(72) Department of Commerce
Patent and Trademark Office
[Docket #: 951019254-6136-02]
RIN 0651-XX05
Change in Procedure Relating to
an Application Filing Date
Agency: Patent and Trademark Office, Commerce.
Action: Notice of Change in Procedure.
Summary: The Patent and Trademark Office (PTO) is implementing a change
in procedure relating to the treatment of applications filed without all
the pages of the specification or without all of the figures of the
drawings. Under this new procedure, the PTO will accord a filing date to
any application that contains something that can be construed as a
written description, any necessary drawing, and, in a nonprovisional
application, at least one claim, regardless of whether the application
is filed without all the pages of the specification or without all of
the figures of the drawings. Applications filed without all the pages of
the specification or without all of the figures of the drawings will be
treated by mailing a notice indicating that the application has been
accorded a filing date, but is missing pages of the specification or
figures of drawings. The notice will indicate that failure to timely (37
CFR1.181(f)) file a petition under 37 CFR 1.53(c) or 1.182 in response
to such notice will result in the PTO treating the original application
papers (the original disclosure of the invention) as including only
those application papers present in the PTO on the date of deposit.
Effective Date: July 22, 1996.
For Further Information Contact: Robert W. Bahr by telephone at (703)
305-9285, by facsimile at (703) 308-6916, or Jeffrey V. Nase by
telephone at (703) 305-9285, or by mail addressed to Box
Comments-Patents, Assistant Commissioner for Patents, Washington, D.C.
20231.
Supplementary Information
The PTO is implementing a change in procedure relating to the
treatment of applications filed without all the pages of the
specification (Section 608.01 of the Manual of Patent Examining
Procedure (MPEP)) (e.g., with page numbering revealing that page(s) are
missing), or without all of the figures of the drawings (MPEP 608.02)
(e.g., without drawing figures that are mentioned in the specification).
The procedure set forth in this notice will be incorporated into the
next revision of the MPEP.
The current treatment of applications that fail to identify the names
of the actual inventor(s) (e.g., an application naming the inventorship
only as "Jane Doe et al.") as required by 37 CFR 1.41(a) and 1.53(b) is
not affected by the adoption of the procedure set forth in this notice.
In a Notice entitled "Proposed Changes in Procedures Relating to an
Application Filing Date" (Filing Date Notice), published in the Federal
Register at 60 FR 56982-84 (November 13, 1995), and in the PTO Official
Gazette at 1181 Off. Gaz. Pat. Office 12-13 (December 5, 1995), the PTO
proposed a change in procedure relating to the treatment of applications
filed without all the pages of the specification or without all of the
figures of the drawings. In view of the comments received in response to
the Filing Date Notice, the PTO is adopting the proposed change.
The adopted procedure for the treatment of applications filed without
all the pages of the specification or without all of the figures of the
drawings is set forth below.
APPLICATIONS FILED WITHOUT ALL PAGES OF SPECIFICATION
The Initial Application Examination Division reviews application
papers to determine whether all of the pages of the specification are
present in the application. If the application is filed without all of
the page(s) of the specification, but containing something that can be
construed as a written description, at least one drawing figure, if
necessary under 35 U.S.C. 113, the names of all the inventors, and, in a
nonprovisional application, at least one claim, the Initial Application
Examination Division will mail a "Notice of Omitted Items" indicating
that the application papers so deposited have been accorded a filing
date, but are lacking some page(s) of the specification.
The mailing of a "Notice of Omitted Items" will permit the applicant
to either: (1) promptly establish prior receipt in the PTO of the
page(s) at issue (generally by way of a date-stamped postcard receipt
(MPEP 503)), or (2) promptly submit the omitted page(s) in a
nonprovisional application and accept the date of such submission as the
application filing date. An applicant asserting that the page(s) was in
fact deposited in the PTO with the application papers must file a
petition under 37 CFR 1.53(c) (and the petition fee under 37 CFR 1.17(i)
(37 CFR 1.17(q) in a provisional application), which will be refunded if
it is determined that the page(s) was in fact received by the PTO with
the application papers deposited on filing) with evidence of such
deposit within two months of the date of the "Notice of Omitted Items"
(37 CFR 1.181(f)). 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 file any omitted page(s) with an
oath or declaration in compliance with 37 CFR 1.63 and 1.64 referring to
such page(s) and a petition under 37 CFR 1.182 (with the petition fee
under 37 CFR 1.17(h)) requesting the later filing date within two months
of the date of the "Notice of Omitted Items" (37 CFR 1.181(f)).
