601.01    Complete Application [R-07.2015]

37 C.F.R. 1.53  Application number, filing date, and completion of application.

[Editor Note: Paragraphs (b), (c), (f) and (h) below have limited applicability as follows:]

  • (1) Paragraphs (b) and (c), are applicable only to patent applications filed under 35 U.S.C. 111(a)  on or after December 18, 2013. See pre-PLT (AIA) 37 CFR 1.53  for paragraphs (b) and (c) otherwise in effect;
  • (2) Paragraph (f), effective December 18, 2013, and paragraph (h), effective September 16, 2012, are applicable only to patent applications filed under 35 U.S.C. 111(a)  on or after September 16, 2012. See pre-AIA 37 CFR 1.53  for paragraphs (f) and (h) otherwise in effect.]
  • (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, other than an application for a design patent or a provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in the Office. The filing date of an application for a design patent filed under this section, except for a continued prosecution application under paragraph (d) of this section, is the date on which the specification as prescribed by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the 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, 365(c), or 386(c)  and § 1.78.
    • (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, with or without claims, is received in the 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; or
      • (iii) Expiration of twelve months after the filing date of 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 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). 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, and the surcharge required by § 1.16(f)  if either the basic filing fee for a nonprovisional application or the inventor's 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, 365(a), or 386(a)  or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c)  or § 1.78  of any other application. No claim for priority under 35 U.S.C. 119(e)  or § 1.78(a)  may be made in a design application based on 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, but not an international design application, that is complete as defined by § 1.51(b)  except for the inventor’s oath or declaration if the application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in § 1.53(f)(3)(i); 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 the inventor's 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, search fee, or examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include at least one claim or the inventor's oath or declaration (§§ 1.63, 1.64  , 1.162  or 1.175 ), and the applicant has provided a correspondence address (§ 1.33(a) ), the applicant will be notified and given a period of time within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, 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, search fee, examination fee, at least one claim, or the inventor's oath or declaration, and the applicant has not provided a correspondence address (§ 1.33(a)), the applicant has three months from the filing date of the application within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge required by § 1.16(f)  to avoid abandonment.
    • (3) The inventor's oath or declaration in an application under § 1.53(b)  must also be filed within the period specified in paragraph (f)(1) or (f)(2) of this section, 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 paragraphs (f)(3)(i) and (f)(3)(ii) of this section.
      • (i) The application must be an original (non-reissue) application that contains an application data sheet in accordance with § 1.76  identifying:
        • (A) Each inventor by his or her legal name;
        • (B) 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.
      • (ii) The applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136  (see § 1.136(c) ). The Office may dispense with the notice provided for in paragraph (f)(1) of this section if each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, has been filed before the application is in condition for allowance.
    • (4) 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.
    • (5) 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 inventor's oath or declaration from the prior application for a continuing application under paragraph (b) of this section.
    • (6) 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 the inventor's oath or declaration may be filed when the application is otherwise in condition for allowance pursuant to paragraph (f)(3) of this section and 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).

37 C.F.R. 1.53 pre-PLT (AIA)  Application number, filing date, and completion of application.

[Editor Note: Paragraphs (b) and (c) are applicable to patent applications filed under 35 U.S.C. 111  before December 18, 2013. For the text of paragraphs (a), (d), (e), (g), and (i) applicable to patent applications filed under 35 U.S.C. 111  before December 18, 2013, see 37 CFR 1.53. For the text of paragraphs (f) and (h), see 37 CFR 1.53  for applications filed under 35 U.S.C. 111  on or after September 16, 2012 and see pre-AIA 37 CFR 1.53  for applications filed before September 16, 2012.]

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  • (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(c) and (d).
    • (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 35 U.S.C. 112(a), 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; or
      • (iii) Expiration of twelve months after the filing date of 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 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). 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, the inventor's oath or declaration, and the surcharge required by § 1.16(f)  if either the basic filing fee for a nonprovisional application or the inventor's 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. The requirements of §§ 1.821  through 1.825  regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.

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37 C.F.R. 1.53 pre-AIA  Application number, filing date, and completion of application.

[Editor Note: Applicable to patent applications filed under pre-AIA 35 U.S.C. 111  before September 16, 2012. For the text of paragraphs (a), (d), (e), (g), and (i) applicable to patent applications filed under 35 U.S.C. 111  before September 16, 2012, see 37 CFR 1.53. For the text of paragraphs (b) and (c) applicable to patent applications filed under 35 U.S.C. 111  before September 16, 2012, see pre-PLT (AIA) 37 CFR 1.53.]

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  • (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.

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  • (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.

