601.01(a) Nonprovisional Applications Filed Under 35 U.S.C. 111(a) [R-07.2022]

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 their 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 the USPTO patent electronic filing system. 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

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 § 211et seq. for information regarding domestic benefit claims and MPEP § 213et 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 https://wipolex.wipo.int/en/text/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

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

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-07.2022]

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 “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 the 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 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 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-07.2022]

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 “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 the 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.”

601.03(a) Change of Correspondence Address in Applications Filed On or After September 16, 2012 [R-01.2024]

[Editor Note: See MPEP § 601.03(b) for change of correspondence address in applications filed before September 16, 2012.]

37 CFR 1.33(a) provides that the application must specify a correspondence address to which the Office will send notice, letters, and other communications relating to an application. The correspondence address must either be in an application data sheet (37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing.

Applicants should provide clear instructions regarding the correspondence address. If more than one correspondence address is specified, whether in a single paper or in multiple papers, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. If an applicant provides multiple correspondence addresses in a single paper (e.g., providing both a typed correspondence address and a Customer Number in a single paper) or multiple papers (e.g., an oath or declaration, a transmittal letter, and a preliminary amendment that each includes a different correspondence address), and the Office does not select the correspondence address actually desired by applicant, the Office will not remail papers to the desired address. See MPEP § 707.13 for remailing of returned Office correspondence. Note that the hierarchy provided in 37 CFR 1.76(d) for inconsistencies between an application data sheet and other documents governs. Accordingly, if the ADS includes a typed correspondence address, and the declaration submitted at the same time gives a different address (e.g., the address associated with a Customer Number) as the correspondence address, the Office will use the typed correspondence address as included on the ADS. After the correspondence address has been entered according to the above procedure, it will only be changed pursuant to 37 CFR 1.33(a).

For applications submitted via the USPTO patent electronic filing system, although an electronic acknowledgment receipt will be sent to the submitter, a correspondence address must still be set forth in either an application data sheet (37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing.

The submission of a daytime telephone number of the party to whom correspondence is to be addressed is requested pursuant to 37 CFR 1.33(a). While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number is useful in initiating contact that could later be reduced to writing. Any party who may change the correspondence address may also change the telephone number.

37 CFR 1.33(a) specifies that the correspondence address may be changed by the parties set forth in 37 CFR 1.33(b)(1) (a patent practitioner of record) or 37 CFR 1.33(b)(3) (the applicant under 37 CFR 1.42). 37 CFR 1.33(a) also provides that prior to the appointment of any power of attorney under 37 CFR 1.32(b), the correspondence address may be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of 37 CFR 1.34.

Prior to the appointment of any power of attorney, if a patent practitioner (i.e., registered attorney or agent) filed the application, any other patent practitioners named in the transmittal papers may also change the correspondence address. A patent practitioner named in a letterhead would not be considered as being named in the transmittal papers for purposes of changing the correspondence address. A clear identification of the individual as a representative is required. If an application is filed by a company to whom the invention has been assigned or to whom there is an obligation to assign the invention, a person (other than a patent practitioner) who has the authority to act on behalf of the company may not change the correspondence address, as all papers signed on behalf of a juristic entity must be signed by a patent practitioner.

The correspondence address will not be changed by filing a paper (such as an application data sheet) which includes a correspondence address which is different from the correspondence address of record if the paper does not clearly identify that an address change is being made.

37 CFR 1.33(e) provides that a change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See 37 CFR 11.11.

37 CFR 1.33(f) provides that where application papers (e.g., the inventor’s oath or declaration) from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. If not submitted, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application and correspondence may be mailed to a previously designated correspondence address.

37 CFR 1.33(g) provides that a practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner. 37 CFR 1.33(g) provides a means for practitioners acting in a representative capacity in an application to effect a change in correspondence address after the patent has granted but does not provide authority to a practitioner acting under 37 CFR 1.34 to change the correspondence address in an application. See 37 CFR 1.33(a).

601.03(b) Change of Correspondence Address in Applications Filed Before September 16, 2012 [R-10.2019]

[Editor Note: See MPEP § 601.03(a) for change of correspondence address in applications filed on or after September 16, 2012.]

Pre-AIA 37 CFR 1.33(a) provides that the application must specify a correspondence address to which the Office will send notice, letters, and other communications relating to an application. The correspondence address must either be in an application data sheet (pre-AIA 37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. Additionally, applicants will often specify the correspondence address in more than one paper that is filed with an application, and the address given in the different places sometimes conflicts. Where the applicant specifically directs the Office to use non-matching correspondence addresses in more than one paper, priority will be accorded to the correspondence address specified in the following order: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (D) power of attorney. Accordingly, if the ADS includes a typed correspondence address, and the declaration gives a different address (i.e., the address associated with a Customer Number) as the correspondence address, the Office will use the typed correspondence address as included on the ADS. In the experience of the Office, the ADS is the most recently created document and tends to have the most current address. After the correspondence address has been entered according to the above procedure, it will only be changed pursuant to pre-AIA 37 CFR 1.33(a)(1).

