A supplemental ADS
-containing only new or changed information is likely
-to confuse the record, create unnecessary work for the
-Office, and does not comply with 37 CFR 1.76. If no
-ADS was originally filed, but applicant wants to submit
-an ADS to correct, modify, or augment the original
-application data, the ADS, even though it is the
-first-filed ADS, must be titled “Supplemental Application
-Data Sheet.”
-SUPPLEMENTAL ADS SUBMISSIONS
-When submitting an application data sheet supplemental
-to the initial filing of the application, to correct,
-modify, or augment the original application data
-sheet, the following applies:
-(A)the supplemental application data sheet must
-be titled “Supplemental Application Data Sheet”
-(while the title “Supplemental Application Data
-Sheet” is preferred, “Supp. ADS”, “Supplemental
-ADS” or other variations thereof will be accepted);
-(B)the supplemental application data sheet must
-be a full replacement copy of the original ADS, if any,
-with each of the seven section headings listed in 37
-CFR 1.76(b), and with all appropriate data for the section
-heading;
-(C) the supplemental application data sheet must
-be submitted with all changes indicated, preferably
-with insertions or additions indicated by underlining,
-and deletions, with or without replacement data, indicated
-by strike-through or brackets; and
-(D) the footer information should include the
-word “Supplemental” in place of “Initial” and should
-also contain the Application Number and Filing Date.
-A supplemental ADS that is being used to correct
-data shown in an oath or declaration, such as foreign
-priority or residence information for an inventor,
-would show the original incorrect information with
-strike-through or brackets, and the new information
-with underlining, as if an ADS had originally been
-used to submit the information. For example, if the
-original oath or declaration included a foreign priority
-claim, in order to delete the foreign priority claim,
-applicant should provide a supplemental ADS showing
-the foreign priority claim with strike-through or
-brackets to ensure that the patent will reflect such
-change.
-Resolution of inconsistent information supplied by
-both an application data sheet and other documents
-(e.g., the oath or declaration under
-CFR 1.63, or 37
-CFR 1.67) are addressed in 37 CFR 1.76(d). If an
-ADS is inconsistent with the information provided in
-another document that was submitted at the same time
-or previous to the ADS submission, the ADS will control.
-CFR 1.76(d)(1) provides that the latest submitted
-information will govern notwithstanding
-whether supplied by an application data sheet, an
-amendment to the specification, a designation of a
-correspondence address, or by an oath or declaration
-under 37 CFR 1.63 or 37 CFR 1.67, except as provided
-by 37 CFR 1.76(d)(3). This is because the
-application data sheet is intended as the means by
-which applicants will provide most information to the
-Office. In the small number of instances where
-another document has more accurate information than
-a concurrently supplied application data sheet (37
-CFR 1.76(d)(2)), a supplemental application data
-sheet should be submitted to conform the information
-presented by the supplemental application data sheet
-with the correct information in the other document(s)
-(37 CFR 1.76(d)(1)).
- If an application is filed with an application data
-sheet improperly identifying the residence of one of
-the inventors, inventor B, and an executed 37 CFR
-.63 declaration setting forth the correct but different
-residence of inventor B, the Office will capture the
-residence of inventor B found in the application data
-sheet as the residence of B, and include that information
-in the filing receipt. If applicant desires correction
-of the residence, applicant should submit a
-supplemental application data sheet under 37 CFR
-.76(c), with the name of inventor B and the corrected
-residence for inventor B.
-Pursuant to 37 CFR 1.76(d)(3), the oath or declaration
-under 37 CFR 1.63 or 37 CFR 1.67 governs
-inconsistencies with the application data sheet in the
-naming of inventors and setting forth their citizenship.
-If different inventors are listed in the application data
-sheet than are named in the oath or declaration for the
-application, the inventors named in the oath or declaration
-are considered to be the inventors named in the
-patent application. See 37 CFR 1.76(d)(3). Any
-change in the inventorship set forth in the oath or declaration
-under 37 CFR 1.63 must be by way of a
-request under 37 CFR 1.48(a) notwithstanding identification
-of the correct inventive entity in an application
-data sheet or supplemental application data sheet.
-Similarly, if the oath or declaration under 37 CFR
-.63 incorrectly sets forth the citizenship of one of the
-inventors, that inventor must submit a supplemental
-oath or declaration under 37 CFR 1.67 with the correct
-citizenship notwithstanding the correct identification
-of the citizenship in an application data sheet or
-supplemental application data sheet. If the spelling of
-the inventor’s name is incorrect, however, only a supplemental
-application data sheet is required. See
-MPEP § 605.04(b).
-The Office will rely upon information supplied in
-the application data sheet over an oath or declaration
-to capture the data even where the type of information
-supplied (citizenship, inventorship) is governed by the
-oath or declaration according to statute (35
-U.S.C.
-) or other rule (37 CFR 1.41(a)(1)). Where the
-oath or declaration under 37 CFR 1.63 or 37 CFR
-.67 contains the correct information regarding inventors