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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. Also, note that the filing date requirements under 37 CFR 1.53(b) and (c)  for applications filed on or after December 18, 2013 are different from those filed prior to December 18, 2013. For example, under 37 CFR 1.53(b), except for design applications, nonprovisional applications filed on or after December 18, 2013 may receive a filing date even if the application is filed without claims or drawings. See MPEP § 601.01(a) for additional information. Similarly, provisional applications filed on or after December 18, 2013 may receive a filing date even if the application is filed without drawings. See MPEP § 601.01(b) for additional information. If the subject matter of a nonprovisional application admits of illustration by a drawing to facilitate understanding of the invention, including where a drawing is necessary for the understanding of the invention, the Office will continue the practice of requiring a drawing. See MPEP § 608.02 (item IV). Any claim or any drawing submitted after the filing date of an application may not contain new matter. 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 filed under 35 U.S.C. 111(a).

601.01(a)    Nonprovisional Applications Filed Under 35 U.S.C. 111(a) [R-10.2019]

I.    APPLICATION FILING REQUIREMENTS

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.

Except for design applications, the filing date for applications filed under 35 U.S.C. 111  on or after December 18, 2013 is the date on which a specification, with or without claims, is received in the Office. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. Effective for applications filed on or after December 18, 2013, 37 CFR 1.53(b)  was amended to implement the changes to 35 U.S.C. 111(a)  and 35 U.S.C. 171  by the Patent Law Treaties Implementation Act of 2012 (PLTIA) (Public Law 112-211). 35 U.S.C. 111(a)  now provides minimal formal requirements necessary for an application to be entitled to a filing date to safeguard against the loss of a filing date due to a technicality. However, these minimal formal requirements should not be viewed as prescribing a best practice for the preparation and filing of a patent application. The preparation of claims to any claimed invention for which patent protection is desired and the inclusion of such claims with the application on filing will help ensure that the application satisfies the disclosure requirements of 35 U.S.C. 112(a)  for any such claimed invention.

For applications filed under 35 U.S.C. 111(a)  prior to December 18, 2013, 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 (Office). See pre-PLT (AIA) 37 CFR 1.53(b).

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, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor’s oath or declaration if the continued prosecution application (CPA) is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. 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. In addition, for applications, other than design applications, filed under 35 U.S.C. 111(a)  on or after December 18, 2013, the claims and drawings may be submitted after the filing date, within such period and under such conditions, including the payment of a surcharge, as prescribed by the Office. See subsection II below for more information on completion of an application subsequent to filing. However, no amendment (including the submission of claims and drawings) may introduce new matter into the disclosure of an application after its filing date. Drawings should be submitted on filing if necessary for the understanding of the invention.

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, 365(c), or 386(c)  in a subsequent nonprovisional application, international application, or international design 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, except applications filed on or after September 16, 2012 will be forwarded for examination even if lacking the inventor’s oath or declaration provided that a compliant application data sheet (ADS) is filed.

II.    COMPLETION OF NONPROVISIONAL APPLICATION UNDER 35 U.S.C. 111 SUBSEQUENT TO FILING

For applications filed under 35 U.S.C. 111(a)  on or after December 18, 2013, except for design applications, a filing date is granted to a nonprovisional application when a specification, with or without claims, is received in the Office. The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office.

For applications filed prior to December 18, 2013, 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.

A.    Completion of Nonprovisional Application That Is Filed On or After December 18, 2013 And Is Not A Design Application

[Editor Note: See subsection B., below, for information that pertains to all applications filed under 35 U.S.C. 111(a)  on or after September 16, 2012 (including utility and plant patent applications filed on or after December 18, 2013 and design patent applications). See subsection C., below, for information pertaining to applications filed under 35 U.S.C. 111(a)  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). See subsection II.B. below for information regarding completion of a nonprovisional application that is missing the appropriate filing fee, search fee, examination fee, or inventor’s oath or declaration.

If an application which has been accorded a filing date does not include at least one claim, the applicant will be notified and given a time period to file claim(s) and pay the surcharge, if required by 37 CFR 1.16(f), to avoid abandonment of the application provided the applicant has given a correspondence address. If the applicant failed to provide a correspondence address, the applicant has three months from the filing date of the application within which to file claim(s) and pay the surcharge required by 37 CFR 1.16(f)  to avoid abandonment of the application. Therefore, an application filed without any claims will be treated in a manner analogous to how an application without the filing fee, search fee, or examination fee is treated. See subsection B. below for more information.

If an application which has been accorded a filing date does not include any drawings, see MPEP § 601.01(f) for information on completing the application. If an application which has been accorded a filing date but is without all the figures of drawings, see MPEP § 601.01(g) for information on completing the application.