The submission of a daytime telephone number of the party to whom correspondence is to be addressed is requested pursuant to pre-AIA 37 CFR 1.33(a). While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number is useful in initiating contact that could later be reduced to writing. Any party who may change the correspondence address may also change the telephone number.

Pre-AIA 37 CFR 1.33(a)(1) provides that the party filing the application and setting forth a correspondence address may later change the correspondence address provided that an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors has not been filed. If a patent practitioner (i.e., registered attorney or agent) filed the application, any other patent practitioners named in the transmittal papers may also change the correspondence address. A patent practitioner named in a letterhead would not be considered as being named in the transmittal papers for purposes of changing the correspondence address. A clear identification of the individual as a representative is required. If an application is filed by a company to whom the invention has been assigned or to whom there is an obligation to assign the invention, a person who has the authority to act on behalf of the company may change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address pursuant to pre-AIA 37 CFR 1.33(a)(1). The filing of an executed oath or declaration that does not include a correspondence address does not affect any correspondence address previously established on filing of the application, or changed pursuant to pre-AIA 37 CFR 1.33(a)(1).

Where a correspondence address has been established on filing of the application or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors), that correspondence address remains in effect upon filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 and can only be subsequently changed pursuant to pre-AIA 37 CFR 1.33(a)(2). Under pre-AIA 37 CFR 1.33(a)(2), where an executed oath or declaration under pre-AIA 37 CFR 1.63 has been filed by any of the inventors, the correspondence address may be changed by (A) a patent practitioner of record, (B) an assignee as provided for under pre-AIA 37 CFR 3.71(b), or (C) all of the applicants (pre-AIA 37 CFR 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with pre-AIA 37 CFR 3.71. See pre-AIA 37 CFR 1.33(a)(2).

Special care should be taken in continuation or divisional applications to ensure that any change of correspondence address in a prior application is reflected in the continuation or divisional application. For example, where a copy of the oath or declaration from the prior application is submitted for a continuation or divisional application filed under pre-AIA 37 CFR 1.53(b) and the copy of the oath or declaration from the prior application designates an old correspondence address, the Office may not recognize, in the continuation or divisional application, the change of correspondence address made during the prosecution of the prior application. Applicant is required to identify the change of correspondence address in the continuation or divisional application to ensure that communications from the Office are mailed to the current correspondence address. See pre-AIA 37 CFR 1.63(d)(4).

601.05(a) Application Data Sheet (ADS) -- Application Filed On or After September 16, 2012 [R-01.2024]

[Editor Note: See MPEP § 601.05(b) for a discussion of the requirements of an ADS for applications filed before September 16, 2012. 37 CFR 1.76(b)(3), directed to reference filing under 37 CFR 1.57(a), is applicable only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013. For 37 CFR 1.76(b)(3) applicable to applications filed on or after September 16, 2012 and before December 18, 2013, see 37 CFR 1.76 (2012-09-16 thru 2013-12-17); for applications filed prior to September 16, 2012, see pre-AIA 37 CFR 1.76 as reproduced in MPEP § 601.05(b).]

37 CFR 1.76(a) provides that an application data sheet may be submitted in a provisional application under 35 U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), a nonprovisional international design application, or a national stage application under 35 U.S.C. 371. However, 37 CFR 1.76(a) also provides that an application data sheet must be submitted when required by 37 CFR 1.55 and 1.78 to claim priority to, or the benefit of, a prior-filed application under 35 U.S.C. 119, 120, 121, 365, or 386 in accordance with 37 CFR 1.55 and 1.78. An application data sheet must also be submitted in accordance with 37 CFR 1.46 when an application is filed by an assignee, a person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows a sufficient proprietary interest in the matter under 35 U.S.C. 118.

I. BIBLIOGRAPHIC INFORMATION

37 CFR 1.76(a) requires that any ADS contain the seven headings listed in 37 CFR 1.76(b) with any appropriate data for each section heading (except as provided in 37 CFR 1.76(c)(2) for an ADS providing corrected or updated information). The ADS must be titled “Application Data Sheet” and any heading that does not contain any corresponding data will be interpreted by the Office to mean that there is no corresponding data for that heading anywhere in the application. Bibliographic data under 37 CFR 1.76(b) includes: (1) inventor information; (2) correspondence information; (3) application information; (4) representative information; (5) domestic benefit information; (6) foreign priority information; and (7) applicant information.

Inventor information includes the legal name, residence, and mailing address of each inventor (37 CFR 1.41(b)). Whether or not the inventor is the applicant, the Office will to continue to use the inventor’s name for application and patent identification purposes. Inventor names tend to provide a more distinct identification than assignee name, for example. The “mailing address” is the address where the inventor customarily receives mail.

Correspondence information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see 37 CFR 1.33(a)).