-or their citizenship and the application data sheet
-does not, even though the oath or declaration governs
-pursuant to 37 CFR
-.76(d)(3), the information in the
-application data sheet must be corrected by submission
-of a request for correction and a supplemental
-application data sheet. If the spelling of the inventor’s
-name is incorrect, however, only a supplemental
-application data sheet is required. See MPEP §
-.04(b).
- If an application is filed with an application data
-sheet correctly setting forth the citizenship of inventor
-B, and an executed 37 CFR 1.63 declaration
-setting
-forth a different incorrect citizenship of inventor
-B, the Office will capture the citizenship of inventor
-B found in the application data sheet. Applicant,
-however, must submit a supplemental oath or declaration
-under 37 CFR 1.67 by inventor B setting forth the
-correct citizenship even though it appears correctly in
-the application data sheet. A supplemental application
-data sheet cannot be used to correct the citizenship
-error in the oath or declaration. If, however, the error
-is one of residence, no change would be required (37
-CFR 1.76(d)(2)).
- Although 37 CFR 1.76 does not change the practice
-in MPEP § 201.03 and § 605.04(b) regarding correction
-of a typographical or transliteration error in
-the spelling of an inventor’s name whereby all that is
-required is notification of the error to the Office, the
-Office strongly encourages the filing of an application
-data sheet or a supplemental application data sheet to
-correct a typographical or transliteration error in the
-spelling of an inventor’s name. A supplemental oath
-or declaration is not required.
-If applicant merely files a statement notifying the
-Office of the typographical or transliteration error in
-the spelling of an inventor’s name without submitting
-an application data sheet or a supplemental application
-data sheet, any patent to issue is less likely to
-reflect the correct spelling since the spelling of the
-inventor’s name is taken from the oath or declaration,
-or any subsequently filed application data sheet.
-As to the submission of class/subclass information
-in the application data sheet, the Office notes that
-there is a distinction between permitting applicants to
-aid in the identification of the appropriate Art Unit to
-examine the application and requiring the Office to
-always honor such identification/request, which could
-lead to misuse by some applicants of forum shopping.
-Even when an applicant’s identification of an Art Unit
-is appropriate, internal staffing/workload requirements
-may dictate that the application be handled by
-another Art Unit qualified to do so, particularly when
-the art or claims encompass the areas of expertise of
-more than one Art Unit.
-An application data sheet must be labeled “Application
-Data Sheet” and should provide the following
-information:
-Applicant Information
-Inventor One Given Name:
-Family Name:
-Name Suffix:
-Mailing Address Line One:
-Mailing Address Line Two:
-City:
-State or Province:
-Postal or Zip Code:
-City of Residence:
-State or Prov. of Residence:
-Country of Residence:
-Citizenship Country:
-[repeat for additional inventors]
-If the applicant is not an inventor, the applicant
-information should also include the applicant’s
-authority to apply for the patent on behalf of the
-inventor (see 37 CFR 1.42, 1.43 and 1.47). For example,
-if the inventor is deceased or legally incapacitated,
-the applicant should include “Legal
-Representative” as the authority. Similarly, if a petition
-under 37 CFR 1.47(b) is filed, the applicant’s
-authority would be “Party in Interest under 35 U.S.C.
-.” If the application is filed by the Administrator
-of NASA, the applicant’s authority would be “Government
-Property Interest.”:
-Given or Company Name of Applicant:
-Family Name, if any:
-Name Suffix:
-Authority:
-Mailing Address Line One:
-Mailing Address Line Two:
-City:
-State or Province:
-Postal or Zip Code:
-City of Residence:
-State or Prov. of Residence:
-County of Residence:
-Citizenship Country:
-Correspondence Information
-Name Line One:
-Name Line Two:
-Address Line One:
-Address Line Two:
-City:
-State or Province:
-Country:
-Postal or Zip Code:
-Telephone:
-Fax:
-Electronic Mail:
-The correspondence information may be indicated
-by reference to a Customer Number to which correspondence
-is to be directed.
-Application Information
-Title Line One:
-Title Line Two:
-[Repeat for any additional lines]
-Suggested classification:
-Suggested Tech. Center:
-Total Drawing Sheets:
-Suggested Dwg. Figure for Pub.:
-Docket Number:
-Application Type: [Utility]
-Licensed US Govt. Agency:
-Contract or Grant Numbers One:
-Contract or Grant Numbers Two:
-Secrecy Order in Parent Appl.?
-If plant patent app.,
-Latin name of genus and species of plant claimed:
-Representative Information
-Registration Number One:
-Registration Number Two:
-[Repeat for extra registration numbers]
-The representative information must list ten or
-fewer representatives or be indicated by reference to a
-Customer Number. See 37 CFR 1.32.
-Domestic Priority Information
-This application is a: [Continuation, Division, C-
-I-P, or National Stage of]
-Application One:
-Filing Date:
-which is a:
-Application Two:
-Filing Date:
-[repeat as necessary]
-Foreign Priority Information
-Foreign Application One:
-Filing Date:
-Country:
-Priority Claimed: [Yes or No]
-Assignee Information
-Name of assignee:
-Address Line One:
-Address Line Two:
-City:
-State or Province:
-Country:
-Postal or Zip Code:
+<noinclude>{{MPEP Section||600|602}}</noinclude>