An applicant willing to accept the application as deposited in the
PTO need not respond to the "Notice of Omitted Items," and the failure
to file a petition under 37 CFR 1.53(c) or 1.182 (and the requisite
petition fee) as discussed above within two months of the date of the
"Notice of Omitted Items" (37 CFR 1.181(f)) will be treated as
constructive acceptance by the applicant of the application as deposited
in the PTO. Amendment of the specification is required in a
nonprovisional application to renumber the pages consecutively and
cancel any incomplete sentences caused by the absence of the omitted
pages. Such amendment should be by way of preliminary amendment
submitted prior to the first Office action to avoid delays in the
prosecution of the application.
If the application does not contain anything that can be construed as
a written description, the Initial Application Examination Division will
mail a Notice of Incomplete Application (PTO-1123) indicating that the
application lacks the specification required by 35 U.S.C. 112. The
applicant may file a petition under 37 CFR 1.53(c) (and the petition fee
under 37 CFR 1.17(i) (37 CFR 1.17(q) in a provisional application))
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(c) must be
accompanied by sufficient evidence (37 CFR 1.181(b)) to establish the
applicant's entitlement to the requested filing date (e.g., a
date-stamped postcard receipt (MPEP 503) to establish prior receipt in
the PTO of the missing specification). Alternatively, the applicant may
submit the omitted specification, including at least one claim in a
nonprovisional application, accompanied by an oath or declaration in
compliance with 37 CFR 1.63 and 1.64 referring to the specification
being submitted and accept the date of such submission as the
application filing date.
Original claims form part of the original disclosure and provide
their own written description. See In re Anderson, 471 F.2d 1237, 176
USPQ 331 (CCPA 1973). As such, an application that contains at least one
claim, but does not contain anything which can be construed as a written
description of such claim(s), would be unusual.
NONPROVISIONAL APPLICATIONS FILED
WITHOUT AT LEAST ONE CLAIM
35 U.S.C. 111(a)(2) requires that an application for patent include,
inter alia, "a specification as prescribed by section 112 of this
title," and 35 U.S.C. 111(a)(4) provides that the "filing date of an
application shall be the date on which the specification and any
required drawing are received in the Patent and Trademark Office." 35
U.S.C. 112, first paragraph, provides, in part, that "[t]he
specification shall contain a written description of the invention," and
35 U.S.C. 112, second paragraph, 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
[(a)(1)], make clear the requirement that an application for a patent
must include . . . a specification and claims. . . . The omission of any
one of these component parts makes a patent application incomplete and
thus not entitled to a filing date.
728 F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir. 1984) (citing Gearon
v. United States, 121 F.Supp 652, 654, 101 USPQ 460, 461 (Ct. Cl. 1954),
cert. denied, 348 U.S. 942, 104 USPQ 409 (1955)) (emphasis in the
original).
Therefore, in an application filed under 35 U.S.C. 111(a), a claim is
a statutory requirement for according a filing date to the application.
35 U.S.C. 162 and 171 make 35 U.S.C. 112 applicable to plant and design
applications, and 35 U.S.C. 162 specifically requires the specification
in a plant patent application to contain a claim. 35 U.S.C.111(b)(2),
however, provides that "[a] claim, as required by the second through
fifth paragraphs of section 112, shall not be required in a provisional
application." Thus, with the exception of provisional applications filed
under 35 U.S.C. 111(b), any application filed without at least one claim
is incomplete and not entitled to a filing date.
If a nonprovisional application does not contain at least one claim,
a "Notice of Incomplete Application" will be mailed to the applicant(s)
indicating that no filing date has been granted and setting a period for
submitting a claim. The filing date will be the date of receipt of at
least one claim. See In re Mattson, 208 USPQ 168 (Comm'r Pats. 1980).
As 37 CFR 1.53(b)(2)(ii) 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(b)(2)(ii) to convert such application into an application under 35
U.S.C. 111(b), which does not require a claim to been entitled to its
date of deposit as a filing date. Such a petition, however, must be
filed prior to the expiration of twelve 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(b)(2)(ii).
