96-15049. Change in Procedure Relating to an Application Filing Date  

  • [Federal Register Volume 61, Number 115 (Thursday, June 13, 1996)]
    [Notices]
    [Pages 30040-30046]
    From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
    [FR Doc No: 96-15049]
    
    
    
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    DEPARTMENT OF COMMERCE
    Patent and Trademark Office
    [Docket No. 951019254-6136-02]
    RIN 0651-XX05
    
    
    Change in Procedure Relating to an Application Filing Date
    
    AGENCY: Patent and Trademark Office, Commerce.
    
    ACTION: Notice of change in procedure.
    
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    SUMMARY: The Patent and Trademark Office (PTO) is implementing a change 
    in procedure relating to the treatment of applications filed without 
    all the pages of the specification or without all of the figures of the 
    drawings. Under this new procedure, the PTO will accord a filing date 
    to any application that contains something that can be construed as a 
    written description, any necessary drawing, and, in a nonprovisional 
    application, at least one claim, regardless of whether the application 
    is filed without all the pages of the specification or without all of 
    the figures of the drawings. Applications filed without all the pages 
    of the specification or without all of the figures of the drawings will 
    be treated by mailing a notice indicating that the application has been 
    accorded a filing date, but is missing pages of the specification of 
    figures of drawings.
        The notice will indicate that failure to timely (37 CFR 1.181(f)) 
    file a petition under 37 CFR 1.53(c) of 1.182 in response to such 
    notice will result in the PTO treating the original application papers 
    (the original disclosure of the intention) as including only those 
    application papers present in the PTO on the date of deposit.
    
    EFFECTIVE DATE: July 22, 1996.
    
    FOR FURTHER INFORMATION CONTACT:
    Robert W. Bahr by telephone at (703) 305-9285, by facsimile at (703) 
    308-6916, or Jeffrey V. Nase by telephone at (703) 305-9285, or by mail 
    addressed to Box Comments--Patents, Assistant Commissioner for Patents, 
    Washington, D.C. 20231.
    
    SUPPLEMENTARY INFORMATION: The PTO is implementing a change in 
    procedure relating to the treatment of applications filed without all 
    the pages of the specification (Section 608.01 of the Manual of Patent 
    Examining Procedure (MPEP)) (e.g., with page numbering revealing that 
    page(s) are missing), or without all of the figures of the drawings 
    (MPEP 608.02) (e.g., without drawing figures that are mentioned in the 
    specification). The procedure set forth in this notice will be 
    incorporated into the next revision of the MPEP.
        The current treatment of applications that fail to identify the 
    names of the actual inventor(s) (e.g., an application naming the 
    inventorship only as ``Jane Doe et al.'') as required by 37 CFR 1.41(a) 
    and 1.53(b) is not affected by the adoption of the procedure set forth 
    in this notice.
        In a Notice entitled ``Proposed Changes in Procedures Relating to 
    an Application Filing Date'' (Filing Date Notice), published in the 
    Federal Register at 60 FR 56982-84 (November 13, 1995), and in the PTO 
    Official Gazette at 1181 Off. Gaz. Pat. Office  12-13 (December 5, 
    1995), the PTO proposed a change in procedure relating to the treatment 
    of applications filed without all the pages of the specification or 
    without all of the figures of the drawings. In view of the comments 
    received in response to the Filing Date Notice, the PTO is adopting the 
    proposed change.
        The adopted procedure for the treatment of applications filed 
    without all the pages of the specification or without all of the 
    figures of the drawings is set forth below.
    