B.    Completion of Nonprovisional Application, Including Design Application, Filed On or After September 16, 2012

[Editor Note: See subsection A., above, for specific information regarding applications that are filed under 35 U.S.C. 111(a)  on or after December 18, 2013 and are not design applications. See subsection C., 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.C. below for additional information regarding completion of a nonprovisional application filed before September 16, 2012.

For applications filed on or after September 16, 2012, the former missing parts practice under pre-AIA 37 CFR 1.53(f)  was revised 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)  was further revised, effective December 18, 2013, to require that, for applications filed on or after September 16, 2012, the inventor’s oath or declaration in compliance with 37 CFR 1.63  or a substitute statement in compliance with 37 CFR 1.64  must be filed no later than the date the issue fee is paid to avoid abandonment of the application. This time period is not extendable under 37 CFR 1.136  (see 37 CFR 1.136(c) ). The Office may dispense with the notice under 37 CFR 1.53(f)(1)  if each required oath or declaration in compliance with 37 CFR 1.63  or substitute statement in compliance with 37 CFR 1.64  has been filed before the application is 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)  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 three 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 Allowance issues or payment of the issue fee but must be paid in the time period specified in 37 CFR 1.53(f)(1)  or 37 CFR 1.53(f)(2).

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 contain 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 to be filed 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 Allowance and Fee(s) Due" (PTOL-85) together with a "Notice of Allowability'' (PTOL-37) including a "Notice Requiring Inventor’s Oath or Declaration" (PTOL-2306) 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. If applicant receives a "Notice Requiring Inventor’s Oath or Declaration" and fails to file a proper reply to the notice before or with the payment of the issue fee, the application will be regarded as abandoned. See 37 CFR 1.53(f)(3)(ii).

C.    Completion of Nonprovisional Application Filed Before September 16, 2012

[Editor Note: See subsections A. and B., above, for applications filed under 35 U.S.C. 111  on or after December 18, 2013. See subsection B., 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 two months from the filing date before abandonment occurs per pre-AIA 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 pre-AIA 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 pre-AIA 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 pre-AIA 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.

III.    APPLICATION UNDER 35 U.S.C. 111(a) FILED BY REFERENCE

35 U.S.C. 111  Application.

[Editor Note: Applicable to any patent application filed under this provision on or after December 18, 2013. See pre-PLT (AIA) 35 U.S.C. 111  or pre-AIA 35 U.S.C. 111  for the law otherwise applicable.]

  • (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—
    • (3) FEE, OATH OR DECLARATION, AND CLAIMS.—The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.
    • (4) FILING DATE.—The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.

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  • (c) PRIOR FILED APPLICATION.—Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless—
    • (1) the application is revived under section 27; and
    • (2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.

37 C.F.R. 1.57  Incorporation by reference

[Editor Note: Paragraph (a) below is only applicable to patent applications filed under 35 U.S.C. 111(a)  on or after December 18, 2013.]

  • (a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with § 1.76  upon the filing of an application under 35 U.S.C. 111(a)  to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a)  are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a)  for purposes of a filing date under § 1.53(b).
    • (1) If the applicant has provided a correspondence address (§ 1.33(a) ), the applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i)  if it is in a language other than English, and pay the surcharge required by § 1.16(f), to avoid abandonment. Such a notice may be combined with a notice under § 1.53(f).
    • (2) If the applicant has not provided a correspondence address (§ 1.33(a) ), the applicant has three months from the filing date of the application to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i)  if it is in a language other than English, and pay the surcharge required by § 1.16(f), to avoid abandonment.
    • (3) An application abandoned under paragraph (a)(1) or (a)(2) of this section shall be treated as having never been filed, unless:
      • (i) The application is revived under § 1.137; and
      • (ii) A copy of the specification and any drawings of the previously filed application are filed in the Office.
    • (4) A certified copy of the previously filed application must be filed in the Office, unless the previously filed application is an application filed under 35 U.S.C. 111  or 363, or the previously filed application is a foreign priority application and the conditions set forth in § 1.55(i)  are satisfied with respect to such foreign priority application. The certified copy of the previously filed application, if required by this paragraph, must be filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, or be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).

*****

Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Patent Law Treaty. Section 201(a) of the PLTIA amended 35 U.S.C. 111  to add 35 U.S.C. 111(c). As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a)  on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. 35 U.S.C. 111(c)  specifically provides that the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under 35 U.S.C. 111(a)  to a previously filed application (specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed) shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. 35 U.S.C. 111(c)  further provides that a copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director, and that a failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. 35 U.S.C. 111(c)  finally provides that such an application shall be treated as having never been filed, unless: (1) the application is revived under 35 U.S.C. 27; and (2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.

