MPEP § 601.01
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37 CFR 1.53 relates to application numbers, filing dates, and completion of applications. Note that the substantive requirements under 37 CFR 1.53 for applications filed on or after September 16, 2012 as compared to those filed prior to September 16, 2012 (pre-AIA) are the same with the exception of 37 CFR 1.53(f), pertaining to completion of a nonprovisional application subsequent to filing. See MPEP § 601.01(a) for additional information. 37 CFR 1.53(a) indicates that 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). A CPA 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.
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 U.S. Patent and Trademark Office (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:
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.
If the required basic filing fee is not paid during the pendency of the application, the application will be disposed of.
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. 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)).
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.
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 that includes at least a specification as prescribed by 35 U.S.C. 112 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.
[Editor Note: See subsection B., below, for applications filed before September 16, 2012.]
If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or inventor's oath or declaration, applicant will be so notified in accordance with 37 CFR 1.53(f).
For applications filed before September 16, 2012, the Office issued a Notice to File Missing Parts if an application under 37 CFR 1.53(b) did not contain the basic filing fee, the search fee, or the examination fee, or the inventor's oath or declaration, and the applicant was given a time period (usually two months) within which to file the missing basic filing fee, the search fee, the examination fee, or the inventor's oath or declaration and pay the surcharge required by 37 CFR 1.16(f) to avoid abandonment. See subsection II.B below for additional information regarding completion of a nonprovisional application filed before September 16, 2012.
For applications filed on or after September 16, 2012, 37 CFR 1.53(f) revises the former missing parts practice to allow applicants to postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance.
37 CFR 1.53(f)(1) provides for a notice (if the applicant has provided a correspondence address) if the application does not contain the basic filing fee, the search fee, or the examination fee, or if the application under 37 CFR 1.53(b) does not contain the inventor's oath or declaration. 37 CFR 1.53(f)(1) provides that applicant must pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by 37 CFR 1.16(f) within the time period set in the notice to avoid abandonment.
Section 1.53(f)(3) (discussed subsequently) sets forth the time period for filing the inventor's oath or declaration in an application under 37 CFR 1.53(b) (an application under 37 CFR 1.53(d) uses the inventor's oath or declaration from the prior application) and provides the conditions under which an applicant may postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance.
37 CFR 1.53(f)(2) provides for the situation where applicant has not provided a correspondence address in an application under 37 CFR 1.53(b), and the application does not contain the basic filing fee, the search fee, or the examination fee, or does not contain the inventor's oath or declaration.37 CFR 1.53(f)(2) provides that if the applicant has not provided a correspondence address, the applicant must pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by 37 CFR 1.16(f), within two months from the filing date of the application to avoid abandonment.
37 CFR 1.53(f)(3) sets forth the time period for filing the inventor's oath or declaration in an application under 37 CFR 1.53(b) and provides the conditions under which an applicant may postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance. Section 1.53(f)(3) specifically provides that the inventor's oath or declaration in an application under 37 CFR 1.53(b) must also be filed within the period specified in 37 CFR 1.53(f)(1) or (f)(2), except that the filing of the inventor's oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in 37 CFR 1.53(f)(3)(i) through (f)(3)(ii). This requires payment of the surcharge under 37 CFR 1.16(f) if the inventor’s oath or declaration (executed by or with respect to each inventor) is not submitted on filing of the application. If the surcharge is not paid at the time the application is filed, the Office will send a Notice to File Missing Parts requiring the surcharge. If, however, a general authorization to charge any required fees to a deposit account (that covers fees under 37 CFR 1.16 ) is submitted on filing of the application, the Office will charge the surcharge in accordance with the deposit account authorization. Payment of the surcharge cannot be postponed until a Notice of Allowability issues.
37 CFR 1.53(f)(3)(i) provides that the application must be an original (non-reissue) application that contains an application data sheet in accordance with 37 CFR 1.76 identifying: (1) each inventor by his or her legal name; and (2) a mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor. The applicant must file an oath or declaration in compliance with 37 CFR 1.63, or substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).
If an application under 37 CFR 1.53(b) does not include the inventor's oath or declaration but does contains the applicable filing fees (basic filing fee, search fee, the examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f) (for filing the oath or declaration later than the filing date), and a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), the Office will not issue a Notice to File Missing Parts requiring the applicant to file the inventor's oath or declaration.
If an application under 37 CFR 1.53(b) that does not contain the inventor's oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing parts. While the inventor's oath or declaration will not be required within the period for reply to the Notice to File Missing Parts if the applicant provides a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), any required filing fees and surcharge required by 37 CFR 1.16(f) must be filed within the period for reply to the Notice to File Missing Parts to avoid abandonment.
If an application is in condition for allowance but does not include an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, the Office will issue a ``Notice of Allowability'' (PTOL-37) including a Notice Requiring Inventor’s Oath or Declaration requiring the applicant to file an oath or declaration in compliance with 37 CFR 1.63, or substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, no later than the date of payment of the issue fee to avoid abandonment.
[Editor Note: See subsection A., above, for applications filed on or after September 16, 2012.]
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 in accordance with pre-AIA 37 CFR 1.53(f) 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 any notice to file missing parts or notice of incomplete application with the reply submitted to the U.S. Patent and Trademark Office, unless the reply is being submitted via EFS-Web. 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, 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.
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.
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).