    Applications Filed Without All Pages of Specification
    
        The Initial Application Examination Division reviews application 
    papers to determine whether all of the pages of the specification are 
    present in the application. If the application is filed without all of 
    the page(s) of the specification, but containing something that can be 
    construed as a written description, at least one drawing figure, if 
    necessary under 35 U.S.C. 113, the names of all the inventors, and, in 
    a nonprovisional application, at least one claim, the Initial 
    Application Examination Division will mail a ``Notice of Omitted 
    Items'' indicating that the application papers so deposited have been 
    accorded a filing date, but are lacking some page(s) of the 
    specification.
        The mailing of a ``Notice of Omitted Items'' will permit the 
    applicant to either: (1) Promptly establish prior receipt in the PTO of 
    the page(s) at issue (generally by way of a date-stamped postcard 
    receipt (MPEP 503)), or (2) promptly submit the omitted page(s) in a 
    nonprovisonal application and accept the date of such submission as the 
    application filing date. An applicant asserting that the page(s) was in 
    fact deposited in the PTO with the application papers must file a 
    petition under 37 CFR 1.53(c) (and the petition fee under 37 CFR 
    1.17(i) (37 CFR 1.17(q) in a provisional application), which will be 
    refunded if it is determined that the page(s) was in fact received by 
    the PTO with the application papers deposited on filing) with evidence 
    of such deposit within two months of the date of the ``Notice of 
    Omitted Items'' (37 CFR 1.181(f)). An applicant desiring to submit the 
    omitted page(s) in a nonprovisional application and accept the date of 
    such submission as the application filing date must file any omitted 
    page(s) with an oath or declaration in compliance with 37 CFR 1.63 and 
    1.64 referring to such page(s) and a petition under 37 CFR 1.182 (with 
    the petition fee under 37 CFR 1.17(h)) requesting the later filing date 
    within two months of the date of the ``Notice of Omitted Items'' (37 
    CFR 1.181(f)).
        An applicant willing to accept the application as deposited in the 
    PTO need not respond to the ``Notice of Omitted Items,'' and the 
    failure to file a petition under 37 CFR 1.53(c) or 1.182 (and the 
    requisite petition fee) as discussed above within two months of the 
    date of the ``Notice of Omitted Items'' (37 CFR 1.181(f)) will be 
    treated as constructive acceptance by the applicant of the application 
    as deposited in the PTO. Amendment of the specification is required in 
    a nonprovisional application to renumber the pages consecutively and 
    cancel any incomplete sentences caused by the absence of the omitted 
    pages. Such amendment should be by way of preliminary amendment 
    submitted prior to the first Office action to avoid delays in the 
    prosecution of the application.
        If the application does not contain anything that can be construed 
    as a written description, the Initial Application Examination Division 
    will mail a Notice of Incomplete Application (PTO-1123) indicating that 
    the application lacks the specification required by 35 U.S.C. 112. The 
    applicant may file a petition under 37 CFR 1.53(c) (and the petition 
    fee under 37 CFR 1.17(i) (37 CFR 1.17(q) in a provisional application)) 
    asserting that: (1) the missing specification was submitted, or (2) the 
    application papers as deposited contain an adequate written description 
    under 35 U.S.C. 112. The petition under 37 CFR 1.53(c) must be 
    accompanied by sufficient evidence (37 CFR 1.181(b)) to establish the 
    applicant's entitlement to the requested filing date (e.g., a date-
    stamped postcard receipt (MPEP 503) to establish prior receipt in the 
    PTO of the missing specification). Alternatively, the applicant may 
    submit the omitted specification, including at least one claim in a 