Effective December 18, 2013, 37 CFR 1.57  was amended to implement the reference filing provisions of 35 U.S.C. 111(c). 37 CFR 1.57(a)  now provides that, subject to the conditions and requirements of 37 CFR 1.57(a), a reference, made in the English language in an application data sheet (ADS) in accordance with 37 CFR 1.76  upon the filing of an application under 35 U.S.C. 111(a), to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a)  are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a)  for purposes of a filing date under 37 CFR 1.53(b). Thus, the specification and any drawings of the previously filed application will be considered in determining whether an application under 35 U.S.C. 111(a)  filed by reference under 37 CFR 1.57(a)  is entitled to a filing date under 37 CFR 1.53(b). When an application for a design patent includes a reference to a previously filed application under 35 U.S.C. 111(c), the previously filed application must include at least one claim. 35 U.S.C. 171  provides that the filing date of an application for a design patent is the date on which the specification as prescribed by 35 U.S.C. 112, which includes at least one claim, and any required drawings are filed.

In a reference filing under 37 CFR 1.57(a), the reference to a previously filed application in an ADS is not sufficient to establish a priority or benefit claim to that previously filed application. Reference filing information is provided in a section of the ADS that is separate from the foreign priority information section and the domestic benefit claim information section. See MPEP § 211 et seq. for information regarding domestic benefit claims and MPEP § 213 et seq. for information regarding claims for foreign priority.

The PLT and the Regulations under the PLT provide for the establishment of Model International Forms (PLT Model forms). The PLT Model forms may be found on WIPO’s Internet website at www.wipo.int/treaties/en/text.jsp?file_id=289773. The requirement for a reference to the previously filed application in an ADS will be satisfied by the presentation of such reference to the previously filed application on the Patent Law Treaty Model International Request Form (PLT Model Request form). Applicants may use the PLT Model Request form for national applications under 35 U.S.C. 111  filed in the USPTO or national applications filed in other PLT countries. However, as provided in 37 CFR 1.76(d)(2), information in an ADS will govern when inconsistent with the information supplied at any time in PLT Model forms. Furthermore, if applicants want to postpone submission of the inventor’s oath or declaration until the application is in condition for allowance, an ADS that provides the inventor information is required. Accordingly, the use of an ADS to supply application information for reference filing is encouraged.

If the applicant has provided a correspondence address (37 CFR 1.33(a) ), the applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application and the fee required by 37 CFR 1.17(i)  if it is in a language other than English, and pay the surcharge required by 37 CFR 1.16(f), to avoid abandonment. Such a notice may be combined with a notice under 37 CFR 1.53(f)  (e.g., a notice requiring that the applicant provide at least one claim and pay the filing fees). See 37 CFR 1.57(a)(1).

If the applicant has not provided a correspondence address (37 CFR 1.33(a) ), the applicant has three months from the filing date of the application under 35 U.S.C. 111(a)  filed by reference under 37 CFR 1.57(a)  to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application and the fee required by 37 CFR 1.17(i)  if it is in a language other than English, and pay the surcharge required by 37 CFR 1.16(f), to avoid abandonment. See 37 CFR 1.57(a)(2).

In response to a notice requiring a copy of the specification and drawings from the previously filed application, applicants must submit an actual copy of the specification (including any claims) and any drawings of the previously filed application without any modifications. If the specification and drawings submitted in response to the notice are modified, i.e., updated, corrected, or reformatted in any manner, such modified specification and any modified drawings would not satisfy the copy requirement of 35 U.S.C. 111(c)  and 37 CFR 1.57(a). Any desired changes to the copy of the previously filed application must be made by way of an amendment under 37 CFR 1.121  without adding new matter.

An application abandoned under 37 CFR 1.57(a)(1) or (a)(2)  shall be treated as having never been filed, unless: (1) the application is revived under 37 CFR 1.137; and (2) a copy of the specification and any drawings of the previously filed application are filed in the Office. See 37 CFR 1.57(a)(3).

An applicant may also claim priority to or the benefit of an application filed by reference under 35 U.S.C. 111(c)  and 37 CFR 1.57(a). However, the phrase "treated as having never been filed" in 35 U.S.C. 111(c)  and 37 CFR 1.57(a)(3)  precludes an applicant from claiming priority to or the benefit of an application filed by reference that has been abandoned under 35 U.S.C. 111(c)  and 37 CFR 1.57(a)(1)  or 1.57(a)(2). An applicant may claim priority to or the benefit of an application abandoned under 35 U.S.C. 111(c)  and 37 CFR 1.57(a)(1)  or (a)(2)  only if the application is revived under 37 CFR 1.137  and a copy of the specification and any drawings of the previously filed application are submitted to the Office.