As set forth in 37 CFR 1.76(b)(3), application information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). The Office now uses the drawing figure suggested by the applicant for the front page of the patent application publication when the suggestion is included on a compliant ADS timely filed before the process of publishing the application begins. However, the Office continues not to be bound by the applicant’s figure suggestion, and failure to use the suggested figure for the first page of the patent application publication will not be considered a material mistake for purposes of corrected publication under 37 CFR 1.221(b). See Applicant-Suggested Drawing Figure in the Publication of Patent Applications, 1514 OG 107 (September 5, 2023).

Application information includes whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to 37 CFR 5.2(c). 37 CFR 1.76(b)(3) also requests that the plant patent applicant state the Latin name and the variety denomination for the plant claimed. The Latin name of the genus and species and the variety denomination of the claimed plant are usually included in the specification of the plant patent application, and will be included in any plant patent or plant patent application publication if included in an application data sheet or patent application. The Office, pursuant to the “International Convention for the Protection of New Varieties of Plants” (generally known by its French acronym as the UPOV convention), has been asked to compile a database of the plants patented and the database must include the Latin name and the variety denomination of each patented plant. Having this information in an ADS will make the process of compiling this database more efficient.

For applications filed on or after December 18, 2013, when information concerning the previously filed application is required under 37 CFR 1.57(a), application information also includes the reference to the previously filed application, indicating that the specification and any drawings of the application 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. Effective December 18, 2013, 37 CFR 1.57 and 37 CFR 1.76(b)(3) were 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 to a previously filed application, made in the English language in an ADS in accordance with 37 CFR 1.76 upon the filing of an application under 35 U.S.C. 111(a) 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, 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, 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 are 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. See MPEP § 601.01(a), subsection III, for more information on reference filing. The reference to a previously filed application in an ADS under 37 CFR 1.57(a) is not sufficient to establish a priority or benefit claim to that previously filed application. Applicants must still provide priority and/or benefit information under the domestic benefit information heading or foreign priority information heading, as appropriate, in the application data sheet even if utilizing the reference filing provisions of 35 U.S.C. 111(c) and 37 CFR 1.57(a).

Representative information includes the registration number of each practitioner appointed with a power of attorney in the application (preferably by reference to a customer number). 37 CFR 1.76(b)(4) states that providing this information in the application data sheet does not constitute a power of attorney in the application (see 37 CFR 1.32). This is because the Office does not expect the application data sheet to be executed by the party (applicant or assignee) who may appoint a power of attorney in the application.

Domestic benefit information includes the application number (series code and serial number), the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). The application data sheet, if provided, is considered part of the application. 37 CFR 1.76(b)(5) states that providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and 37 CFR 1.78. A specific reference to the earlier application(s) is no longer required to be made in the specification, such as in the first sentence(s) thereof. The continuity data for the patent front page will be taken from the application data sheet. No continuity data will be included in the first sentence(s) of the specification, unless applicant separately provides it there. 37 CFR 1.76(b)(5) does not apply to provisional applications.

Foreign priority information includes the application number, country (or intellectual property authority), and filing date of each foreign application for which priority is claimed. 37 CFR 1.76(b)(6) states that providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55. 37 CFR 1.76(b)(6) does not apply to provisional applications.

37 CFR 1.76(b)(7) provides that applicant information includes the name (either natural person or juristic entity) and address of the applicant under 37 CFR 1.43 or 1.46. Thus, 37 CFR 1.76(b)(7) provides for the situation in which the applicant is a person other than the inventor under 37 CFR 1.43 (legal representative) or 37 CFR 1.46 (assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter). This heading should be left blank if the applicant is the inventor or is the remaining joint inventor or inventors (37 CFR 1.45).

37 CFR 1.46(b) provides that if an application is filed by the assignee, a person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter, the application must contain an application data sheet under 37 CFR 1.76 specifying the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter in the applicant information section. 37 CFR 1.46(b) also requires if an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under 37 CFR 1.46(a), the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3). 37 CFR 1.46(c)(1) provides that any request to correct or update the name of the applicant must include an application data sheet under 37 CFR 1.76 specifying the corrected or updated name of the applicant in the applicant information section in accordance with 37 CFR 1.76(c)(2). 37 CFR 1.46(c)(1) also provides that a change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application. 37 CFR 1.46(c)(2) provides that any request to change the applicant must include an application data sheet under 37 CFR 1.76 specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. The application data sheet must comply with the provisions for correcting and updating an application data sheet set forth in 37 CFR 1.76(c). 37 CFR 1.76(b)(7) explains that providing assignment information in the application data sheet does not substitute for compliance with any requirement of 37 CFR part 3 to have an assignment recorded by the Office. Assignment information must be recorded to have legal effect.