    nonprovisional application, accompanied by an oath or declaration in 
    compliance with 37 CFR 1.63 and 1.64 referring to the specification 
    being submitted and accept the date of such submission as the 
    application filing date.
    
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        Original claims form part of the original disclosure and provide 
    their own written description See In re Anderson, 471 F.2d 1237, 176 
    USPQ 331 (CCPA 1973). As such, an application that contains at least 
    one claim, but dues not contain anything which can be construed as a 
    written description of such claim(s), would be unusual.
    
    Nonprovisional Applications Filed Without at Least One Claim
    
        35 U.S.C. 111(a)(2) requires that an application for patent 
    include, inter alia, ``a specification as prescribed by section 112 of 
    this title,'' and 35 U.S.C. 111(a)(4) provides that the ``filing date 
    of an application shall be the date on which the specification and any 
    required drawing are received in the Patent and Trademark Office.'' 35 
    U.S.C. 112, first paragraph, provides, in part, that ``[t]he 
    specification shall contain a written description of the invention,'' 
    and 35 U.S.C. 112, second paragraph, provides that ``[t]he 
    specification shall conclude with one or more claims particularly 
    pointing out and distinctly claiming the subject matter which the 
    applicant regards as his invention.'' Also, the Court of Appeals for 
    the Federal Circuit stated in Litton Systems, Inc. v. whirlpool Corp.:
    
        Both statute, 35 U.S.C. 111[(a)], and federal regulations, 37 
    CFR 1.151[(a)(1)], make clear the requirement that an application 
    for a patent must include * * * a specification and claims. * * * 
    The omission of any one of these component parts makes a patent 
    application incomplete and thus not entitled to a filing date.
    
    728 F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir. 1984) (citing Gearon 
    v. United States, 121 F.Supp 652, 654, 101 USPQ 460, 461 (Ct. Cl. 
    1954), cert. denied, 348 U.S. 942, 104 USPQ 409 (1955)) (emphasis in 
    the original).
        Therefore, in an application filed under 35 U.S.C. 111(a), a claim 
    is a statutory requirement for according a filing date to the 
    application. 35 U.S.C. 162 and 171 make 35 U.S.C. 112 applicable to 
    plant and design applications, and 35 U.S.C. 162 specifically requires 
    the specification in a plant patent application to contain a claim. 35 
    U.S.C. 111(b)(2), however, provides that ``[a] claim, as required by 
    the second through fifth paragraphs of section 112, shall not be 
    required in a provisional application.'' Thus, with the exception of 
    provisional applications filed under 35 U.S.C. 111(b), any application 
    filed without at least one claim is incomplete and not entitled to a 
    filing date.
        If a nonprovisional application does not contain at least one 
    claim, a ``Notice of Incomplete Application'' will be mailed to the 
    applicant(s) indicating that no filing date has been granted and 
    setting a period for submitting a claim. The filing date will be the 
    date of receipt of at least one claim. See In re Mattson, 208 USPQ 168 
    (Comm'r Pats. 1980).
        As 37 CFR 1.53(b)(2)(ii) permits the conversion of an application 
    filed under 35 U.S.C. 111(a) to an application under 35 U.S.C. 111(b), 
    an applicant in an application, other than for a design patent, filed 
    under 35 U.S.C. 111(a) on or after June 8, 1995, without at least one 
    claim has the alternative of filing a petition under 37 CFR 
    1.53(b)(2)(ii) to convert such application into an application under 35 
    U.S.C. 111(b), which does not require a claim to be entitled to its 
    date of deposit as a filing date. Such a petition, however, must be 
    filed prior to the expiration of twelve months after the date of 
    deposit of the application under 35 U.S.C. 111(a), and comply with the 
    other requirements of 37 CFR 1.53(b)(20(ii).
    