A certified copy of the previously filed application must be filed in the Office within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, unless the previously filed application is an application filed under 35 U.S.C. 111  or 35 U.S.C. 363, or the previously filed application is a foreign priority application and the conditions set forth in 37 CFR 1.55(h)  are satisfied with respect to such foreign priority application. See 37 CFR 1.57(a)(4).

If a certified copy is required under 37 CFR 1.57(a)(4)  and it is not filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, the certified copy must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g). The requirement for a certified copy of a previously filed foreign application is to ensure that the copy of the specification and any drawings subsequently provided by the applicant correspond to the specification and any drawings of the previously filed foreign application. The interim copy provision of 37 CFR 1.55(j)  is not applicable to the requirement for a certified copy of a previously filed foreign application in an application filed by reference under 35 U.S.C. 111(c)  and 37 CFR 1.57(a).

Applicants filing by reference under 35 U.S.C. 111(c)  and 37 CFR 1.57  should take care to ensure that the application number, filing date, and intellectual property authority or country of the previously filed application is accurately specified on the ADS as the specification and drawings of the application specified on the ADS is the specification and drawings of the application being filed by reference under 35 U.S.C. 111(c)  and 37 CFR 1.57. If an applicant specifies an application number, filing date, or intellectual property authority or country of an application other than the application number, filing date, or intellectual property authority or country of the intended previously filed application on the ADS (i.e., the applicant mistypes the application number, filing date, or intellectual property authority or country on the ADS), the applicant may file a petition under 37 CFR 1.53  to have the application accorded a filing date as of the date the specification and drawings of the intended previously filed application is filed in the Office using that specification and drawings (rather than the specification and drawings of the application specified on the ADS). Simply submitting the specification and drawings of the intended previously filed application without such a petition under 37 CFR 1.53  in reply to a notice under 37 CFR 1.57(a)  requiring the specification and drawings of the application specified on the ADS will result in the submission being treated as an incomplete reply. A reference filing statement made upon filing cannot be rescinded because the reference to the previously filed application constitutes the specification and any drawings of the instant application. See 35 U.S.C. 111(c). Accordingly, to avoid the risk of incorrect filings and the required surcharge, applicants should simply file a copy of the specification and drawings of the previously filed application, if available, instead of relying upon the reference filing provisions.

If the previously filed application is also a priority application under 35 U.S.C. 119(a) through (d) and (f), 172, 35 U.S.C. 365(a) or (b), or 35 U.S.C. 386(a) or (b)  and 37 CFR 1.55, an applicant should also consider filing a copy of the specification and drawings of the previously filed application in the Office no later than fourteen month from the filing date of the previously filed application (regardless of the time period provided in 37 CFR 1.57(a) ) to avoid the loss of the right of priority under 37 CFR 1.55  in the event that the application number, filing date, or intellectual property authority or country of an application specified on the ADS is not the application number, filing date, or intellectual property authority or country of the intended previously filed application.

An application filed to obtain a filing date which includes both a reference to a previously filed application as provided for in 37 CFR 1.57(a)  and application papers including a specification and drawings will be processed as a reference filing and applicant will be charged the surcharge under 37 CFR 1.16(f)  even though a specification and drawings were submitted with the reference filing. The ADS form indicates that "the description and any drawings of the present application are replaced by this reference to the previously filed application." Accordingly, the Office will send out a notice (e.g., Notice to File Missing Parts) requiring the surcharge and a copy of the specification and any drawings. Applicants must respond to the notice by filing a copy of the specification and any drawings of the previously filed application or by stating that the specification and drawings submitted on filing is a copy of the specification and drawings of the previously filed application. If the specification and drawings submitted on filing were not a copy of the specification and drawings of the previously filed application but instead were modified, i.e., updated, corrected, or reformatted in any manner, such modified specification and any modified drawings would not satisfy the copy requirement of 35 U.S.C. 111(c)  and 37 CFR 1.57(a). In response to the notice, applicant must submit a copy of the specification and any drawings of the previously filed application. Any desired changes to the copy of the previously filed application must be made by way of an amendment under 37 CFR 1.121  without adding new matter. The modified specification and any drawings that were submitted on filing would not constitute the specification and drawings of the instant application and thus would not be used for examination purposes. However, applicant may file a petition under 37 CFR 1.182, including the fee under 37 CFR 1.17(f), requesting that the modified specification and any drawings submitted on filing be removed from the file of the application filed by reference, and be accorded the status as a separate application by being placed in a new file wrapper and assigned a new application number, with the new application being accorded a filing date as of the date the application filed by reference was filed. An application filed by reference is not improper simply because it is accompanied by a specification and drawings. Thus, an applicant will not be entitled to a refund of the filing fees paid in a proper application filed by reference. If the petition under 37 CFR 1.182  requesting that the modified specification and any drawings be removed from the file of the application filed by reference is granted, new filing fees, including the surcharge required by 37 CFR 1.16(f), would be needed for the new application created as a result of the grant of the petition.

