601.01(a)   Nonprovisional Applications Filed Under 35 U.S.C. 111(a) [R-11.2013]

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. Under 37 CFR 1.53(b), a filing date is assigned to a nonprovisional application as of the date a specification containing a description and claim and any necessary drawings are filed in the U.S. Patent and Trademark Office (USPTO). Failure to meet any of the requirements in 37 CFR 1.53(b)  will result in the application being denied a filing date. The filing date to be accorded such an application is the date on which all of the requirements of 37 CFR 1.53(b)  are met.

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

    • (A) payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c)  is granted in the prior application;
    • (B) abandonment of the prior application; or
    • (C) termination of proceedings on the prior application.

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

If the required basic filing fee is not paid during the pendency of the application, the application will be disposed of.

The basic filing fee must be paid within the pendency of a nonprovisional application in order to permit benefit of the application to be claimed under 35 U.S.C. 120, 121, or 365(c)  in a subsequent nonprovisional or international application.

See 37 CFR 1.78. Copies of an application will be provided by the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b)  unless the application has been disposed of (see 37 CFR 1.53(e)  and (f)).

37 CFR 1.53(h)  indicates that a patent application will not be forwarded for examination on the merits until all required parts have been received.

II.   COMPLETION OF NONPROVISIONAL APPLICATION SUBSEQUENT TO FILING

In accordance with the provisions of 35 U.S.C. 111(a)  and 37 CFR 1.53(b), a filing date is granted to a nonprovisional application for patent that includes at least a specification as prescribed by 35 U.S.C. 112  containing a description pursuant to 37 CFR 1.71  and at least one claim pursuant to 37 CFR 1.75, and any drawing referred to in the specification or required by 37 CFR 1.81(a), which is filed in the U.S. Patent and Trademark Office.

A.   Completion of Nonprovisional Application Filed On or After September 16, 2012

[Editor Note: See subsection B., below, for applications filed before September 16, 2012.]

If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or inventor's oath or declaration, applicant will be so notified in accordance with 37 CFR 1.53(f).

For applications filed before September 16, 2012, the Office issued a Notice to File Missing Parts if an application under 37 CFR 1.53(b)  did not contain the basic filing fee, the search fee, or the examination fee, or the inventor's oath or declaration, and the applicant was given a time period (usually two months) within which to file the missing basic filing fee, the search fee, the examination fee, or the inventor's oath or declaration and pay the surcharge required by 37 CFR 1.16(f)  to avoid abandonment. See subsection II.B below for additional information regarding completion of a nonprovisional application filed before September 16, 2012.

For applications filed on or after September 16, 2012, 37 CFR 1.53(f)  revises the former missing parts practice to allow applicants to postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance.

37 CFR 1.53(f)(1)  provides for a notice (if the applicant has provided a correspondence address) if the application does not contain the basic filing fee, the search fee, or the examination fee, or if the application under 37 CFR 1.53(b)  does not contain the inventor's oath or declaration. 37 CFR 1.53(f)(1)  provides that applicant must pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by 37 CFR 1.16(f)  within the time period set in the notice to avoid abandonment.

Section 1.53(f)(3) (discussed subsequently) sets forth the time period for filing the inventor's oath or declaration in an application under 37 CFR 1.53(b)  (an application under 37 CFR 1.53(d)  uses the inventor's oath or declaration from the prior application) and provides the conditions under which an applicant may postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance.

37 CFR 1.53(f)(2)  provides for the situation where applicant has not provided a correspondence address in an application under 37 CFR 1.53(b), and the application does not contain the basic filing fee, the search fee, or the examination fee, or does not contain the inventor's oath or declaration.37 CFR 1.53(f)(2)  provides that if the applicant has not provided a correspondence address, the applicant must pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by 37 CFR 1.16(f), within two months from the filing date of the application to avoid abandonment.

37 CFR 1.53(f)(3)  sets forth the time period for filing the inventor's oath or declaration in an application under 37 CFR 1.53(b)  and provides the conditions under which an applicant may postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance. Section 1.53(f)(3) specifically provides that the inventor's oath or declaration in an application under 37 CFR 1.53(b)  must also be filed within the period specified in 37 CFR 1.53(f)(1)  or (f)(2), except that the filing of the inventor's oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in 37 CFR 1.53(f)(3)(i)  through (f)(3)(ii). This requires payment of the surcharge under 37 CFR 1.16(f)  if the inventor’s oath or declaration (executed by or with respect to each inventor) is not submitted on filing of the application. If the surcharge is not paid at the time the application is filed, the Office will send a Notice to File Missing Parts requiring the surcharge. If, however, a general authorization to charge any required fees to a deposit account (that covers fees under 37 CFR 1.16 ) is submitted on filing of the application, the Office will charge the surcharge in accordance with the deposit account authorization. Payment of the surcharge cannot be postponed until a Notice of Allowability issues.

37 CFR 1.53(f)(3)(i)  provides that the application must be an original (non-reissue) application that contains an application data sheet in accordance with 37 CFR 1.76  identifying: (1) each inventor by his or her legal name; and (2) a mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor. The applicant must file an oath or declaration in compliance with 37 CFR 1.63, or substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).

If an application under 37 CFR 1.53(b)  does not include the inventor's oath or declaration but does contains the applicable filing fees (basic filing fee, search fee, the examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f)  (for filing the oath or declaration later than the filing date), and a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), the Office will not issue a Notice to File Missing Parts requiring the applicant to file the inventor's oath or declaration.

If an application under 37 CFR 1.53(b)  that does not contain the inventor's oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing parts. While the inventor's oath or declaration will not be required within the period for reply to the Notice to File Missing Parts if the applicant provides a signed application data sheet providing the information required by 37 CFR 1.53(f)(3)(i), any required filing fees and surcharge required by 37 CFR 1.16(f)  must be filed within the period for reply to the Notice to File Missing Parts to avoid abandonment.

If an application is in condition for allowance but does not include an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, the Office will issue a ``Notice of Allowability'' (PTOL-37) including a Notice Requiring Inventor’s Oath or Declaration requiring the applicant to file an oath or declaration in compliance with 37 CFR 1.63, or substitute statement in compliance with 37 CFR 1.64, executed by or with respect to each actual inventor, no later than the date of payment of the issue fee to avoid abandonment.

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

[Editor Note: See subsection A., above, for applications filed on or after September 16, 2012.]

If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or oath or declaration, applicant will be so notified in accordance with pre-AIA 37 CFR 1.53(f)  and given a period of time within which to file the missing parts to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f)  in order to prevent abandonment of the application

Applicants should submit a copy of any notice to file missing parts or notice of incomplete application with the reply submitted to the U.S. Patent and Trademark Office, unless the reply is being submitted via EFS-Web. Applicants should also include the application number on all correspondence to the Office. These measures will aid the Office in matching papers to applications, thereby expediting the processing of applications.

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

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