II. CORRECTING AND UPDATING AN ADS OR INFORMATION OTHERWISE OF RECORD

37 CFR 1.76(c) provides the procedure for correcting and updating not only an application data sheet (ADS), but also information otherwise of record (e.g., information provided on the most recent filing receipt). Any ADS filed after the filing date of the application or the submission of a first ADS is considered a corrected (or updated) ADS even if an ADS was not previously submitted. Such a corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed, except that identification of information being changed is not required for an ADS included with an initial submission under 35 U.S.C. 371. In general, the identification of the information being changed should be made relative to the most recent filing receipt. If appropriate, use of the corrected Web-based ADS is recommended because it will pre-populate with information of record. Accordingly, applicants can type in the desired changes in the corrected Web-based ADS, and the system will create a PDF version with the appropriate strike-through and underlining. A corrected Web-based ADS, however, is not permitted in international applications, national stage applications under 35 U.S.C. 371, provisional applications, plant applications, reexamination proceedings, and supplemental examinations under 35 U.S.C. 257. For more information, see the “Quick Start Guide for Corrected Web-based Application Data Sheet (Corrected Web ADS)” available at www.uspto.gov/patents/apply/patent-center.

A corrected ADS may be submitted until payment of the issue fee to either correct or update information in a previously submitted application data sheet, or in an inventor’s oath or declaration under 37 CFR 1.63, 1.64 , or 1.67, or otherwise of record. See 37 CFR 1.76(c)(1). Note, however, a corrected ADS filed after final rejection or allowance is not entered as a matter of right. See 37 CFR 1.116 or 1.312, respectively. For a discussion of amendments and other replies after final rejection or action, see MPEP § 714.12 and § 714.13. For a discussion of amendments filed after notice of allowance, see MPEP § 714.16. In addition, inventorship changes must comply with the requirements of 37 CFR 1.48, foreign priority and domestic benefit information changes must comply with 37 CFR 1.55 and 1.78, and correspondence address changes must comply with 37 CFR 1.33(a). Note also that any request to correct or update the name of the applicant, or change the applicant, must comply with 37 CFR 1.46(c).

A corrected ADS may include all of the section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading or only those sections (including the section headings) containing changed or updated information. See 37 CFR 1.76(c)(2).

A corrected ADS should be filed with a request for a corrected filing receipt unless accompanied by a request to take some other action, such as a request under 37 CFR 1.48, a request under 37 CFR 1.46(c), or the submission of a power of attorney. A corrected ADS accompanying a request to change the applicant under 37 CFR 1.46(c) must show the changes in applicant information relative to the applicant information on the most recent filing receipt, even if an ADS was not previously filed or an applicant was not previously identified in an ADS because the filing receipt identifies the applicant information of record. If no applicant was identified in the applicant information section of a properly signed ADS filed with the application, a corrected ADS identifying a new applicant with underlining does not need to show the deletion of the inventor-applicant(s) with strikethrough. A corrected ADS submitted to correct information provided in the inventor’s oath or declaration, such as residence information for an inventor, must show the original incorrect information with strike-through or brackets, and the new information with underlining, as if the incorrect information was submitted in an ADS filed with the application even though an ADS was not previously filed. If there are multiple inventors, all of the inventors must be listed in the “Inventor Information” section of the corrected ADS, even if the residence information is only being changed for one of the inventors.

If submitted during the time period for making a benefit or priority claim set forth in 37 CFR 1.78 or 1.55, a request for corrected filing receipt should be filed with a corrected ADS to correct domestic benefit or foreign priority claim information. A petition for an unintentionally delayed claim under 37 CFR 1.78(c) or(e) or 37 CFR 1.55(e) may be required if the domestic benefit or foreign priority claim is being submitted outside the time period for making a benefit or priority claim. Where the most recent filing receipt does not include a benefit claim or priority claim, either because a previously submitted ADS failed to comply with 37 CFR 1.78 or 1.55 or the claim was not previously included in an ADS, a corrected ADS submitted to add the benefit or priority claim must identify the addition of the benefit claim or priority claim with underlining relative to the most recent filing receipt (i.e., the entire benefit or priority claim must be underlined). For example, if an ADS included a benefit claim but the relationship between the instant application and the parent application was not provided, and the most recent filing receipt for the application shows no benefit claim, the entire benefit claim must be shown with underlining in the corrected ADS. In addition, if the ADS identified an incorrect benefit claim (e.g., “division of” instead of “continuation of”) and the most recent filing receipt included the incorrect benefit claim, the corrected ADS should identify the information being deleted (e.g., “division of”) with strike-through or brackets, and should identify the information being added (e.g., “continuation of”) with underlining. In the rare circumstance where a domestic benefit or a priority claim is being deleted, applicant must provide a corrected ADS identifying the deletion of the foreign priority claim with strike-through or brackets. Before deleting a domestic benefit claim or a foreign priority claim, applicant should consider the status of the application since an amendment or ADS filed after final rejection or allowance is not entered as a matter of right and must be filed in compliance with 37 CFR 1.116 or 1.312, respectively. Applicants are cautioned that new prior art may be available as a result of deleting the claim. Also, deleting a benefit or priority claim may be considered a showing that the applicant is intentionally waiving the benefit claim or priority claim to the prior application in the instant application. See MPEP § 211.02(a), subsection III.