Reference filing is intended for situations when a copy of the previously filed application is not available at the time the current application is being filed. If a copy of the previously filed application is available, applicant should file the copy of the specification and drawings under 35 U.S.C. 111(a)  and 37 CFR 1.51(b)  and not complete the section of the ADS for filing by reference. As explained above, if the reference filing section of the ADS is completed, applicants will be required to pay the surcharge under 37 CFR 1.16(f), even if a copy of the previously filed application is present on filing the application. A reference filing statement made upon filing cannot be rescinded because the reference to the previously filed application constitutes the specification and any drawings of the instant application. See 35 U.S.C. 111(c).

There is no provision for the filing of a continuation-in-part of a previously filed application under 37 CFR 1.57(a). 35 U.S.C. 111(c)  provides that the reference to the previously filed application "shall constitute the specification and any drawings of the subsequent application." The specification and any drawings of a continuation-in-part would need to extend beyond the specification and any drawings of the previously filed application. Thus, the filing by reference of a continuation-in-part of the previously filed application is not contemplated by 35 U.S.C. 111(c).

601.01(b)    Provisional Applications Filed Under 35 U.S.C. 111(b) [R-07.2015]

A provisional application filed on or after December 18, 2013 will be given a filing date as of the date a specification, with or without claims, is received in the Office. For provisional applications filed prior to December 18, 2013, the application will be given a filing date in accordance with pre-PLT (AIA) 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)  substantially parallel the requirements for a nonprovisional application set forth in 37 CFR 1.53(b). 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 37 CFR 1.53(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 two (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 two 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. See 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).

601.01(c)    Conversion to or from a Provisional Application [R-07.2015]

I.    CONVERSION FROM A NONPROVISIONAL APPLICATION TO A PROVISIONAL APPLICATION

37 C.F.R. 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; or
      • (iii) Expiration of twelve months after the filing date of 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). 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, 365, or 386. See MPEP § 201.04. After the nonprovisional 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 C.F.R. 1.53   Application number, filing date, and completion of application.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111  on or after December 18, 2013. See pre-PLT (AIA) 37 CFR 1.53(c)  for the rule otherwise in effect.]

*****

  • (c)
    • *****
    • (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 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). 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, and the surcharge required by § 1.16(f)  if either the basic filing fee for a nonprovisional application or the inventor's 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 in the provisional application for the conversion of the provisional application to a nonprovisional application and the fee set forth in 37 CFR 1.17(i). The nonprovisional application resulting from conversion of a provisional application must also include 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. Furthermore, an inventor’s oath or declaration is required to be filed in accordance with 37 CFR 1.53(f)  if the provisional application was filed on or after September 16, 2012 or pre-AIA 37 CFR 1.53(f)  if the provisional application was filed prior to September 16, 2012. 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 All Pages of Specification [R-07.2015]

The Office of Patent Application Processing (OPAP) reviews application papers to determine whether all of the pages of specification are present in the application. For an application filed under 37 CFR 1.53(b) or (c)  prior to December 18, 2013 or a design 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. For an application other than a design application filed under 37 CFR 1.53(b)  or (c) on or after December 18, 2013, if the application is filed without all of the page(s) of the specification, but contains something that can be construed as a specification, with or without claims, an 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.

I.    APPLICATION ENTITLED TO FILING DATE

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 OG 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:

  • (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 two months from the date of the OPAP notice, 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. 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 two-month period is 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 two months from the date of the OPAP notice, file any 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 later filing date. The two-month period is extendable under 37 CFR 1.136. For 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   must be filed with the omitted page(s) and refer to such page(s); or
  • (C) accept the application as deposited in the USPTO by filing an appropriate amendment. Applicant may accept the application as deposited in the USPTO by either:
    • (1) filing a substitute specification (including claims) that amends the specification to renumber the pages consecutively and cancels any incomplete sentences, in compliance with 37 CFR 1.121(b)(3)  and 1.125, without adding the subject matter that was in the omitted page(s) and without adding any new matter (see 35 U.S.C. 132(a) ). For a missing page of the claim listing only, applicant is required to submit a replacement claim listing with the claims renumbered consecutively, or, if amendment to the claims is also necessary, then a complete claim listing in compliance with 37 CFR 1.121(c). 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 , or
    • (2) filing a substitute specification (excluding claims), in compliance with 37 CFR 1.121(b)(3)  and 1.125, to add the subject matter in the omitted page(s) by relying on an incorporation by reference under 37 CFR 1.57(b)  or other portions of the original disclosure, without any adding new matter (see 35 U.S.C. 132(a) ). For a missing page of the claim listing, applicant is required to submit a complete claim listing in compliance with 37 CFR 1.121(c). 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(b). The amendment should be identified as an amendment pursuant to 37 CFR 1.57(b)  and must comply with the requirements of 37 CFR 1.57(b)  and 37 CFR 1.121. See MPEP § 217. 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 two-month period is extendable under 37 CFR 1.136.

