When patent applications are incomplete or missing information

Understanding Office of Patent Application Processing (OPAP) notices

An Office of Patent Application Processing (OPAP) notice identifies what is incomplete or missing in your application, what you need to do to correct all issues, the time period you have to file a complete reply to the notice, and any additional fees required. Each notice may indicate more than one problem with your application, so read the notice carefully and provide all required items with your reply including any fees required by the notice.

The information below guides you through the types of notices you may receive and how to correct any deficiencies in your application revealed by those notices. If you need additional assistance, contact the Application Assistance Unit (AAU).

Types of notices

The Notice of Incomplete Application is sent to you when any application part necessary for a filing date is missing or deficient, meaning a filing date cannot yet be granted. Application parts necessary for a filing date include the specification for all applications and drawings for design applications, keeping in mind drawings necessary for an understanding of the invention must ordinarily be included with the filing of any utility or plant application since no amendment may include new subject matter after the application filing date. A single claim in a particular format is also necessary for a design application filing date. One or more claims are an essential part of utility applications and should be included with the application filing. The same goes for plant applications, however, only a single claim in a particular format is permitted in a plant application. The filing date will be the date on which all application parts necessary for a filing date are submitted. In addition to requiring any missing application part necessary for a filing date, a Notice of Incomplete Application will require any papers and/or fees needed to complete your patent application filing. More information can be found in Section 506 of the Manual of Patent Examination and Procedure (MPEP).

The Notice to File Missing Parts is sent to you when your application is entitled to a filing date, but a necessary part for a complete application is found to be missing or deficient. Examples of necessary filing requirements include appropriate filing fees, proper establishment of an entity status discount, and establishment of inventorship.

Other notices issued by OPAP include the Notice to File Corrected Application Papers and Notice of Omitted Item(s).

This information below helps to addresses some of the more common problems with patent applications for which OPAP issues notices. As noted earlier, you may have to pay additional fees along with submitting documents to the USPTO.

OPAP Notices guide

Application not entitled to a filing date

Notice of Incomplete Application only	Explanation
“A filing date has NOT been accorded ...”	A required part of your patent application was not received. The documents are not sufficient for the application to be granted a filing date. It cannot be processed further until you submit the item(s) identified on the notice.

Inventor/application information

Notice	Explanation
“An inventor's oath or declaration or an application data sheet (ADS) naming each inventor has not been submitted.”	Every nonprovisional application must include, for each inventor, a signed form called an inventor’s oath or declaration. Inventor’s declarations (or oaths) can be included with the application filing but normally do not have to be filed until your application is allowed. If an inventor’s oath or declaration for each inventor is not included with the application filing, the notice will require payment of a surcharge for filing the inventor’s declaration(s) on a date later than the application filing date. This surcharge would also be required if the applicable fees due on filing are not paid on the application filing date. For applications not including an inventor’s oath or declaration with the application filing, it is recommended not to delay filing the required oath(s) or declaration(s) until application allowance. An application data sheet (ADS) form should normally be filed with any nonprovisional application to provide fundamental application information including information about the inventors. The forms can be found on the USPTO forms webpage.
“This application, which was filed with an indication of micro entity status, fails to meet the requirements for establishing micro entity status because:”	You filed your application indicating you are entitled to micro entity status, but there was something wrong with the indication. Normally, when there is actual entitlement to the micro entity discount, one or more new Certification of Micro Entity Status forms would be required to be completed and properly signed. This form is available on the Micro Entity Status webpage. Note that even if your application filing included all fees due on filing as well as an inventor’s oath or declaration for each inventor, the response to the notice must include payment of the surcharge for acceptance of those fees on a date later than the application filing date. This is because the fees due on filing, even if submitted on filing, cannot be accepted in the micro entity discount amount until micro entity status is established by a proper certification(s) of entitlement.
“A provisional application cover sheet was not provided for this application.”	Every provisional application must include a form called a cover sheet or an application data sheet (ADS). It identifies the application as provisional, identifies the names and residences of all inventors, states the title of the invention, and provides a correspondence address for communication from the USPTO. Your application was either filed without a cover sheet or is missing some of the information above. The form can be downloaded from the USPTO forms webpage.

