United States Patent and Trademark Office OG Notices: 20 February 2007
Change in Procedure for
Handling Nonprovisional Applications
Having Omitted Items
Summary:
The U.S. Patent and Trademark Office (Office) is revising its
procedure for handling nonprovisional applications having omitted items
(e.g., missing pages or figures or missing or unreadable
compact discs). Under the revised procedure, applicants must reply to a
notice regarding omitted items in a nonprovisional application within
the time period set by the notice in order to avoid abandonment. This
time period is extendable under 37 CFR 1.136. Applicants will continue
to have the following three options: (1) petition for the date of
deposit by filing a petition under 37 CFR 1.53(e), asserting that the
omitted item was in fact deposited in the Office, along with evidence
of such deposit (e.g., a date-stamped itemized postcard
receipt) and the petition fee; (2) petition for a later filing date by
filing the omitted item, along with a supplemental oath or declaration
in compliance with 37 CFR 1.63 and 1.64 referring to such item, a
petition under 37 CFR 1.182 and the petition fee requesting the date of
such submission as the application filing date; and (3) accept the
application as deposited and filing an appropriate amendment to the
application (e.g., a substitute specification). Under the
revised procedure, applicants who wish to accept the nonprovisional
application as deposited (the third option) will be required to file an
appropriate amendment (e.g., a substitute specification)
within the extendable time period to avoid abandonment of the
application. Applicants will no longer be able to accept the
nonprovisional application as deposited by failing to file a reply to
the notice within the set time period.
Because the amendment correcting the application is not required by
any particular time under the former procedure, the Office often receives
such amendments after the application has been published and
examination of the application has begun. Requiring correction in reply
to a notice regarding omitted items will ensure that the nonprovisional
application is complete and ready for examination before the
application is forwarded to the Technology Center, and thus, the
examination will be more efficient and effective. Any issues related to
any omitted items will be resolved before the application is taken up
for action, rather than after an Office action on the merits. This
change will also improve the quality of the patent application
publications and the efficiency of the publication process. The Office
is not changing its procedure for handling provisional applications
having omitted items.
Background:
Upon receiving a nonprovisional application filed under 35
U.S.C. 111(a), the Office of Initial Patent Examination (OIPE) reviews
application papers to determine whether the application is complete. If
the application is filed (1) without all of the pages of the
specification, (2) without all of the drawing figures referred to in
the specification, or (3) with missing or unreadable compact discs or a
missing or unreadable file on a compact disc (and the duplicate copy),
but is otherwise entitled to a filing date, OIPE will mail a notice
(e.g., a "Notice of Omitted Item(s) in a Nonprovisional
Application") indicating that the application papers have been
accorded a filing date, but are lacking some page(s) of the
specification or some of the figures of drawings described in the
specification, or the compact discs are missing or unreadable or
contain a missing or unreadable file.
Under the previous procedure, the OIPE notice provided applicant
with three options: (1) petition for the date of deposit by filing a
petition under 37 CFR 1.53(e), asserting that the omitted item was in
fact deposited in the Office, along with evidence of such deposit and
the petition fee; (2) petition for a later filing date by filing the
omitted item, along with a supplemental oath or declaration in
compliance with 37 CFR 1.63 and 1.64 referring to such item, a petition
under 37 CFR 1.182 and the petition fee requesting the date of such
submission as the application filing date; and (3) accept the
application as deposited. The notice also indicated that if applicant
fails to file a petition pursuant to the first two options, the option
of accepting the application as deposited is constructively elected.
Even though applicant was required to file an amendment to correct the
application when the option of accepting the application as deposited
is constructively elected, no time period was set in which applicant
had to submit such an amendment. Many times, the amendment for
correcting the application was received by the Office after the
publication process or the examination had been started.
Revised Procedure:
Under the revised procedure, applicants must reply to the OIPE
notice within the time period set by the notice. This time period is
extendable under 37 CFR 1.136. Applicants will continue to have the
first two options (a petition for the date of deposit and a petition
for a later filing date), but applicants who wish to accept the
application as deposited will be required to file an appropriate
amendment (e.g., a substitute specification) within the time
period to avoid abandonment of the application. Applicants will no
longer have the option to accept the application as deposited by
failing to file a reply to the OIPE notice within the set time period.