APPLICATIONS FILED WITHOUT ANY DRAWINGS
35 U.S.C. 111(a)(2)(B) and 111(b)(2)(B) each provide, in part, that
an "application shall include . . . a drawing as prescribed by section
113 of this title" and 35 U.S.C.111(a)(4) and 111(b)(4) each provide, in
part, that the "filing date . . . shall be the date on which . . . any
required drawing are received in the Patent and Trademark Office." 35
U.S.C. 113 in turn provides that an "applicant shall furnish a drawing
where necessary for the understanding of the subject matter sought to be
patented."
Applications filed without drawings are initially inspected to
determine whether a drawing is referred to in the specification, and if
not, whether a drawing is necessary for an understanding of the
invention. 35 U.S.C. 113.
In general, it has been PTO 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. The same practice has been followed in composition
applications. Other situations in which drawings are usually not
considered necessary for an understanding of the invention under 35
U.S.C. 113 are:
I. 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;
II. 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;
III. 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
IV. 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:
a. A hydraulic system distinguished solely by the use therein of a
particular hydraulic fluid;
b. 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 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 usually be processed
for examination, so long as the application contains something that can be
construed as a written description and the names of all the inventors. A
nonprovisional application having at least one claim, or a provisional
application having at least some disclosure, directed to the subject
matter discussed above for which a drawing is usually not considered
essential for a filing date, describing drawing figure(s) in the
specification, but filed without drawings will be treated as an
application filed without all of the drawing figures referred to in the
specification as discussed below, so long as the application contains
something that can be construed as a written description and the names
of all the inventors. In a situation in which the appropriate examining
group determines that drawings are necessary under 35 U.S.C. 113 the
filing date issue will be reconsidered on reference from the examining
group.
If a nonprovisional application does not have at least one claim, or
a provisional application does not have at least some disclosure,
directed to the subject matter discussed above for which a drawing is
usually not considered essential for a filing date, and is filed without
drawings, the Initial Application Examination Division will mail a
"Notice of Incomplete Application" indicating that the application lacks
drawings and that 35 U.S.C. 113 requires a drawing where necessary for
the understanding of the subject matter sought to be patented.
The applicant may file a petition under 37 CFR 1.53(c) (and the
petition fee under 37 CFR 1.17(i) (37 CFR 1.17(q) in a provisional
application)) asserting that (1) the drawing(s) at issue was submitted,
or (2) the drawing(s) is not necessary under 35 U.S.C. 113 for a filing
date. The petition must be accompanied by sufficient evidence to
establish the applicant's entitlement to the requested filing date
(e.g., a date-stamped postcard receipt (MPEP 503) to establish prior
receipt in the PTO of the drawing(s) at issue). Alternatively, the
applicant may submit drawing(s) accompanied by an oath or declaration
incompliance with 37 CFR 1.63 and 1.64 referring to the drawing(s) being
submitted and accept the date of such submission as the application
filing date.
In design applications, the Initial Application Examination Division
will mail a "Notice of Incomplete Application" indicating that the
application lacks the drawings required under 35 U.S.C. 113. The
applicant may: (1) promptly file a petition under 37 CFR 1.53(c) (and
the petition fee under 37 CFR 1.17(i)) asserting that the missing
drawing(s) was submitted, or (2) promptly submit drawing(s) accompanied
by an oath or declaration in compliance with 37 CFR 1.63 and 1.64 and
accept the date of such submission as the application filing date. 37
CFR 1.154(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(c) asserting that drawings are unnecessary under 35 U.S.C. 113
for a filing date in a design application will not be found persuasive.
APPLICATIONS FILED WITHOUT ALL FIGURES OF DRAWINGS
The Initial Application Examination Division reviews application
papers to determine whether all mentioned drawing figures in the
specification are present in the application. If the application is
filed without all of the drawing figure(s) referred to in the
specification, and the application contains something that can be
construed as a written description, at least one drawing, if necessary
under 35 U.S.C. 113, the names of all the inventors, and, in a
nonprovisional application, at least one claim, the Initial Application
Examination Division will mail a "Notice of Omitted Items" indicating
that the application papers so deposited have been accorded a filing
date, but are lacking some of the drawings described in the
specification.