    Applications Filed Without Any Drawings
    
        35 U.S.C. 111(a)(2)(B) and 111(b)(2)(B) each provide, in part, that 
    an ``application shall include * * * a drawing as prescribed by section 
    113 of this title'' and 35 U.S.C. 111(a)(4) and 111(b)(4) each provide, 
    in part, that the ``filing date * * * shall be the date on which * * * 
    any required drawing are received in the Patent and Trademark Office.'' 
    35 U.S.C. 113 in turn provides that an ``applicant shall furnish a 
    drawing where necessary for the understanding of the subject matter 
    sought to be patented.''
        Applications filed without drawings are initially inspected to 
    determine whether a drawing is referred to in the specification, and if 
    not, whether a drawing is necessary for an understanding of the 
    invention. 35 U.S.C. 113.
        In general, it has been PTO practice to treat an application that 
    contains at least one process or method claim as an application for 
    which a drawing is not necessary for an understanding of the invention 
    under 35 U.S.C. 113. The same practice has been followed in composition 
    applications. Other situations in drawings are usually not considered 
    necessary for an understanding of the invention under 35 U.S.C. 113 
    are:
        I. Coated articles or products: where the invention resides solely 
    in coating or impregnating a conventional sheet (e.g., paper or cloth, 
    or an article of known and conventional character with a particular 
    composition), unless significant details of structure or arrangement 
    are involved in the article claims;
        II. Articles made from a particular material or composition: where 
    the invention consists in making an article of a particular material or 
    composition, unless significant details of structure or arrangement are 
    involved in the article claims;
        III. Laminated Structures: where the claimed invention involves 
    only laminations of sheets (and coatings) of specified material unless 
    significant details of structure or arrangement (other than the mere 
    order of the layers) are involved in the article claims; or
        IV. Articles, apparatus or systems where sole distinguishing 
    feature is presence of a particular material: where the invention 
    resides solely in the use of a particular material in an otherwise old 
    article, apparatus or system recited broadly in the claims, for 
    example:
        a. A hydraulic system distinguished solely by the use therein of a 
    particular hydraulic fluid;
        b. Packaged sutures wherein the structure and arrangement of the 
    package are conventional and the only distinguishing feature is the use 
    of a particular material.
        A nonprovisional application having at least one claim, or a 
    provisional application having at least some disclosure, directed to 
    the subject matter discussed above for which a drawing is usually not 
    considered essential for a filing date, not describing drawing figures 
    in the specification, and filed without drawings will usually be 
    processed for examination, so long as the application contains 
    something that can be construed as a written description and the names 
    of all the inventors. A nonprovisional application having at least one 
    claim, or a provisional application having at least some disclosure, 
    directed to the subject matter discussed above for which a drawing is 
    usually not considered essential for a filing date, describing drawing 
    figure(s) in the specification, but filed without drawings will be 
    treated as an application filed without all of the drawing figures 
    referred to in the specification as discussed below, so long as the 
    application contains something that can be construed as a written 
    description and the names of all the inventors. In a situation in which 
    the appropriate examining group determines that drawings are necessary 
    under 35 U.S.C. 113 the filing date issue will be reconsidered on 
    reference from the examining group.
        If a nonprovisional application does not have at least one claim, 
    or a provisional application does not have at
    
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    least some disclosure, directed to the subject matter discussed above 
    for which a drawing is usually not considered essential for a filing 
    date, and is filed without drawings, the Initial Application 
    Examination Division will mail a ``Notice of Incomplete Application'' 
    indicating that the application lacks drawings and that 35 U.S.C. 113 
    requires a drawing where necessary for the understanding of the subject 
    matter sought to be patented.
        The application may file a petition under 37 CFR 1.53(c) (and the 
    petition fee under 37 CFR 1.17(i) (37 CFR 1.17(q) in a provisional 
    application) asserting that (1) the drawing(s) at issue was submitted, 
    or (2) the drawing(s) is not necessary under 35 U.S.C. 113 for a filing 
    date. The petition must be accompanied by sufficient evidence to 
    establish the applicant's entitlement to the requested filing date 
    (e.g., a date-stamped postcard receipt (MPEP 503) to establish prior 
    receipt in the PTO of the drawing(s) at issue). Alternatively, the 
    applicant may submit drawing(s) accompanied by an oath or declaration 
    in compliance with 37 CFR 1.63 and 1.64 referring to the drawing(s) 
    being submitted and accept the date of such submission as the 
    application filing date.
        In design applications, the Initial Application Examination 
    Division will mail a ``Notice of Incomplete Application'' indicating 
    that the application lacks the drawings required under 35 U.S.C. 113. 
    The applicant may: (1) Promptly file a petition under 37 CFR 1.53(c) 
    (and the petition fee under 37 CFR 1.17(i)) asserting that the missing 
    drawing(s) was submitted, or (2) promptly submit drawing(s) accompanied 
    by an oath or declaration in compliance with 37 CFR 1.63 and 1.64 and 
    accept the date of such submission as the application filing date. 37 
    CFR 1.154(a) provides that the claim in a design application ``shall be 
    in formal terms to the ornamental design for the article (specifying 
    name) as shown, or as shown and described.'' As such, petitions under 
    37 CFR 1.53(c) asserting that drawings are unnecessary under 35 U.S.C. 
    113 for a filing date in a design application will not be found 
    persuasive.
    