The OIPE notice will set forth the following options:
(1) Petition for the date of deposit by filing a petition under 37
CFR 1.53(e), asserting that the omitted item was in fact deposited in the
Office, along with evidence of such deposit (e.g., a date-stamped itemized
postcard receipt) and the petition fee;
(2) Petition for a later filing date by filing the omitted item, along
with a supplemental oath or declaration in compliance with 37 CFR 1.63 and
1.64 referring to such item, a petition under 37 CFR 1.182 and the petition
fee, requesting the date of such submission as the application filing date;
or
(3) Accept the application as deposited by filing an appropriate
amendment (e.g., a substitute specification).
This change in procedure is applicable to any application in which an
OIPE notice addressing omitted items is issued which requires the
applicant to reply by exercising one of the above three options.
Appropriate Amendment Including Substitute Specification:
If applicant wants to accept the application as deposited (without
adding the subject matter that was in the omitted item),
applicant is required to submit one or more of the following items
without adding any new matter (see 35 U.S.C. 132(a)):
(A) For a missing page of the specification, 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;
(B) For a missing figure of the drawings, replacement drawing sheets in
compliance with 37 CFR 1.121(d) to renumber the drawing figures
consecutively (if necessary), 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;
(C) For a missing page of the claim listing only, 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);
(D) For a missing or unreadable compact disc, a substitute specification
(excluding the claims) deleting the reference to the compact disc and
the files contained on the compact disc, in compliance with 37 CFR
1.121(b)(3) and 1.125; and
(E) For a missing or unreadable file submitted on a compact disc, (a) a
substitute specification (excluding the claims) deleting the reference
to the missing or unreadable file, in compliance with 37 CFR 1.121(b)(3)
and 1.125; and (b) a replacement transmittal letter listing all of the
files, except the missing or unreadable file, in compliance with 37 CFR
1.52(e)(3)(ii).
Alternatively, if applicant wants to accept the application as
deposited but wishes to add the subject matter in the omitted item by
relying on an incorporation by reference under 37 CFR 1.57 or other
portions of the original disclosure, applicant is required to submit
one or more of the following items without adding any new matter (see
35 U.S.C. 132(a)):
(A) For a missing page of the specification, a substitute specification
(excluding claims) in compliance with 37 CFR 1.121(b)(3) and 1.125;
(B) For a missing figure of the drawings, new and replacement drawing
sheets in compliance with 37 CFR 1.121(d) to add the missing figure;
(C) For a missing page of the claim listing, a complete claim listing in
compliance with 37 CFR 1.121(c);
(D) For a missing or unreadable compact disc, (a) a replacement compact
disc and a duplicate copy of the compact disc, in compliance with
37 CFR 1.52(e); and (b) a statement that the replacement compact disc
contains no new matter in compliance with 37 CFR 1.52(e)(4); and
(E) For a missing or unreadable file submitted on a compact
disc, (a) a replacement compact disc that contains all of the files
listed in the specification including the missing or unreadable file
and a duplicate copy of the compact disc, in compliance with 37 CFR
1.52(e); and (b) a statement that the replacement compact disc contains
no new matter in compliance with 37 CFR 1.52(e)(4).
If applicant is relying on an incorporation by reference under
37 CFR 1.57 to add the omitted subject matter, then applicant must also
comply with the requirements of 37 CFR 1.57.
In addition, since the Office is now requiring a reply to a Notice
of Omitted Item(s) in a Nonprovisional Application, such a notice is now
considered a notice or action by the Office making a rejection,
objection, argument, or other request within the meaning of 35 U.S.C.
154(b)(2)(C)(ii) or 37 CFR 1.704(b). Therefore, if applicant fails to
reply to such a notice within three months of the mailing date of the
notice, applicant would be subject to a reduction of patent term
adjustment under 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b). As
discussed previously, applicant must reply within the time period set
in such notice (including any extensions under 37 CFR 1.136) to avoid
abandonment of the application.
In order to ensure better quality of patent application publications
and improve efficiency in the publication process, OIPE will also continue
to require applicant to submit an appropriate amendment (e.g., substitute
specification) if the application contains incomplete or illegible text or
does not contain an abstract, by mailing other notices, such as a Notice
to File Corrected Application Papers.
Appropriate sections of the Manual of Patent Examining Procedure
(e.g., Secs. 201.06(c), 201.17, 601.01(d) and 601.01(g)) will be revised
accordingly in due course.
Questions regarding this notice may be directed to Eugenia Jones (by
phone (571) 272-7727) or Joni Chang (by phone (571) 272-7720), Senior
Legal Advisors, Office of Patent Legal Administration, or e-mailed to
PatentPractice@uspto.gov.
January 29, 2007 JOHN LOVE
Deputy Commissioner for
Patent Examination Policy