The mailing of a "Notice of Omitted Items" will permit the applicant
to either: (1) promptly establish prior receipt in the PTO of the
drawing(s) at issue (generally by way of a date-stamped postcard receipt
(MPEP 503)), or (2) promptly submit the omitted drawing(s) in a
nonprovisional application and accept the date of such submission as the
application filing date. An applicant asserting that the drawing(s) was
in fact deposited in the PTO with the application papers must file a
petition under 37 CFR 1.53(c) (and the petition fee under 37 CFR 1.17(i)
(37 CFR 1.17(q) in a provisional application), which will be refunded if
it is determined that the drawing(s) was in fact received by the PTO
with the application papers deposited on filing) with evidence of such
deposit within two months of the date of the "Notice of Omitted Items"
(37 CFR 1.181(f)). An applicant desiring to submit the omitted drawings
in a nonprovisional application and accept the date of such submission
as the application filing date must file any omitted drawing(s) with an
oath or declaration in compliance with 37 CFR 1.63 and 1.64 referring to
such drawing(s) and a petition under 37 CFR 1.182 (with the petition fee
under 37 CFR 1.17(h)) requesting the later filing date within two months
of the date of the "Notice of Omitted Items" (37 CFR 1.181(f)).
An applicant willing to accept the application as deposited in the
PTO need not respond to the "Notice of Omitted Items," and the failure
to file a petition under 37 CFR1.53(c) or 1.182 (and the requisite
petition fee) as discussed above within two months of the date of the
"Notice of Omitted Items" (37 CFR 1.181(f)) will be treated as
constructive acceptance by the applicant of the application as deposited
in the PTO. 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, a separate letter is required in a nonprovisional application
to renumber the drawing figures consecutively (showing the proposed
changes in red ink), if necessary, and amendment of the specification is
required to correct the references to the drawing figures to correspond
with any relabelled drawing figures, both in the brief and detailed
descriptions of the drawings. Such amendment and correction to the
drawing figures, if necessary, should be by way of preliminary amendment
submitted prior to the first Office action to avoid delays in the
prosecution of the application.
SUBSEQUENT TREATMENT OF APPLICATION
In instances in which a "Notice of Incomplete Application" has been
mailed, further action by the applicant is necessary for the application
to be accorded a filing date. As such, the application will be retained
in the Initial Application Examination Division to await such action.
Unless the applicant either completes the application or files a
petition under 37 CFR 1.53(c) (and the petition fee under 37 CFR 1.17(i)
or 1.17(q)) within the period set in the "Notice of Incomplete
Application," the application will be processed as an incomplete
application under 37 CFR 1.53(c).
In instances in which a "Notice of Omitted Items" has been mailed,
the application will be retained in the Initial Application Examination
Division for a period of two months from the mailing date of "Notice of
Omitted Items" to permit the applicant to either: (1) establish prior
receipt in the PTO of the page(s) or drawing(s) at issue, or (2)
promptly submit the omitted page(s) or drawing(s) in a nonprovisional
application and accept the date of such submission as the application
filing date. Extensions of time under 37 CFR 1.136 will not be
applicable to this two-month time period.
The grant of a petition under 37 CFR 1.182 to accept the omitted
page(s) or drawing(s) in a nonprovisional application and accord the
date of such submission as the application filing date will be indicated
by the issuance of a new filing receipt indicating the filing date
accorded the application.
Unless the applicant timely files a petition under 37 CFR 1.53(c) or
1.182 (and the requisite petition fee), the application will maintain
the filing date as of the date of deposit of the application papers in
the PTO, and the original application papers (i.e., the original
disclosure of the invention) will include only those application papers
present in the PTO on the date of deposit. Nonprovisional applications
that are complete under 35 CFR 1.51(a)(1) will then be forwarded to the
appropriate examining group for examination of the application.
Provisional applications that are complete under 35 CFR 1.51(a)(2) will
then be forwarded to Files Repository. The current practice for treating
applications that are not complete under 37 CFR 1.51(a) will remain
unchanged (37 CFR 1.53(d)).