    Applications Filed Without All Figures of Drawings
    
        The Initial Application Examination Division reviews application 
    papers to determine whether all mentioned drawing figures in the 
    specification are present in the application. If the application is 
    filed without all of the drawing figure(s) referred to in the 
    specification, and the application contains something that can be 
    construed as a written description, at least one drawing, if necessary 
    under 35 U.S.C. 113, the names of all the inventors, and, in a 
    nonprovisional application, at least one claim, the Initial Application 
    Examination Division will mail a ``Notice of Omitted Items'' indicating 
    that the application papers so deposited have been accorded a filing 
    date, but are lacking some of the drawings described in the 
    specification.
        The mailing of a ``Notice of Omitted Items'' will permit the 
    applicant to either: (1) Promptly establish prior receipt in the PTO of 
    the drawing(s) at issue (generally by way of a date-stamped postcard 
    receipt (MPEP 503)), or (2) promptly submit the omitted drawing(s) in a 
    nonprovisional application and accept the date of such submission as 
    the application filing date. An applicant asserting that the drawing(s) 
    was in fact deposited in the PTO with the application papers must file 
    a petition under 37 CFR 1.53(c) (and the petition fee under 37 CFR 
    1.17(i) (37 CFR 1.17(q) in a provisional application), which will be 
    refunded if it is determined that the drawing(s) was in fact received 
    by the PTO with the application papers deposited on filing) with 
    evidence of such deposit within two months of the date of the ``Notice 
    of Omitted Items'' (37 CFR 1.181(f)). An applicant desiring to submit 
    the omitted drawings in a nonprovisional application and accept the 
    date of such submission as the application filing date must file any 
    omitted drawing(s) with an oath or declaration in compliance with 37 
    CFR 1.63 and 1.64 referring to such drawing(s) and a petition under 37 
    CFR 1.182 (with the petition fee under 37 CFR 1.17(h)) requesting the 
    later filing date within two months of the date of the ``Notice of 
    Omitted Items'' (37 CFR 1.181(f)).
        An applicant willing to accept the application as deposited in the 
    PTO need not respond to the ``Notice of Omitted Items,'' and the 
    failure to file a petition under 37 CFR 1.53(c) or 1.182 (and the 
    requisite petition fee) as discussed above within two months of the 
    date of the ``Notice of Omitted Items'' (37 CFR 1.181(f)) will be 
    treated as constructive acceptance by the applicant of the application 
    as deposited in the PTO. Amendment of the specification is required in 
    a nonprovisional application to cancel all references to the omitted 
    drawing, both in the brief and detailed descriptions of the drawings 
    and including any reference numerals shown only in the omitted 
    drawings. In addition, a separate letter is required in nonprovisional 
    application to renumber the drawing figures consecutively (showing the 
    proposed changes in red ink), if necessary, and amendment of the 
    specification is required to correct the references to the drawing 
    figures to correspond with any relabelled drawing figures, both in the 
    brief and detailed descriptions of the drawings. Such amendment and 
    correction to the drawing figures, if necessary, should be by way of 
    preliminary amendment submitted prior to the first office action to 
    avoid delays in the prosecution of the application.
    
    Subsequent Treatment of Application
    
        In instances in which a ``Notice of Incomplete Application'' has 
    been mailed, further action by the applicant is necessary for the 
    application to be accorded a filing date. As such, the application will 
    be retained in the Initial Application Examination Division to await 
    such action. Unless the applicant either completes the application or 
    files a petition under 27 CFR 1.53(c) (and the petition fee under 37 
    CFR 1.17(i) or 1.17(q)) within the period set in the ``Notice of 
    Incomplete Application,'' the application will be processed as an 
    incomplete application under 37 CFR 1.53(c).
        In instances in which a ``Notice of Omitted Items'' has been 
    mailed, the application will be retained in the Initial Application 
    Examination Division for a period of two months from the mailing date 
    of ``Notice of Omitted Items'' to permit the applicant to either: (1) 
    Establish prior receipt in the PTO of the page(s) or drawing(s) at 
    issue, or (2) promptly submit the omitted page(s) or drawing(s) in a 
    nonprovisional application and accept the date of such submission as 
    the application filing date. Extensions of time under 37 CFR 1.136 will 
    not be applicable to this two-month time period.
        The grant of a petition under 37 CFR 1.182 to accept the omitted 
    page(s) or drawing(s) in a nonprovisional application and accord the 
    date of such submission as the application filing date will be 
    indicated by the issuance of a new filing receipt indicating the filing 
    date accorded the application.
        Unless the applicant timely files a petition under 37 CFR 1.53(c) 
    or 1.182 (and the requisite petition fee), the application will 
    maintain the filing date as of the date of deposit of the application 
    papers in the PTO, and the original application papers (i.e., the 
    original disclosure of the invention) will include only those 
    application papers present in the PTO on the date of deposit. 
    Nonprovisional applications that are complete under 35 CFR
    