III. TREATMENT OF INCONSISTENT INFORMATION

Resolution of inconsistent information supplied by both an application data sheet and other documents (e.g., the oath or declaration under 37 CFR 1.63, 1.64 , or 1.67) are addressed in 37 CFR 1.76(d).

37 CFR 1.76(d)(1) provides that the most recent submission will govern (control) with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor’s oath or declaration, except that: (1) the most recent application data sheet will govern with respect to foreign priority (37 CFR 1.55) or domestic benefit (37 CFR 1.78) claims; and (2) the naming of the inventorship is governed by 37 CFR 1.41 and changes to inventorship or the names of the inventors is governed by 37 CFR 1.48.

37 CFR 1.76(d)(2) provides that the information in the application data sheet will govern when the inconsistent information is supplied at the same time by a designation of correspondence address or the inventor’s oath or declaration. The information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.

If an ADS is inconsistent with the information provided in another document that was submitted at the same time or prior to the ADS submission, the ADS will control. This is because the application data sheet is intended to be the means by which applicant provides complete bibliographic information. In the small number of instances where another document has more accurate information than a concurrently supplied application data sheet (37 CFR 1.76(d)(2)), a corrected application data sheet should be submitted to conform the information in the ADS to the correct information as provided in the other document(s).

37 CFR 1.76(d)(3) provides that the Office will capture bibliographic information from the application data sheet. 37 CFR 1.76(d)(3) further provides that the Office will generally not review the inventor’s oath or declaration to determine if the bibliographic information contained therein is consistent with the bibliographic information provided in an application data sheet. 37 CFR 1.76(d)(3) further provides that incorrect bibliographic information contained in an application data sheet may be corrected as provided in 37 CFR 1.76(c)(1).

If an application is filed with an application data sheet improperly identifying inventors A, B and C and an executed 37 CFR 1.63 declaration correctly setting forth the inventorship as A and B, the Office will capture the inventorship as inventors A, B and C based on the information in the application data sheet, and include that information in the filing receipt. To correct the inventorship, applicant must submit a request to correct the inventorship pursuant to 37 CFR 1.48. See MPEP § 602.01(c)et seq.

If an application is filed with an application data sheet, the Office will capture the applicant information as identified in the application data sheet. To change the name of the applicant, a request in accordance with 37 CFR 1.46(c), and in compliance with 37 CFR 3.71 and 3.73, is required. See MPEP § 605.01, subsection II.

IV. ADDITIONAL INFORMATION

The application data sheet form PTO/AIA/14 provides a section where applicants can make a request not to publish the application or a request for early publication.

The application data sheet form PTO/AIA/14 provides a section where applicants can provide an Authorization to Permit Access to the Instant Application by Participating Offices. If the box in this section of the form is checked, the Office has the authority to provide access to the instant patent application to the participating offices in which a foreign application claiming priority to the instant patent application is filed.

The application data sheet form PTO/AIA/14 provides an assignee information section, which includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. The inclusion of this information in the application data sheet does not substitute for compliance with any requirement of 37 CFR part 3 to have an assignment recorded by the Office. Providing assignee information in the application data sheet is considered a request to include such information on the patent application publication, since there is no other reason for including such information in the application data sheet. Assignment information must be recorded to have legal effect. Assignees who are the applicant will appear on the patent application publication as the applicant and only need to separately provide assignee information in the assignee information section if identification as an assignee is also desired on the patent application publication.

37 CFR 1.76(e) provides that an application data sheet must be signed in compliance with 37 CFR 1.33(b). The rule further provides that an unsigned application data sheet will be treated only as a transmittal letter. Thus, an unsigned application data sheet will not be effective to provide the name of the inventor for any invention claimed in the application (37 CFR 1.41(b)), name as the applicant an assignee, obligated assignee, or a person who otherwise shows sufficient propriety interest in the application (37 CFR 1.46), make a claim to priority of a foreign application (37 CFR 1.55), or make a claim to the benefit of a prior-filed domestic application (37 CFR 1.78).

Effective December 18, 2013 for all applications no matter when filed, 37 CFR 1.76 was amended by adding new paragraphs (f) and (g) to permit the use of Patent Law Treaty Model International Forms as appropriate or the Patent Cooperation Treaty Request Form in lieu of an application data sheet under 37 CFR 1.76 to provide certain information. 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 such forms. Furthermore, if applicants want to postpone submission of the inventor’s oath or declaration until after the time period set to complete the application as provided in 37 CFR 1.53(f)(1) or (2), an ADS that provides the inventor information is required. Accordingly, the use of an ADS to supply application information is encouraged.

37 CFR 1.76(f) provides that: (1) The requirement in 37 CFR 1.55 or 37 CFR 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied by the presentation of such priority or benefit claim in the Patent Law Treaty Model International Request Form; (2) the requirement in 37 CFR 1.57(a) for a reference to the previously filed application in an application data sheet will be satisfied by the presentation of such reference to the previously filed application in the Patent Law Treaty Model International Request Form; and (3) the requirement in 37 CFR 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied by the presentation of the name of the applicant in the Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, as applicable.