Any petition under 37 CFR 1.53(c) or 1.182 not filed within this
two-month period may be dismissed as untimely. 37 CFR 1.181(f). Under
the adopted procedure, the PTO may strictly adhere to the two-month
period set forth in 37 CFR 1.181(f), and dismiss as untimely any
petition not filed within this two-month period. This strict adherence
to the two-month period set forth in 37 CFR 1.181(f) is justified as
such applications will now be forwarded for examination at the end of
this two-month period. It is further justified in instances in which the
applicant seeks to submit the omitted page(s) or drawing(s) in a
nonprovisional application and request the date of such submission as
the application filing date since: (1) according the application a
filing date later than the date of deposit may affect the date of
expiration of any patent issuing on the application due to the changes
to 35 U.S.C. 154 contained in Public Law 103-465, 532, 108 Stat. 4809
(1994), and (2) the filing of a continuation-in-part application is a
sufficiently equivalent mechanism for adding additional subject matter
to avoid the loss of patent rights.
The submission of omitted page(s) or 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(h)) with any omitted page(s) or
drawing(s), which is a cost-effective alternative in instances in which
an nonprovisional application is deposited without filing fees.
Likewise, in view of the relatively low filing fee for provisional
applications, and the PTO's desire to minimize the processing of
provisional applications, the PTO will not grant petitions under 37 CFR
1.182 to accept omitted page(s) or drawing(s) and accord an application
filing date as of the date of such submission. Instead, the applicant
should simply refile the complete provisional application.
Response to Comments
Thirteen comments were received in response to the Filing Date Notice.
Nine comments expressly supported the proposed change, while the
remaining four comments simply made additional comments or suggested
additional changes, but did not oppose the proposed change. The written
comments have been analyzed, and responses to the comments follow.
Comment (1): One comment suggested that the PTO should, by rulemaking,
permit the addition of subject matter in a foreign application for which
priority is claimed.
Response: Where an application includes in the papers deposited on
filing with the application a certified copy of a foreign application
for which priority is claimed, the PTO will grant a timely petition
under 37 CFR 1.182 requesting that: (1) the corresponding sheets of
drawings in the foreign priority application be accepted for any omitted
sheets of drawings in the application, or (2) the foreign priority
application be accepted as the application as filed, which may result in
the treatment of the foreign priority application as an application
filed in a non-English language (37 CFR 1.52(d)).
In instances in which the foreign priority application was not
present among the papers deposited on filing with the application, any
addition of subject matter from the foreign priority application into
the application must be considered as new matter under 35 U.S.C. 132
(and, as such, will not be permitted by petition), unless the
application-as-filed specifically incorporates the foreign priority
application by reference.
Drawing figures do not require translation of the subject matter
shown therein and individual drawing figures are sufficiently segregated
that it is considered appropriate to permit, by petition under 37 CFR
1.182, the acceptance of the corresponding sheets of drawings in the
foreign priority application for any omitted sheets of drawings in the
application. The specification of a foreign priority application,
however, is generally subject to translation and revision prior to its
filing in the PTO as the specification of an application. As such, it is
considered appropriate to permit, by petition under 37 CFR 1.182, the
acceptance of a foreign priority application as the application as
filed, but it is not considered acceptable to permit the acceptance of a
translation of portions of the foreign priority application for omitted
pages of the specification.
Finally, the occurrence of situations in which it is necessary for an
applicant to request that the corresponding sheets of drawings in the
foreign priority application be accepted for any omitted sheets of
drawings in the application, or the foreign priority application be
accepted as the application as filed is relatively rare. In addition,
the treatment of these few applications on an ad hoc basis pursuant to
37 CFR 1.182 and 1.183 has proven acceptable.
Comment (2): One comment suggested that the PTO should consider
requiring a declaration from the attorney averring that the omitted
matter was inadvertently omitted.
Response: First, in view of a registered practitioner's responsibilities
as set forth in 37 CFR Part 10, the PTO does not generally require
verification of statements by registered practitioners. See, e.g., 37
CFR 1.125 and 1.137. Second, as there is no apparent benefit to omitting
material from an application as deposited in the PTO, there appears to
be little justification for requiring even a statement that the omitted
matter was inadvertently omitted.
Comment (3): One comment questioned whether the change would be
applicable to applications filed under 37 CFR 1.60 or 1.62.
Response: The adopted procedure applies to applications filed under 37
CFR 1.53.