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    1.51(a)(1) will then be forwarded to the appropriate examining group 
    for examination of the application. Provisional applications that are 
    complete under 35 CFR 1.51(a)(2) will then be forwarded to Files 
    Repository. The current practice for treating applications that are not 
    complete under 37 CFR 1.51(a) will remain unchanged (37 CFR 1.53(d)).
        Any petition under 37 CFR 1.53(c) or 1.182 not filed within this 
    two-month period may be dismissed as untimely. 37 CFR 1.181(f). Under 
    the adopted procedure, the PTO may strictly adhere to the two-month 
    period set forth in 37 CFR 1.181(f), and dismiss as untimely any 
    petition not filed within this two-month period. This strict adherence 
    to the two-month period set forth in 37 CFR 1.181(f) is justified as 
    such applications will now be forwarded for examination at the end of 
    this two-month period. It is further justified in instances in which 
    the applicant seeks to submit the omitted page(s) or drawing(s) in a 
    nonprovisional application and request the date of such submission as 
    the application filing date since: (1) According the application a 
    filing date later than the date of deposit may affect the date of 
    expiration of any patent issuing on the application due to the changes 
    to 35 U.S.C. 154 contained in Public Law 103-465, Sec. 532, 108 Stat. 
    4809 (1994), and (2) the filing of a continuation-in-part application 
    is a sufficiently equivalent mechanism for adding additional subject 
    matter to avoid the loss of patent rights.
        The submission of omitted page(s) or drawing(s) in a nonprovisional 
    application and acceptance of the date of such submission as the 
    application filing date is tantamount to simply filing a new 
    application. Thus, applicants should consider filing a new application 
    as an alternative to submitting a petition under 37 CFR 1.182 (with the 
    petition fee under 37 CFR 1.17(h)) with any omitted page(s) or 
    drawing(s), which is a cost-effective alternative in instances in which 
    an nonprovisional application is deposited without filing fees. 
    Likewise, in view of the relatively low filing fee for provisional 
    applications, and the PTO's desire to minimize the processing of 
    provisional applications, the PTO will not grant petitions under 37 CFR 
    1.182 to accept omitted page(s) or drawing(s) and accord an application 
    filing date as of the date of such submission. Instead, the applicant 
    should simply refile the complete provisional application.
    
    Response to Comments
    
        Thirteen comments were received in response to the Filing Date 
    Notice. Nine comments expressly supported the proposed change, while 
    the remaining four comments simply made additional comments or 
    suggested additional changes, but did not oppose the proposed change. 
    The written comments have been analyzed, and responses to the comments 
    follow.
        Comment (1): One comment suggested that the PTO should, by 
    rulemaking, permit the addition of subject matter in a foreign 
    application for which priority is claimed.
        Response: Where an application includes in the papers deposited on 
    filing with the application a certified copy of a foreign application 
    for which priority is claimed, the PTO will grant a timely petition 
    under 37 CFR 1.182 requesting that: (1) the corresponding sheets of 
    drawings in the foreign priority application be accepted for any 
    omitted sheets of drawings in the application, or (2) the foreign 
    priority application be accepted as the application as filed, which may 
    result in the treatment of the foreign priority application as an 
    application filed in a non-English language (37 CFR 1.52(d)).
        In instances in which the foreign priority application was not 
    present among the papers deposited on filing with the application, any 
    addition of subject matter from the foreign priority application into 
    the application must be considered as new matter under 35 U.S.C. 132 
    (and, as such, will not be permitted by petition), unless the 
    application-as-filed specifically incorporates the foreign priority 
    application by reference.
        Drawing figures do not require translation of the subject matter 
    shown therein and individual drawing figures are sufficiently 
    segregated that it is considered appropriate to permit, by petition 
    under 37 CFR 1.182, the acceptance of the corresponding sheets of 
    drawings in the foreign priority application for any omitted sheets of 
    drawings in the application. The specification of a foreign priority 
    application, however, is generally subject to translation and revision 
    prior to its filing in the PTO as the specification of an application. 
    As such, it is considered appropriate to permit, by petition under 37 
    CFR 1.182, the acceptance of a foreign priority application as the 
    application as filed, but it is not considered acceptable to permit the 
    acceptance of a translation of portions of the foreign priority 
    application for omitted pages of the specification.
        Finally, the occurrence of situations in which it is necessary for 
    an applicant to request that the corresponding sheets of drawings in 
    the foreign priority application be accepted for any omitted sheets of 
    drawings in the application, or the foreign priority application be 
    accepted as the application as filed is relatively rare. In addition, 
    the treatment of these few applications on an ad hoc basis pursuant to 
    37 CFR 1.182 and 1.183 has proven acceptable.
        Comment (2): One comment suggested that the PTO should consider 
    requiring a declaration from the attorney averring that the omitted 
    matter was inadvertently omitted.
        Response: First, in view of a registered practitioner's 
    responsibilities as set forth in 37 CFR Part 10, the PTO does not 
    generally require verification of statements by registered 
    practitioners. See, e.g., 37 CFR 1.125 and 1.137. Second, as there is 
    no apparent benefit to omitting material from an application as 
    deposited in the PTO, there appears to be little justification for 
    requiring even a statement that the omitted matter was inadvertently 
    omitted.
        Comment (3): One comment questioned whether the change would be 
    applicable to applications filed under 37 CFR 1.60 or 1.62.
        Response: The adopted procedure applies to applications filed under 
    37 CFR 1.53.
        37 CFR 1.60 requires, inter alia, that the application be a true 
    copy of the prior application (37 CFR 1.60(b)(2)), and a copy that 
    omits pages of specification or sheets of drawings from the prior 
    application is not a true copy of the prior application. As such, a 
    copy that omits pages of specification or sheets of drawings from the 
    prior application is an improper application under 37 CFR 1.60, and 
    cannot be accorded a filing date as an application under 37 CFR 1.60 
    until the filing error is corrected.
        The PTO considers 37 CFR 1.60 to be unnecessary in view of changes 
    to 37 CFR 1.4(d), and a trap for the unwary. The PTO has previously 
    proposed to eliminate 37 CFR 1.60 (See notice of proposed rulemaking 
    entitled ``Changes to Implement 20-Year Patent Term and Provisional 
    Application'' (20-Year Term Notice of Proposed Rulemaking) published in 
    the Federal Register at 59 FR 63951 (December 12, 1994), and in the 
    Patent and Trademark Office Official Gazette at 1170 Off. Gaz. Pat. 
    Office 377 (January 3, 1995)), and will again propose to eliminate 37 
    CFR 1.60, as well as 37 CFR 1.62, in an impending rulemaking to 
    implement the Administration's regulatory reform initiative.
        A continuation or divisional application may be filed under 35 
    U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b)(1), by 
    providing
    