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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). The provisional application filing fee (37 CFR 1.16(d) ) and the surcharge set forth in 37 CFR 1.16(g) are also required, although these fees do not need to be paid with the request for conversion. If the provisional application filing fee and the surcharge are not paid at the time of filing of the request for conversion, the Office will send a Notice to File Missing Parts in the provisional application requiring these fees. 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, or the expiration of 12 months after the filing date of the 37 CFR 1.53(b) 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(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. 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.
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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.
The Office of Patent Application Processing (OPAP) 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, an OPAP notice (e.g., a "Notice of Omitted Items") will be sent indicating that the application papers so deposited have been accorded a filing date, but are lacking some page(s) of the specification.
If the application does not contain anything that can be construed as a written description, OPAP 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.
The procedure for handling nonprovisional application papers having omitted items was revised in 2007. See "Change in Procedure for Handling Nonprovisional Applications Having Omitted Items," 1315 O.G. 103 (February 20, 2007). Under the revised procedure, the mailing of an OPAP notice regarding a missing page(s) of specification in a nonprovisional application will permit the applicant to:
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. The mailing of an OPAP notice regarding omitted page(s) in a provisional application will permit the applicant to either: (1) promptly establish prior receipt of the page(s) at issue by filing of a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), along with evidence of such deposit; or (2) accept the application as deposited by failing to file a petition within a 2-month non-extendable time period. Applications in which an OPAP notice regarding omitted items has been mailed will be retained in OPAP to await a reply to the notice. Failure to timely reply to the OPAP notice in a nonprovisional application will result in abandonment of the application. Nonprovisional applications that are timely completed will then be forwarded to the appropriate Technology Center for examination of the application. For provisional applications in which applicant accepts the application as deposited by failing to timely file a petition in response to an OPAP notice regarding omitted items, if the provisional application is complete under 37 CFR 1.51(c), it will be forwarded to the Files Repository after expiration of the 2-month non-extendable time period set in the OPAP notice. See MPEP § 601.01(a) for treatment of nonprovisional applications that are not complete under 37 CFR 1.51(b) and § 601.01(b) for treatment of provisional applications that are not complete under 37 CFR 1.51(c) ).
If the application does not contain anything that can be construed as a written description, OPAP will mail a Notice of Incomplete Application indicating that the application lacks the specification required by 35 U.S.C. 112. Applicant may:
Applications in which a "Notice of Incomplete Application" has been mailed will be retained in OPAP 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).
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 OPAP, 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.
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:
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 § 217.
Any petition filed in accordance with item B or C above will be forwarded to the Office of Petitions.
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 OPAP for mailing of a "Notice of Incomplete Application."
35 U.S.C. 111(a)(2) requires that an application for patent include, inter alia, "a specification as prescribed by section 112," 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 provides, in part, that "[t]he specification shall contain a written description of the invention," and 35 U.S.C. 112(b), 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 subsections (b) through (e) 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). In applications filed before September 16, 2012, an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 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) andExxon 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).
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" 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 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 Patent Application Processing (OPAP) 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, OPAP 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 in a nonprovisional application may submit drawing(s) and accept the date of such submission as the application filing date. For applications filed before September 16, 2012, such drawings must be accompanied by an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 1.64 referring to the drawing(s) being submitted.
As an alternative to a petition under 37 CFR 1.53(e), if the drawing(s) was inadvertently omitted from a nonprovisional 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 CFR1.57(a)(3) accompanied by the petition fee set forth in 37 CFR 1.17(f). See MPEP § 217
In design applications, OPAP 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) and accept the date of such submission as the application filing date. For applications filed before September 16, 2012, such drawing(s) must be accompanied by an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and pre-AIA 37 CFR 1.64. 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).
The Office of Patent Application Processing (OPAP) 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, an OPAP notice (e.g., a "Notice of Omitted Item(s)") will be sent 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 procedure for handling nonprovisional applications having omitted items was revised in 2007. See "Change in Procedure for Handling Nonprovisional Applications Having Omitted Items," 1315 O.G. 103 (February 20, 2007).
Under the revised procedure, the mailing of an OPAP notice regarding a missing drawing figure(s) in a nonprovisional application will permit the applicant to:
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.The mailing of an OPAP notice regarding missing drawing figure(s) in a provisional application will permit the applicant to either: (1) promptly establish prior receipt of the drawing(s) at issue by filing a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(f), along with evidence of such deposit; or (2) accept the application as deposited by failing to file a petition within a 2-month non-extendable time period.
Applications in which an OPAP notice regarding omitted items has been mailed will be retained in OPAP to await a reply to the notice. Failure to timely reply to the OPAP notice in a nonprovisional application will result in abandonment of the application. Nonprovisional applications that are timely completed will then be forwarded to the appropriate Technology Center for examination of the application. For provisional applications in which applicant accepts the application as deposited by failing to timely file a petition in response to an OPAP notice regarding omitted items, if the provisional application is complete under 37 CFR 1.51(c), it will be forwarded to the Files Repository after expiration of the 2-month non-extendable time period set in the OPAP notice. See MPEP § 601.01(a) for treatment of nonprovisional applications that are not complete under 37 CFR 1.51(b) and MPEP § 601.01(b) for treatment of provisional applications that are not complete under 37 CFR 1.51(c).
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. OPAP will not send an OPAP notice regarding omitted items 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.
If it is discovered that an application that was forwarded for examination was filed without all of the drawing figure(s) referred to in the specification, and a Notice of Omitted Items or other OPAP notice regarding omitted items has not been mailed by OPAP, 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.
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:
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 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 § 217.
Any petition filed in accordance with item (B) or (C) above will be forwarded to the Office of Petitions.
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 OPAP for mailing of a "Notice of Incomplete Application."