37 CFR 1.60 requires, inter alia, that the application be a true copy
of the prior application (37 CFR 1.60(b)(2)), and a copy that omits
pages of specification or sheets of drawings from the prior application
is not a true copy of the prior application. As such, a copy that omits
pages of specification or sheets of drawings from the prior application
is an improper application under 37 CFR 1.60, and cannot be accorded a
filing date as an application under 37 CFR 1.60 until the filing error
is corrected.
The PTO considers 37 CFR 1.60 to be unnecessary in view of changes to
37 CFR 1.4(d), and a trap for the unwary. The PTO has previously
proposed to eliminate 37 CFR 1.60 (See notice of proposed rulemaking
entitled "Changes to Implement 20-Year Patent Term and Provisional
Application" (20-Year Term Notice of Proposed Rulemaking) published in
the Federal Register at 59 FR 63951 (December 12, 1994), and in the
Patent and Trademark Office Official Gazette at 1170 Off. Gaz. Pat.
Office 377 (January 3, 1995)), and will again propose to eliminate 37
CFR 1.60, as well as 37 CFR 1.62, in an impending rulemaking to
implement the Administration's regulatory reform initiative.
A continuation or divisional application may be filed under 35 U.S.C.
111(a) using the procedures set forth in 37 CFR 1.53(b)(1), by providing
a copy of the prior application, including a copy of the oath or
declaration in such prior application, as filed. The patent statutes and
rules of practice do not require that an oath or declaration include a
recent date of execution, and the Examining Corps has been directed not
to object to an oath or declaration as lacking either a recent date of
execution or any date of execution. This change in examining practice
will appear in the next revision of the MPEP. As is currently the
situation under 37 CFR 1.60 and 1.62, the applicant's duty of candor and
good faith including compliance with the duty of disclosure requirements
of 1.56 is continuous and applies to the continuation or divisional
application, notwithstanding the lack of a newly executed oath or
declaration.
37 CFR 1.60(b)(4) and 1.62(a) currently permit the filing of a
continuation or divisional application by less than all of the inventors
named in a prior application without a newly executed oath or
declaration. The oath or declaration in an application filed under 37
CFR 1.53(b), however, must identify the inventorship of such
application. Thus, unless it is necessary to file a continuation or
divisional application under 37 CFR 1.60 to name less than all of the
inventors named in a prior application, applicants are encouraged to
file continuing applications under 37 CFR 1.53(b) (i.e., omit any
reference to 37 CFR 1.60 in the application papers) to avoid an
inadvertent failure to comply with all of the requirements of 37 CFR
1.60.
An application under 37 CFR 1.62 uses the content of the prior
application, and is itself only a request for an application under 37
CFR 1.62. As such, there is no concern that an application under 37 CFR
1.62 will be filed without all the pages of the specification or without
all of the figures of the drawings.
Comment (4): One comment questioned whether a filing date would be
accorded if the name of an inventor were omitted.
Response: 37 CFR 1.41 and 1.53 currently require that an application be
filed in the name of the actual inventor or inventors, and this notice
does not involve changes to the rules of practice. The PTO will propose
to eliminate this requirement in 37 CFR 1.41 and 1.53 in the rulemaking
to implement the Administration's regulatory reform initiative.
Comment (5): One comment suggested that the notices be mailed out as
soon as possible to avoid a loss of rights for those applicants who
require completion or refiling of the application. Another comment
suggested that the decision as to whether an application is "incomplete"
should be made by the Examining Corps, rather than on a formalistic
basis by the Initial Application Examination Division.
Response: The efficient pre-examination processing of applications is in
the mutual interest of the PTO and applicants. The PTO is currently in
the process of modifying its pre-examination processing procedures to
avoid any unnecessary delay. This new procedure will not impact the
pre-examination processing of applications, in that the Initial
Application Examination Division will mail a "Notice of Incomplete
Application," "Notice of Omitted Items," and "Notice to File Missing
Parts" under this new procedure at the time the "Notice of Incomplete
Application" and "Notice to File Missing Parts" are currently mailed.
The adopted procedure replaces formalistic procedures with procedures
based upon the requirements for a filing date as set forth in 35 U.S.C.