    [[Page 30045]]
    
    a copy of the prior application, including a copy of the oath or 
    declaration in such prior application, as filed. The patent statutes 
    and rules of practice do not require that an oath or declaration 
    include a recent date of execution, and the Examining Corps has been 
    directed not to object to an oath or declaration as lacking either a 
    recent date of execution or any date of execution. This change in 
    examining practice will appear in the next revision of the MPEP. As is 
    currently the situation under 37 CFR 1.60 and 1.62, the applicant's 
    duty of candor and good faith including compliance with the duty of 
    disclosure requirements of Sec. 1.56 is continuous and applies to the 
    continuation or divisional application, notwithstanding the lack of a 
    newly executed oath or declaration.
        37 CFR 1.60(b)(4) and 1.62(a) currently permit the filing of a 
    continuation or divisional application by less than all of the 
    inventors named in a prior application without a newly executed oath or 
    declaration. The oath or declaration in an application filed under 37 
    CFR 1.53(b), however, must identify the inventorship of such 
    application. Thus, unless it is necessary to file a continuation or 
    divisional application under 37 CFR 1.60 to name less than all of the 
    inventors named in a prior application, applicants are encouraged to 
    file continuing applications under 37 CFR 1.53(b) (i.e., omit any 
    reference to 37 CFR 1.60 in the application papers) to avoid an 
    inadvertent failure to comply with all of the requirements of 37 CFR 
    1.60.
        An application under 37 CFR 1.62 uses the content of the prior 
    application, and is itself only a request for an application under 37 
    CFR 1.62. As such, there is no concern that an application under 37 CFR 
    1.62 will be filed without all the pages of the specification or 
    without all of the figures of the drawings.
        Comment (4): One comment questioned whether a filing date would be 
    accorded if the name of an inventor were omitted.
        Response: 37 CFR 1.41 and 1.53 currently require that an 
    application be filed in the name of the actual inventor or inventors, 
    and this notice does not involve changes to the rules of practice. The 
    PTO will propose to eliminate this requirement in 37 CFR 1.41 and 1.53 
    in the rulemaking to implement the Administration's regulatory reform 
    initiative.
        Comment (5): One comment suggested that the notices be mailed out 
    as soon as possible to avoid a loss of rights for those applicants who 
    require completion or refiling of the application. Another comment 
    suggested that the decision as to whether an application is 
    ``incomplete'' should be made by the Examining Corps, rather than on a 
    formalistic basis by the Initial Application Examination Division.
        Response: The efficient pre-examination processing of applications 
    is in the mutual interest of the PTO and applicants. The PTO is 
    currently in the process of modifying its pre-examination processing 
    procedures to avoid any unnecessary delay. This new procedure will not 
    impact the pre-examination processing of applications, in that the 
    Initial Application Examination Division will mail a ``Notice of 
    Incomplete Application,'' ``Notice of Omitted Items,'' and ``Notice to 
    File Missing Parts'' under this new procedure at the time the ``Notice 
    of Incomplete Application'' and ``Notice to File Missing Parts'' are 
    currently mailed.
        The adopted procedure replaces formalistic procedures with 
    procedures based upon the requirements for a filing date as set forth 
    in 35 U.S.C. 111, 112, and 113. Filing date issues are ultimately 
    decided by the Office of Petitions in the Office of the Deputy 
    Assistant Commissioner for Patent Policy and Projects (MPEP 1002.02(b) 
    (35)) on the basis of whether and when the application meets the 
    requirements for a filing date as set forth in 35 U.S.C. 111, 112, and 
    113, and not on the basis of who made the initial decision not to 
    accord a filing date to the application.
        It should be recognized that there is tension between the comments 
    objecting to any review of the entitlement of an application to a 
    filing date by the Initial Application Examination Division (arguing 
    that this issue should be considered only the Examining Corps) and the 
    desire for speedy notification to the applicant that a portion of the 
    application appears to have been omitted. To defer all review of the 
    entitlement of an application to a filing date until the application is 
    picked-up for examination would cause a significant delay in any such 
    notification to the applicant.
        Comment (6): One comment noted that 35 U.S.C. 111(b) does not 
    require a claim for a provisional application. Several comments 
    suggested that the PTO automatically treat any nonprovisional 
    application filed without at least one claim as a provisional 
    application, if such application is otherwise entitled to a filing date 
    as a provisional application.
        Response: A provisional application does not require a claim to be 
    entitled to a filing date. As discussed supra, an applicant in an 
    application, other than for a design patent, filed under 35 U.S.C. 
    111(a) on or after June 8, 1995, without at least one claim has the 
    alternative of filing a petition under 37 CFR 1.53(b)(2)(ii) to convert 
    such application into an application under 35 U.S.C. 111(b). The PTO 
    does not consider it appropriate to ``automatically'' consider an 
    application filed under 35 U.S.C. 111(a) without a claim to be an 
    application under 35 U.S.C. 111(b) (a provisional application), since 
    the applicant may not desire an application under 35 U.S.C. 111(b), and 
    may desire to file a claim to obtain an application filing date as of 
    the date of submission of such claim.
        Comment (7): One comment suggested that the MPEP should clearly 
    indicate that applications filed without all the pages of specification 
    or all the figures of drawings described in the specification cannot 
    automatically be treated as defective under 35 U.S.C. 112, but must be 
    considered for compliance with 35 U.S.C. 112 by the subject matter that 
    is present in the application papers.
        Response: In an effort to improve the examination of applications, 
    chapter 2100 of the MPEP has been revised to set forth specific 
    guidelines for rejections under 35 U.S.C. 101, 102, 103, and 112. MPEP 
    2161 et seq. set forth the guidelines for rejections under 35 U.S.C. 
    112, first and second paragraphs, and do not authorize a rejection 
    under 35 U.S.C. 112 based merely upon the fact that pages of 
    specification or figures of drawing were omitted.
        Comment (8): One comment questioned whether the proposed procedure 
    for the treatment of applications filed without all the pages of 
    specification or all the figures of drawings described in the 
    specification is applicable to provisional applications, noting that 35 
    U.S.C. 111(b) provides that a claim is not required in a provisional 
    application.
        Response: The adopted procedure applies to applications (both 
    provisional and nonprovisional) filed under 37 CFR 1.53. The procedure 
    recognizes that 35 U.S.C. 111(b) does not require a claim in a 
    provisional application.
        Comment (9): One comment suggested that the two-month period for 
    taking action would be unfair in instances in which the PTO prepares 
    and enters the notice into the Patent Application Locating and 
    Monitoring (PALM) system but fails to mail the notice or mails the 
    notice to an incorrect correspondence address.
        Response: The ``Notice of Omitted Items'' is not an action within 
    the meaning of 35 U.S.C. 113 to which a response is required to avoid
    