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MPEP 601: Difference between revisions

Latest revision as of 22:54, May 31, 2020

601 Content of Provisional and Nonprovisional Applications

601.01 Complete Application

601.01(a) Nonprovisional Applications Filed Under 35 U.S.C. 111(a)

601.01(b) Provisional Applications FiledUnder 35 U.S.C. 111 (b)

601.01(c) Conversion to or From a Provisional Application

I.CONVERSION FROM A NONPROVISIONAL APPLICATION TO A PROVISIONAL APPLICATION

II. CONVERSION FROM A PROVISIONAL APPLICATION TO A NONPROVISIONAL APPLICATION

601.01(d) Application Filed Without AllPages of Specification

I. APPLICATION ENTITLED TO FILING DATE

II. APPLICATION NOT ENTITLED TO FILING DATE

III. APPLICATION LOCATED IN A TECHNOLOGY CENTER

601.01(e) Nonprovisional Application Filed Without At Least One Claim

601.01(f) Applications Filed Without Drawings

601.01(g)Applications Filed Without All Figures of Drawings

601.01(h) Forms

601.02 Power of Attorney

601.03 Change of Correspondence Address

601.04 National Stage Requirements ofthe United States as a Designated Office

601.05 Bibliographic Information - Application Data Sheet (ADS)

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