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 two-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 held in Office’s Image File Wrapper (IFW) system and automatically abandoned at the end of its pendency period. 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) ).

II.    APPLICATION NOT ENTITLED TO FILING DATE

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:

  • (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 if the application is a nonprovisional application filed under 35 U.S.C. 111(a)  prior to December 18, 2013 or a design application, and accept the date of such submission as the application filing date. For applications filed before September 16, 2012, the omitted specification should be accompanied by an oath or declaration in compliance with pre-AIA 37 CFR 1.63   and pre-AIA 37 CFR 1.64   referring to the specification being submitted; or
  • (C) submit an amendment under 37 CFR 1.57(b)  in a nonprovisional application. If a nonprovisional 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(b). The amendment must be accompanied by a petition under 37 CFR 1.53(e)  along with the petition fee set forth in 37 CFR 1.17(f). See MPEP § 217. The amendment should be identified as an amendment pursuant to 37 CFR 1.57(b)  and must comply with the requirements of 37 CFR 1.57(b)  and 37 CFR 1.121. The two-month period is extendable under 37 CFR 1.136.

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), 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 FORWARDED FOR EXAMINATION

If it is discovered that an application that was forwarded to a Technology Center (TC) for examination 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 filed under 35 U.S.C. 111(a)  prior to December 18, 2013 or a design 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 not a design application and was filed under 35 U.S.C. 111(a)  on or after December 18, 2013, the application is entitled to a filing date if it is filed with a specification, with or without claims. However, claims must be filed before the application is sent to the TC.

A.    Application Entitled to a Filing Date

If an application filed without all of the pages of the specification 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) 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. For applications filed before September 16, 2012, the omitted pages must be accompanied by an oath or declaration in compliance with pre-AIA 37 CFR 1.63   and pre-AIA 37 CFR 1.64  referring to the omitted page(s); 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, international, or international design 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(b). The amendment should be submitted in response to the Office action and must comply with 37 CFR 1.57(b)  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.

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 OPAP for mailing of a "Notice of Incomplete Application."

601.01(e)    Nonprovisional Application Filed Without at Least One Claim [R-07.2015]

[Editor’s Note: This section is only applicable to nonprovisional applications filed prior to December 18, 2013 or to design applications. Nonprovisional applications, which are not design applications, filed under 35 U.S.C. 111(a)  on or after December 18, 2013 are entitled to a filing date even if the specification does not contain claims. If such an application is filed without claims, it may be completed subsequent to its filing date. See MPEP § 601.01(a), subsection II.]

For nonprovisional applications filed prior to December 18, 2013 or design applications, the applicable version of 35 U.S.C. 111(a)(2)  requires that an application for patent include, inter alia, "a specification as prescribed by section 112," and the applicable version of 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(a)  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)  prior to December 18, 2013 and in a design application, a claim is a statutory requirement for according a filing date to the application. 35 U.S.C. 171  makes 35 U.S.C. 112  applicable to design applications. 35 U.S.C. 162  specifically requires the specification in a plant patent application to contain a claim, but a claim is not required for receiving a filing date for plant patent applications filed on or after December 18, 2013. In addition, 35 U.S.C. 111(b)(2)  provides that "[a] claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application." Thus, only design applications and nonprovisional applications filed prior to December 18, 2013 that are filed without at least one claim are incomplete and not entitled to a filing date.

If a nonprovisional application filed prior to December 18, 2013 or a design 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 filed prior to December 18, 2013 or a design 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). For nonprovisional applications filed under 35 U.S.C. 111(a)  on or after December 18, 2013, there is no need to request conversion to a provisional application because such applications do not require presentation of at least one claim to obtain 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).

601.01(f)    Applications Filed Without Drawings [R-10.2019]

[Editor’s Note: This section is only applicable to applications filed prior to December 18, 2013 or to design applications. Applications, which are not design applications, filed under 35 U.S.C. 111(a) or (b)  on or after December 18, 2013 are entitled to a filing date even if the application does not contain drawings. If such an application is filed without drawings, it may be completed subsequent to its filing date. See 37 CFR 1.53(e)  and MPEP § 601.01(g).]