    [[Page 30046]]
    
    abandonment. An applicant simply has the opportunity to file a 
    petition, but need not take action, in response to a ``Notice of 
    Omitted Items.'' Thus, the timeliness of any such petition is governed 
    by 37 CFR 1.181(f). 37 CFR 1.181(f) provides that any petition not 
    filed within two months from the action complained of may be dismissed 
    as untimely.
        Establishing prior receipt in the PTO of the page(s) or drawing(s) 
    at issue or submitting the omitted page(s) or drawings(s) and accepting 
    the date of such submission as the application filing date would result 
    in an addition to the papers constituting the original disclosure of 
    the application, and submitting the omitted page(s) or drawings(s) and 
    accepting the date of such submission as the application filing date 
    would result in a change in application filing date. As a change in 
    either the original disclosure or filing date of an application would 
    interfere with the examination of the application for compliance with 
    35 U.S.C. 102, 103, and 112, the PTO will not forward an application in 
    which a ``Notice of Omitted Items'' has been mailed for examination 
    until it is apparent that the applicant has not responded to the 
    ``Notice of Omitted Items.'' Thus, a nonprovisional application will 
    not be processed for examination, and the examination of the 
    application will be delayed, until the expiration of two months from 
    the mailing date of ``Notice of Omitted Items.'' The two-month period 
    set forth in 37 CFR 1.181(f) is considered an appropriate balance 
    between providing an applicant sufficient time to take action in 
    response to a ``Notice of Omitted Items'' and avoiding unnecessary 
    delays in the examination of the application, which would be 
    undesirable in view of 35 U.S.C. 154 as amended by Public Law 103-465. 
    While an applicant willing to accept a nonprovisional application as 
    deposited in the PTO need not respond to the ``Notice of Omitted 
    Items,'' the filing of an express communication to that effect would 
    permit the PTO to proceed with the processing of the application for 
    examination, and, as such, may reduce the delay in the examination of 
    the application.
        While a ``Notice of Omitted Items'' is not an action within the 
    meaning of 35 U.S.C. 133, the principles regarding nonreceipt or 
    delayed receipt of a ``Notice of Omitted Items,'' due either to a 
    failure on the part of the PTO to properly mail such notice or a 
    failure on the part of the U.S. Postal Service to deliver such notice 
    to the correspondence address in a timely manner, are applicable to the 
    nonreceipt or delayed receipt of a ``Notice of Omitted Items.'' 
    Applicants are directed to the Notice entitled ``Withdrawing the 
    Holding of Abandonment when Office Actions Are Not Received,'' 
    published in the PTO Official Gazette at 1156, Off. Gaz. Pat. Office 53 
    (November 16, 1993), for the evidence necessary to establish nonreceipt 
    of a ``Notice of Omitted Items,'' and the Notice entitled ``Procedures 
    For Restarting Response Periods,'' published in the PTO Official 
    Gazette at 1160 Off. Gaz. Pat. Office 14 (March 1, 1994), for the 
    evidence necessary to establish delayed receipt of a ``Notice of 
    Omitted Items.''
        Comment (10): One comment suggested that while the proposed 
    procedure is an improvement, it still conflicts with 35 U.S.C. 112 and 
    113. The comment specifically argues that the sufficiency of an 
    application is a matter for determination by an examiner skilled in the 
    subject matter of the application, in that Congress did not intend that 
    the sufficiency of an application be determined by the Initial Patent 
    Examination Division.
        Response: The adopted procedure will accord a filing date to any 
    application that contains something that can be construed as a written 
    description, any necessary drawing, and, in a nonprovisional 
    application, at least one claim. This procedure is consistent with the 
    requirements for a filing date as set forth in 35 U.S.C. 111, 112, and 
    113. 35 U.S.C. 113, second sentence, contemplates that drawings may be 
    filed after the filing date of an application. 35 U.S.C. 113, however, 
    provides that an ``application shall furnish a drawing where necessary 
    for the understanding of the subject matter sought to be patented,'' 
    and 35 U.S.C. 111(a)(4) and 111(b)(4) each provide, in part, that the 
    ``filing date * * *  shall be the date on which * * *  any required 
    drawing are received in the Patent and Trademark Office.'' As such, the 
    PTO has the statutory authority, and responsibility, to determine 
    whether a drawing is necessary under 35 U.S.C. 113 in an application 
    filed without drawings prior to according a filing date to that 
    application.
        There is nothing in 35 U.S.C. 111, 112, or 113 that limits the 
    authority of the Commissioner to delegate the determination of whether 
    or when any application meets the requirements for a filing date as set 
    forth in 35 U.S.C. 111, 112, and 113. In any event, filing date issues 
    are, as discussed supra, ultimately decided by Office of the Deputy 
    Assistant Commissioner for Patent Policy and Projects on the basis of 
    whether and when the application meets the requirements for a filing 
    date as set forth in 35 U.S.C. 111, 112, and 113, and not on the basis 
    of who made the initial decision not to accord a filing date to the 
    application.
        Comment (11): One comment suggested that the proposed procedure be 
    adopted by rulemaking. Another comment suggested that the proposed 
    procedure either be adopted by rulemaking or clearly set forth in the 
    MPEP.
        Response: 37 CFR 1.53(b)(1) provides that the ``filing date of an 
    application for patent filed under this section, except for a 
    provisional application, is the date on which a specification 
    containing a description pursuant to Sec. 1.71 and at least one claim 
    pursuant to Sec. 1.75; and any drawing required by Sec. 1.81(a), are 
    filed in the Patent and Trademark Office in the name of the actual 
    inventor or inventors as required by Sec. 1.41.'' 37 CFR 1.53(b)(2) 
    provides that the ``filing date of a provisional application is the 
    date on which: a specification as prescribed by 35 U.S.C. 112, first 
    paragraph; and any drawing required by Sec. 1.81(a), are filed in the 
    Patent and Trademark Office in the name of the actual inventor or 
    inventors as required by Sec. 1.41.'' Thus, no change to the rules of 
    practice is necessary to adopt the procedure set forth in this notice.
        It should be noted that the MPEP 608.01 sets forth the former 
    procedure for treating an application filed without all of the pages of 
    specification or filed under 35 U.S.C. 111(a) without at least one 
    claim. Likewise, MPEP 608.02 sets forth the former procedure for 
    treating an application filed without drawings or all of the figures of 
    drawings.
        The next revision of the MPEP will incorporate the change in 
    procedure set forth in this notice.
    
        Dated: June 5, 1996.
    Bruce A. Lehman,
    Assistant Secretary of Commerce and Commissioner of Patents and 
    Trademarks.
    [FR Doc. 96-15049 Filed 6-12-96; 8:45 am]
    BILLING CODE 3510-16-M
    
    

Document Information

Effective Date:
7/22/1996
Published:
06/13/1996
Department:
Patent and Trademark Office
Entry Type:
Notice
Action:
Notice of change in procedure.
Document Number:
96-15049
Dates:
July 22, 1996.
Pages:
30040-30046 (7 pages)
Docket Numbers:
Docket No. 951019254-6136-02
RINs:
0651-XX05
PDF File:
96-15049.pdf