Fees

Notice	Explanation
“The . . . fee has not been received”	Certain fees must be paid in order for the USPTO to examine your application, and one or more of them has not yet been paid in full. The notice states a total balance due which may include a surcharge for late payment. The actual balance due, taking into account any entity status discount being properly established, should be paid within the time period for reply stated on the notice. Whatever other items were required by the notice must also be included for a complete reply. If a complete reply is not filed within the reply period stated on the notice, you will incur extension of time fees and risk abandonment of your application.
[makes a reference to an “extension of time”]	If the notice sets a period of time in which you must reply, you may be able to file your reply later, but this requires extra fees.
“Additional claim fees of $[dollar amount], including any required multiple dependent claim fee, are required”	If you filed your application with more than 20 total claims, more than three independent claims, or with any multiple dependent claims, you will need to pay a fee for excess claims. You can avoid these fees by submitting a preliminary amendment canceling claims. The Office strongly recommends that applicants file their applications with a specification containing only the desired set of claims, rather than filing the application with a preliminary amendment canceling claims.
“This application, which was filed with an indication of micro entity status, fails to meet the requirements for establishing micro entity status because:”	You filed your application indicating you are entitled to micro entity status, but there was something wrong with the indication. Normally, when there is actual entitlement to the micro entity discount, one or more new Certification of Micro Entity Status forms would be required to be completed and properly signed. This form is available on the USPTO forms webpage. Note that even if your application filing included all fees due on filing as well as an inventor’s oath or declaration for each inventor, the response to the notice must include payment of the surcharge for acceptance of those fees on a date later than the application filing date. This is because the fees due on filing, even if submitted on filing, cannot be accepted in the micro entity discount amount until micro entity status is established by a proper certification(s) of entitlement.

Specification, claims, and abstract

Notice	Explanation
“The specification is missing”	Every patent application must include a written technical description of the invention — called the specification. No specification was found in your application. This deficiency would normally be stated in a Notice of Incomplete Application because a filing date cannot be granted for any type of application absent a specification.
“The specification does not include at least one claim.”	Every application must include at least one claim at the end of the specification starting on a separate page. A claim is a single sentence stating the legal boundaries of your invention. Utility applications may have more than one claim, whereas a plant or design application must include only one claim. This deficiency was stated because no claim can be found in your application.
“Claim(s) were submitted on [date]; however, the claims do not commence on a separate sheet”	Your application includes the required claims, but they did not start on a separate page. You will need to submit a new copy of those same claims, this time starting them on their own page.
“The specification, claims, and/or abstract page(s) submitted is not acceptable because: [followed by a short description of a specific problem]”	Every nonprovisional application must follow certain formatting rules, and your application did not satisfy them all. To remedy a specification that was not acceptable, a substitute specification is required. In limited situations, only a clean copy of the substitute specification is required, and the notice will say if that is the case. Normally, a substitute specification must include two copies of an entire specification. One copy is simply a clean copy of the substitute specification, and the other copy is a marked-up copy containing strikethrough to show where text was deleted from the originally filed specification and underlining to show added text. See MPEP [608.01(q) and 714(II)(A) and (B) ]. In all cases the substitute specification must also include a signed statement that the substitute specification contains no new matter (compared to the originally filed specification, drawings, and claims). To remedy claims that were not acceptable, a new claim listing starting on a separate page must be filed. The new claim listing is an amendment that must comply with 37 CFR 1.121(c). See MPEP [ 608.01(m) and 714(II)(A) and (C)]. To remedy an abstract that was not acceptable, a new abstract on a separate page titled “ABSTRACT” must be filed correcting whatever issue(s) was cited on the notice. The abstract should be a single paragraph and must not exceed 150 words. See MPEP [608.01(b) and 714(II)(A) and (B)].
“An abstract of the technical disclosure has not been received for this application.”	Every nonprovisional application must include an abstract. Its purpose is to enable the USPTO and, in turn, the general public to quickly determine the nature and gist of the technical disclosure. Your application did not include one. You need to submit an abstract (one paragraph, less than 150 words, on its own sheet, and without any drawings or flow diagrams) into your application.
“A substitute specification excluding claims in compliance with 37 CFR 1.52, 1.121(b)(3), and 1.125 is required.”	The USPTO has found formatting or content problems with the specification of your application and has required you to file a corrected version — in two different formats. Read the notice closely for the requirements of these formats. When you submit them, you must also sign and submit a paper saying that the substitute specification “contains no new matter.” In limited situations, only a clean copy of the substitute specification is required, and the notice will say if that is the case. Normally, a substitute specification must include two copies of an entire specification. One copy is simply a clean copy of the substitute specification, and the other copy is a marked-up copy containing strikethrough to show where text was deleted from the originally filed specification and underline to show added text. See MPEP [608.01(q) and 714(II)(A) and (B)]. In all cases the substitute specification must also include a signed statement that the substitute specification contains no new matter (compared to the originally filed specification, drawings, and claims).
Omitted pages: Page(s) of the specification	It appears that the specification, claims, or abstract you submitted is missing one or more pages. This could be because the page numbering or text does not appear to be continuous. Read the notice closely for the requirements for submitting the missing pages or correcting the issue.