111, 112, and 113. Filing date issues are ultimately decided by the
Office of Petitions in the Office of the Deputy Assistant Commissioner
for Patent Policy and Projects (MPEP 1002.02(b)(35)) on the basis of
whether and when the application meets the requirements for a filing
date as set forth in 35 U.S.C. 111, 112, and 113, and not on the basis
of who made the initial decision not to accord a filing date to the
application.
It should be recognized that there is tension between the comments
objecting to any review of the entitlement of an application to a filing
date by the Initial Application Examination Division (arguing that this
issue should be considered only by the Examining Corps) and the desire
for speedy notification to the applicant that a portion of the
application appears to have been omitted. To defer all review of the
entitlement of an application to a filing date until the application is
picked-up for examination would cause a significant delay in any such
notification to the applicant.
Comment (6): One comment noted that 35 U.S.C. 111(b) does not require a
claim for a provisional application. Several comments suggested that the
PTO automatically treat any nonprovisional application filed without at
least one claim as a provisional application, if such application is
otherwise entitled to a filing date as a provisional application.
Response: A provisional application does not require a claim to be
entitled to a filing date. As discussed supra, 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(b)(2)(ii) to convert
such application into an application under 35 U.S.C. 111(b). The PTO
does not consider it appropriate to "automatically" consider an
application filed under 35 U.S.C. 111(a) without a claim to be an
application under 35 U.S.C. 111(b) (a provisional application), since
the applicant may not desire an application under 35 U.S.C. 111(b), and
may desire to file a claim to obtain an application filing date as of
the date of submission of such claim.
Comment (7): One comment suggested that the MPEP should clearly indicate
that applications filed without all the pages of specification or all
the figures of drawings described in the specification cannot
automatically be treated as defective under 35 U.S.C. 112, but must be
considered for compliance with 35 U.S.C. 112 by the subject matter that
is present in the application papers.
Response: In an effort to improve the examination of applications,
chapter 2100 of the MPEP has been revised to set forth specific
guidelines for rejections under 35 U.S.C. 101, 102, 103, and 112. MPEP
2161 et seq. set forth the guidelines for rejections under 35 U.S.C.
112, first and second paragraphs, and do not authorize a rejection under
35 U.S.C. 112 based merely upon the fact that pages of specification or
figures of drawing were omitted.
Comment (8): One comment questioned whether the proposed procedure for
the treatment of applications filed without all the pages of
specification or all the figures of drawings described in the
specification is applicable to provisional applications, noting that 35
U.S.C. 111(b) provides that a claim is not required in a provisional
application.
Response: The adopted procedure applies to applications (both
provisional and nonprovisional) filed under 37 CFR 1.53. The procedure
recognizes that 35 U.S.C. 111(b) does not require a claim in a
provisional application.
Comment (9): One comment suggested that the two-month period for taking
action would be unfair in instances in which the PTO prepares and enters
the notice into the Patent Application Locating and Monitoring (PALM)
system but fails to mail the notice or mails the notice to an incorrect
correspondence address.
Response: The "Notice of Omitted Items" is not an action within the
meaning of 35 U.S.C. 133 to which a response is required to avoid
abandonment. An applicant simply has the opportunity to file a petition,
but need not take action, in response to a "Notice of Omitted Items."
Thus, the timeliness of any such petition is governed by 37 CFR
1.181(f). 37 CFR 1.181(f) provides that any petition not filed within
two months from the action complained of may be dismissed as untimely.
Establishing prior receipt in the PTO of the page(s) or drawing(s) at
issue or submitting the omitted page(s) or drawing(s) and accepting the
date of such submission as the application filing date would result in
an addition to the papers constituting the original disclosure of the
application, and submitting the omitted page(s) or drawing(s) and
accepting the date of such submission as the application filing date
would result in a change in application filing date. As a change in
either the original disclosure or filing date of an application would
interfere with the examination of the application for compliance with 35
U.S.C. 102, 103, and 112, the PTO will not forward an application in
which a "Notice of Omitted Items" has been mailed for examination until
it is apparent that the applicant has not responded to the "Notice of
Omitted Items." Thus, a nonprovisional application will not be processed
for examination, and the examination of the application will be delayed,
until the expiration of two months from the mailing date of "Notice of
Omitted Items." The two-month period set forth in 37 CFR 1.181(f) is
considered an appropriate balance between providing an applicant
sufficient time to take action in response to a "Notice of Omitted
Items" and avoiding unnecessary delays in the examination of the
application, which would be undesirable in view of 35 U.S.C. 154 as
amended by Public Law 103-465. While an applicant willing to accept a
nonprovisional application as deposited in the PTO need not respond to
the "Notice of Omitted Items," the filing of an express communication to
that effect would permit the PTO to proceed with the processing of the
application for examination, and, as such, may reduce the delay in the
examination of the application.