37 CFR 1.76(g) provides that the requirement in 37 CFR 1.78 for the presentation of a benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied in a national stage application under 35 U.S.C. 371 by the presentation of such benefit claim in the Patent Cooperation Treaty Request Form contained in the international application or the presence of such benefit claim on the front page of the publication of the international application under PCT Article 21(2). 37 CFR 1.76(g) states ‘‘the Patent Cooperation Treaty Request Form contained in the international application’’ to make clear that the provision does not allow for that addition or correction of benefit claim (or any other) information during the national stage via the submission of a new Patent Cooperation Treaty Request Form. Applicants may add or correct benefit claim (or any other) information during the national stage via the submission of an application data sheet under 37 CFR 1.76 (assuming that the conditions and requirements for such addition or correction are satisfied). 37 CFR 1.76(g) provides for presence of such benefit claim on the front page of the publication of the international application under PCT Article 21(2) to account for replacement sheets of the Patent Cooperation Treaty Request Form that may not be forwarded to each national office but that are reflected in the International Bureau’s publication of the international application. 37 CFR 1.76(g) does not mention either the provisions in 37 CFR 1.55 for the presentation of a priority claim under 35 U.S.C. 119 or 365 in an application data sheet or the provisions in 37 CFR 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet with respect to a national stage application under 35 U.S.C. 371 as this information is taken from the WIPO records of the international application in a national stage application under 35 U.S.C. 371.

37 CFR 1.76(g) also provides that the requirement in 37 CFR 1.55 or 37 CFR 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet and the requirement in 37 CFR 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied in an application under 35 U.S.C. 111 by the presentation of such priority or benefit claim and presentation of the name of the applicant in a Patent Cooperation Treaty Request Form. 37 CFR 1.76(g) finally also provides that if a Patent Cooperation Treaty Request Form is submitted in an application under 35 U.S.C. 111, the Patent Cooperation Treaty Request Form must be accompanied by a clear indication that treatment of the application as an application under 35 U.S.C. 111 is desired.

601.05(b) Application Data Sheet (ADS) in Application Filed Before September 16, 2012 [R-01.2024]

[Editor Note: See MPEP § 601.05(a) for a discussion of the requirements of an ADS for applications filed on or after September 16, 2012.]

I. BIBLIOGRAPHIC INFORMATION

The naming of the inventors and the setting forth of the citizenship of each inventor must be provided in the oath or declaration under pre-AIA 37 CFR 1.63 (as required by pre-AIA 35 U.S.C. 115) even if this information is provided in the application data sheet.

Applicant information includes the name, residence, mailing address, and citizenship of each applicant ( pre-AIA 37 CFR 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. (If the applicant is not an inventor, this information also includes the applicant’s authority (pre-AIA 37 CFR 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor. The “mailing address” is the address where applicant customarily receives mail.

Correspondence information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see pre-AIA 37 CFR 1.33(a)).

Application information includes the title of the invention, a suggested classification by class and subclass, the Technology Center (TC) to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). Application information also includes whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to 37 CFR 5.2(c).

Although the submission of the information related to a suggested classification and TC may be provided for both provisional and nonprovisional applications filed before September 16, 2012, the Office no longer utilizes this information and will continue to follow its present procedures for classifying and assigning new applications. With regard to the suggested drawing figure, the Office now uses the drawing figure suggested by the applicant for the front page of the patent application publication when the suggestion is included on a compliant ADS timely filed before the process of publishing the application begins. However, the Office continues not to be bound by the applicant’s figure suggestion, and failure to use the suggested figure for the first page of the patent application publication will not be considered a material mistake for purposes of corrected publication under 37 CFR 1.221(b). See Applicant-Suggested Drawing Figure in the Publication of Patent Applications, 1514 OG 107 (September 5, 2023).

Pre-AIA 37 CFR 1.76(b)(3) also requests that the plant patent applicant state the Latin name and the variety denomination for the plant claimed. The Latin name and the variety denomination of the claimed plant are usually included in the specification of the plant patent application, and will be included in any plant patent or plant patent application publication if included in an application data sheet or patent application. The Office, pursuant to the “International Convention for the Protection of New Varieties of Plants” (generally known by its French acronym as the UPOV convention), has been asked to compile a database of the plants patented and the database must include the Latin name and the variety denomination of each patented plant. Having this information in an ADS will make the process of compiling this database more efficient.

Representative information includes the registration number appointed with a power of attorney in the application (preferably by reference to a customer number). Pre-AIA 37 CFR 1.76(b)(4) states that providing this information in the application data sheet does not constitute a power of attorney in the application (see  pre-AIA 37 CFR 1.32). This is because the Office does not expect the application data sheet to be executed by the party (applicant or assignee) who may appoint a power of attorney in the application.