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." 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." For applications filed prior to December 18, 2013, 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." Therefore, design applications and applications filed under 35 U.S.C. 111(a) or (b)  prior to December 18, 2013 must have any required drawing, if it is necessary for the understanding of the invention, in order to receive a filing date. For applications other than design applications filed on or after December 18, 2013, although drawings are not required in order to receive a filing date, drawings should be submitted on filing if necessary for the understanding of the invention because no amendment may introduce new matter into the disclosure of an application after its filing date.

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 filed prior to December 18, 2013 or a design 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 filed prior to December 18, 2013 or a design 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 in nonprovisional applications filed prior to December 18, 2013 or in design applications. 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 filed prior to December 18, 2013 or a design 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 filed prior to December 18, 2013 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 37 CFR 1.64   referring to the drawing(s) being submitted.

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, international application, or international design 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(b). The amendment must be by way of a petition under 37 CFR 1.53(e)  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 1.53(e)  as provided for in 37 CFR 1.57(b)(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 [R-07.2015]

I.    REVIEW BY THE OFFICE OF PATENT APPLICATION PROCESSING

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 an application filed under 35 U.S.C. 111  prior to December 18, 2013, or a design 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. For an application, which is not a design application, filed under 37 CFR 1.53(b)  or (c) on or after December 18, 2013, if the application is filed without all of the drawings, but contains something that can be construed as a specification, with or without claims, 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 drawings.

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 OG 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:

  • (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 two months from the date of the OPAP notice, file a petition under 37 CFR 1.53(e)  with the petition fee set forth in 37 CFR1.17(f), along with evidence of such deposit. 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 two-month period is extendable 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 two months from the date of the OPAP notice, file any omitted 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. For applications filed before September 16, 2012, the omitted drawings must be filed with an oath or declaration in compliance with pre-AIA 37 CFR 1.63   and pre-AIA 37 CFR 1.64   referring to such drawing(s). The two-month period is extendable under 37 CFR 1.136; or
  • (C) accept the application as deposited in the USPTO by filing an appropriate amendment. Applicant may accept the application as deposited in the USPTO by either:
    • (1) filing an amendment including replacement drawing sheets in compliance with 37 CFR 1.121(d)  to renumber the drawing figures consecutively (if necessary), and a substitute specification (excluding claims) that amends the specification to cancel any references to any omitted drawing(s) and corrects the references in the specification to the drawing figures to correspond with any relabeled drawing figures, in compliance with 37 CFR 1.121(b)(3)  and 1.125, without adding the subject matter that was in the omitted drawing(s) and without adding any new matter (see 35 U.S.C. 132(a) ). 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, or
    • (2) filing an amendment to add the missing figure(s) by relying on an incorporation by reference under 37 CFR 1.57(b)  or other portions of the original disclosure, without adding any new matter (see 35 U.S.C. 132(a) ). Applicant is required to submit new and replacement drawing sheets in compliance with 37 CFR 1.121(d)  to add the missing figure(s). 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, international application, or international design 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(b). The amendment should be identified as an amendment pursuant to 37 CFR 1.57(b)  and must comply with the requirements of 37 CFR 1.57(b)  and 37 CFR 1.121. See MPEP § 217. 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 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 two-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 held in Office’s Image File Wrapper (IFW) system and automatically abandoned at the end of its pendency period. 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. If a figure which is referred to in the specification by a particular number cannot be located among the drawings, and the drawings include at least one figure labeled with that particular number in combination with a letter, correction will be required. 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.

II.    REVIEW BY EXAMINER

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 if the application was filed under 35 U.S.C. 111(a)  prior to December 18, 2013 or is a design application. An application filed under 35 U.S.C. 111(a)  prior to December 18, 2013 or a design 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 not a design application and was filed under 35 U.S.C. 111(a)  on or after December 18, 2013, the application is entitled to a filing date if it is filed with a specification, with or without drawings.

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) 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. For applications filed before September 16, 2012, the omitted drawing(s) must be filed with an oath or declaration in compliance with pre-AIA 37 CFR 1.63  and pre-AIA 37 CFR 1.64  referring to the omitted drawing figure(s); 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 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, international application, or international design 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(b). The amendment should be submitted in response to the Office action and must comply with 37 CFR 1.57(b)  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.

B.    Application NOT Entitled to a Filing Date

If upon review of the application, the examiner determines that the application filed under 35 U.S.C. 111(a)  prior to December 18, 2013 or a design 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."