While a "Notice of Omitted Items" is not an action within the meaning
of 35 U.S.C. 133, the principles regarding nonreceipt or delayed receipt
of a "Notice of Omitted Items," due either to a failure on the part of
the PTO to properly mail such notice or a failure on the part of the
U.S. Postal Service to deliver such notice to the correspondence address
in a timely manner, are applicable to the nonreceipt or delayed receipt
of a "Notice of Omitted Items." Applicants are directed to the Notice
entitled "Withdrawing the Holding of Abandonment When Office Actions Are
Not Received," published in the PTO Official Gazette at 1156 Off. Gaz.
Pat. Office 53 (November 16, 1993), for the evidence necessary to
establish nonreceipt of a "Notice of Omitted Items," and the Notice
entitled ""Procedures For Restarting Response Periods," published in the
PTO Official Gazette at 1160 Off. Gaz. Pat. Office 14 (March 1, 1994),
for the evidence necessary to establish delayed receipt of a "Notice of
Omitted Items."
Comment (10): One comment suggested that while the proposed procedure is
an improvement, it still conflicts with 35 U.S.C. 112 and 113. The
comment specifically argues that the sufficiency of an application is a
matter for determination by an examiner skilled in the subject matter of
the application, in that Congress did not intend that the sufficiency of
an application be determined by the Initial Patent Examination Division.
Response: The adopted procedure will accord a filing date to any
application that contains something that can be construed as a written
description, any necessary drawing, and, in a nonprovisional
application, at least one claim. This procedure is consistent with the
requirements for a filing date as set forth in 35 U.S.C. 111, 112, and
113. 35 U.S.C. 113, second sentence, contemplates that drawings may be
filed after the filing date of an application. 35 U.S.C. 113, however,
provides that an "applicant shall furnish a drawing where necessary for
the understanding of the subject matter sought to be patented," and 35
U.S.C. 111(a)(4) and 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." As such, the PTO has the
statutory authority, and responsibility, to determine whether a drawing
is necessary under 35 U.S.C. 113 in an application filed without
drawings prior to according a filing date to that application.
There is nothing in 35 U.S.C. 111, 112, or 113 that limits the
authority of the Commissioner to delegate the determination of whether
or when any application meets the requirements for a filing date as set
forth in 35 U.S.C. 111, 112, and 113. In any event, filing date issues
are, as discussed supra, ultimately decided by Office of the Deputy
Assistant Commissioner for Patent Policy and Projects on the basis of
whether and when the application meets the requirements for a filing
date as set forth in 35 U.S.C. 111, 112, and 113, and not on the basis
of who made the initial decision not to accord a filing date to the
application.
Comment (11): One comment suggested that the proposed procedure be
adopted by rulemaking. Another comment suggested that the proposed
procedure either be adopted by rulemaking or clearly set forth in the
MPEP.
Response: 37 CFR 1.53(b)(1) provides that the "filing date of an
application for patent filed under this section, except for a
provisional application, is the date on which: a specification
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 in the name of the actual inventor or
inventors as required by 1.41." 37 CFR 1.53(b)(2) provides that the
"filing date of a provisional application is the date on which: a
specification as prescribed by 35 U.S.C. 112, first paragraph; and any
drawing required by 1.81(a), are filed in the Patent and Trademark
Office in the name of the actual inventor or inventors as required by
1.41." Thus, no change to the rules of practice is necessary to adopt
the procedure set forth in this notice.
It should be noted that the MPEP 608.01 sets forth the former
procedure for treating an application filed without all of the pages of
specification or filed under 35 U.S.C. 111(a) without at least one
claim. Likewise, MPEP 608.02 sets forth the former procedure for
treating an application filed without drawings or all of the figures of
drawings.
The next revision of the MPEP will incorporate the change in
procedure set forth in this notice.
June 5, 1996 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1188 OG 48]