Domestic priority information includes the application number (series code and serial number), the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Pre-AIA 37 CFR 1.76(b)(5) states that providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C.119(e) or 120. Since the application data sheet, if provided, is considered part of the application, the specific reference to an earlier filed provisional or nonprovisional application in the application data sheet satisfies the “specific reference” requirement of 35 U.S.C.119(e)(1) or 120, and it also complies with 37 CFR 1.78(a)(3) or (d)(3). Thus, a specific reference does not otherwise have to be made in the specification, such as in the first sentence(s) of the specification. If continuity data is included in an application data sheet, but not in the first sentence(s) of the specification, the continuity data for the patent front page will be taken from the application data sheet. No continuity data will be included in the first sentence(s) of the specification if applicant does not provide it there. Pre-AIA 37 CFR 1.76(b)(5) does not apply to provisional applications.

Foreign priority information includes the application number, country, and filing date of each foreign application for which priority is claimed, as well as any foreign application having a filing date before that of the application for which priority is claimed. Pre-AIA 37 CFR 1.76(b)(6) states that providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55. The patent statute, 35 U.S.C. 119(b), does not require that a claim to the benefit of a prior foreign application take any particular form. Pre-AIA 37 CFR 1.76(b)(6) does not apply to provisional applications.

Pre-AIA 37 CFR 1.76(b)(7) provides that the assignee information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. The inclusion of this information in the application data sheet does not substitute for compliance with any requirement of 37 CFR part 3 to have an assignment recorded by the Office. Providing assignee information in the application data sheet is considered a request to include such information on the patent application publication, since there is no other reason for including such information in the application data sheet. Assignment information must be recorded to have legal effect.

Supplemental application data sheets may be subsequently supplied prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under pre-AIA 37 CFR 1.63 or 1.67. See pre-AIA 37 CFR 1.76(c)(1). A supplemental data sheet cannot be used to correct the following: (1) inventorship changes (37 CFR 1.48); (2) correspondence changes (pre-AIA 37 CFR 1.33(a)); and (3) citizenship changes (pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67). Supplemental application data sheets must be titled “Supplemental Application Data Sheet” and also contain all of the seven section headings listed in 37 CFR 1.76(b) with all appropriate data for each heading. Supplemental application data sheets identifying only the information that is being changed (added, deleted, or modified) in the supplemental ADS are not acceptable. A supplemental ADS containing only new or changed information is likely to confuse the record, create unnecessary work for the Office, and does not comply with pre-AIA 37 CFR 1.76. If no ADS was originally filed, but applicant wants to submit an ADS to correct, modify, or augment the original application data, the ADS, even though it is the first-filed ADS, must be titled “Supplemental Application Data Sheet.”

II. SUPPLEMENTAL ADS SUBMISSIONS

For applications filed before September 16, 2012, when submitting an application data sheet after the initial filing of the application to correct, modify, or augment the application data sheet that was submitted with the application papers on filing, the following applies:

• (A) the supplemental application data sheet must be titled "Supplemental Application Data Sheet" (while the title "Supplemental Application Data Sheet" is preferred, "Supp. ADS" , "Supplemental ADS" or other variations thereof will be accepted);
• (B) the supplemental application data sheet must be a full replacement copy of the original ADS, if any, with each of the seven section headings listed in pre-AIA 37 CFR 1.76(b), and with all appropriate data for the section heading;
• (C) the supplemental application data sheet must be submitted with all changes indicated, preferably with insertions or additions indicated by underlining, and deletions, with or without replacement data, indicated by strike-through or brackets; and
• (D) the supplemental application data sheet must be signed as it is a paper and/or amendment filed in the application (see pre-AIA 37 CFR 1.33(b) and 37 CFR 11.18).

Any ADS submitted after the filing date of the application is a supplemental ADS, regardless of whether an original ADS was submitted with the application papers on filing. A supplemental ADS that is being used to correct data shown in an oath or declaration, such as foreign priority or residence information for an inventor, would show the original incorrect information with strike-through or brackets, and the new information with underlining, as if an ADS had originally been used to submit the information. For example, if the original oath or declaration included a foreign priority claim, in order to delete the foreign priority claim, applicant should provide a supplemental ADS showing the foreign priority claim with strike-through or brackets to ensure that the patent will reflect such change.

III. TREATMENT OF INCONSISTENT INFORMATION

Resolution of inconsistent information supplied by both an application data sheet and other documents (e.g., the oath or declaration under pre-AIA 37 CFR 1.63 , or pre-AIA 37 CFR 1.67) are addressed in pre-AIA 37 CFR 1.76 (d). If an ADS is inconsistent with the information provided in another document that was submitted at the same time or previous to the ADS submission, the ADS will control. Pre-AIA 37 CFR 1.76(d)(1) provides that the latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by an oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67, except as provided by pre-AIA 37 CFR 1.76(d)(3). This is because the application data sheet is intended as the means by which applicants will provide most information to the Office. In the small number of instances where another document has more accurate information than a concurrently supplied application data sheet (37 CFR 1.76(d)(2)), a supplemental application data sheet should be submitted to conform the information presented by the supplemental application data sheet with the correct information in the other document(s) (pre-AIA 37 CFR 1.76(d)(1)). The information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.