Drawings

Notice	Explanation
“The drawings filed are unacceptable because ...”	Drawings filed in a nonprovisional application must satisfy rules regarding clarity and reproducibility. Your drawings did not meet all those rules. You’ll need to submit at least one new sheet of drawings labeled as “Replacement Sheet” in the top margin. Each replacement sheet of drawings must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. The specific corrections required by the notice must appear in the amended figure(s).
“The application was deposited without drawings.”	Every design application must include at least one drawing. There are none in your application. Utility applications do not require drawings, unless necessary to understand the invention. See MPEP 608.02.
“The specification contains drawings or flow diagrams (37 CFR 1.58(a)) on page(s) [page numbers].”	In nonprovisional applications, any drawings or flow diagrams can’t be included within the text of the specification itself. You’ll need to file a substitute specification and a new set of drawings, as stated in the notice. In limited situations, only a clean copy of the substitute specification is required, and the notice will say if that is the case. Normally, a substitute specification must include two copies of an entire specification. One copy is simply a clean copy of the substitute specification, and the other copy is a marked-up copy containing strikethrough to show where text was deleted from the originally filed specification and underline to show added text. See MPEP [608.01(q) and 714(II)(A) and (B)]. In all cases the substitute specification must also include a signed statement that the substitute specification contains no new matter (compared to the originally filed specification, drawings, and claims).
The application was deposited without drawings. 35 U.S.C. 113 (first sentence) requires a drawing “where necessary for the understanding of the subject matter sought to be patented.”	It appears that the specification refers to figures that were not submitted. Read the notice closely for the requirements for submitting the missing figures or for correcting the issue by removing the references in the specification.

Other

Notice	Explanation
“Period for Reply”	You must reply to the notice within the set period of time stated. Normally, for pre-examination notices, the set time period may be extended up to 5 additional months with payment of the applicable extension of time fee. In most other contexts, the period for reply cannot be extended that long.
“This application, which was filed with an indication of micro entity status, fails to meet the requirements for establishing micro entity status because:”	You filed your application indicating you are entitled to micro entity status, but there was something wrong with the indication. Normally, where there is actual entitlement to the micro entity discount, one or more new Certification of Micro Entity Status forms would be required to be completed and properly signed. This form is available on the USPTO forms webpage. Note that even if your application filing included all fees due on filing as well as an inventor’s oath or declaration for each inventor, the response to the notice must include payment of the surcharge for acceptance of those fees on a date later than the application filing date. This is because the fees due on filing, even if submitted on filing, cannot be accepted in the micro entity discount amount until micro entity status is established by a proper certification(s) of entitlement.
“The [name of document] submitted on [date] was not properly signed in accordance with 37 CFR 1.4.”	You filed a document in your application that required a signature, but it was not signed properly. You’ll need to either properly sign and re-file the document, or prior to re-filing, the document must be signed by a person who is authorized to sign it. The notice gives details on how to sign and submit it.