If an application is filed with an application data sheet improperly identifying the residence of one of the inventors, inventor B, and an executed pre-AIA 37 CFR 1.63 declaration setting forth the correct but different residence of inventor B, the Office will capture the residence of inventor B found in the application data sheet as the residence of B, and include that information in the filing receipt. If applicant desires correction of the residence, applicant should submit a supplemental application data sheet under pre-AIA 37 CFR 1.76(c), with the name of inventor B and the corrected residence for inventor B.

Pursuant to pre-AIA 37 CFR 1.76(d)(3), the oath or declaration under pre-AIA 37 CFR 1.63 or pre-AIA 37 CFR 1.67 governs inconsistencies with the application data sheet in the naming of inventors and setting forth their citizenship. If different inventors are listed in the application data sheet than are named in the oath or declaration for the application, the inventors, named in the oath or declaration, are considered to be the inventors named in the patent application. See pre-AIA 37 CFR 1.76(d)(3). Any change in the inventorship set forth in the oath or declaration under pre-AIA 37 CFR 1.63 must be by way of a request under AIA 37 CFR 1.48(a) notwithstanding identification of the correct inventive entity in an application data sheet or supplemental application data sheet. Similarly, if the oath or declaration under pre-AIA 37 CFR 1.63 incorrectly sets forth the citizenship of one of the inventors, that inventor must submit a supplemental oath or declaration under pre-AIA 37 CFR 1.67 with the correct citizenship notwithstanding the correct identification of the citizenship in an application data sheet or supplemental application data sheet. If the spelling of the inventor’s name is incorrect, a request under 37 CFR 1.48(f) is required. See MPEP §§ 602.01(c)(2) and 602.08(b).

The Office will rely upon information supplied in the application data sheet over an oath or declaration to capture the data even where the type of information supplied (citizenship, inventorship) is governed by the oath or declaration according to statute (pre-AIA 35 U.S.C. 115) or other rule (pre-AIA 37 CFR 1.41(a)(1)). Where the oath or declaration under 37 CFR 1.63 or pre-AIA 37 CFR 1.67 contains the correct information regarding inventors or their citizenship and the application data sheet does not, even though the oath or declaration governs pursuant to pre-AIA 37 CFR 1.76(d)(3), the information in the application data sheet must be corrected by submission of a request for correction and a supplemental application data sheet. If the spelling of the inventor’s name is incorrect, a request under 37 CFR 1.48(f) is required. See MPEP §§ 602.01(c)(2) and 602.08(b).

If an application is filed with an application data sheet correctly setting forth the citizenship of inventor B, and an executed pre-AIA 37 CFR 1.63 declaration setting forth a different incorrect citizenship of inventor B, the Office will capture the citizenship of inventor B found in the application data sheet. Applicant, however, must submit a supplemental oath or declaration under pre-AIA 37 CFR 1.67 by inventor B setting forth the correct citizenship even though it appears correctly in the application data sheet. A supplemental application data sheet cannot be used to correct the citizenship error in the oath or declaration. If, however, the error is one of residence, no change would be required (pre-AIA 37 CFR 1.76(d)(2)).

IV. ADDITIONAL INFORMATION

As to the submission of class/subclass information in the application data sheet, the Office notes that there is a distinction between permitting applicants to aid in the identification of the appropriate Art Unit to examine the application and requiring the Office to always honor such identification/request, which could lead to misuse by some applicants of forum shopping. Even when an applicant’s identification of an Art Unit is appropriate, internal staffing/workload requirements may dictate that the application be handled by another Art Unit qualified to do so, particularly when the art or claims encompass the areas of expertise of more than one Art Unit.

If the applicant is not an inventor, the applicant information should also include the applicant’s authority to apply for the patent on behalf of the inventor (see pre-AIA 37 CFR 1.42, 1.43 and 1.47). For example, if the inventor is deceased or legally incapacitated, the applicant should include “Legal Representative” as the authority. Similarly, if a petition under pre-AIA 37 CFR 1.47(b) is filed, the applicant’s authority would be “Party in Interest under 35 U.S.C. 118.” If the application is filed by the Administrator of NASA, the applicant’s authority would be “Government Property Interest.”

The correspondence information may be indicated by reference to a Customer Number to which correspondence is to be directed.

Effective December 18, 2013 for all applications no matter when filed, 37 CFR 1.76 was amended by adding new paragraphs (f) and (g) to permit the use of Patent Law Treaty Model International Forms as appropriate or the Patent Cooperation Treaty Request Form in lieu of an application data sheet under 37 CFR 1.76. See MPEP § 601.05(a), subsection IV, for more information.