Content of a Patent Application Publication

37 CFR 1.215 Patent Application Publication

(a) The publication of an application under

35 U.S.C.

122(b)

shall include a patent application publication. The

date of publication shall be indicated on the patent application publication. The

patent application publication will be based upon the specification and drawings

deposited on the filing date of the application, as well as the application data

sheet and/or the inventor's oath or declaration. The patent application

publication may also be based upon amendments to the specification (other than the

abstract or the claims) that are reflected in a substitute specification under

§

1.125(b)

, amendments to the abstract under

§ 1.121(b)

,

amendments to the claims that are reflected in a complete claim listing under

§

1.121(c)

, and amendments to the drawings under

§

1.121(d)

, provided that such substitute specification or

amendment is submitted in sufficient time to be entered into the Office file

wrapper of the application before technical preparations for publication of the

application have begun. Technical preparations for publication of an application

generally begin four months prior to the projected date of publication. The patent

application publication of an application that has entered the national stage

under

35 U.S.C.

371

may also include amendments made during the

international stage.

See

paragraph

(c)

of this

section for publication of an application based upon a copy of the application

submitted via the USPTO patent electronic filing system.

ly begin four months prior to the projected date of publication. The patent

application publication of an application that has entered the national stage

under

35 U.S.C.

371

may also include amendments made during the

international stage.

See

paragraph

(c)

of this

section for publication of an application based upon a copy of the application

submitted via the USPTO patent electronic filing system.

(b) The patent application publication will include the

name of 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 if that information is provided in the application data sheet in an

application filed under

§ 1.46

. Assignee information

may be included on the patent application publication in other applications if the

assignee information is provided in an application data sheet submitted in

sufficient time to be entered into the Office file wrapper of the application

before technical preparations for publication of the application have begun.

Providing assignee information in the application data sheet does not substitute

for compliance with any requirement of

part 3

of this chapter to have

an assignment recorded by the Office.

(c) At applicant's option, the patent application

publication will be based upon the copy of the application (specification,

drawings, and the application data sheet and/or the inventor's oath or

declaration) as amended, provided that applicant supplies such a copy in

compliance with the USPTO patent electronic filing system requirements within one

month of the mailing date of the first Office communication that includes a

confirmation number for the application, or fourteen months of the earliest filing

date for which a benefit is sought under title 35, United States Code, whichever

is later.

aration) as amended, provided that applicant supplies such a copy in

compliance with the USPTO patent electronic filing system requirements within one

month of the mailing date of the first Office communication that includes a

confirmation number for the application, or fourteen months of the earliest filing

date for which a benefit is sought under title 35, United States Code, whichever

is later.

(d) If the copy of the application submitted pursuant

to paragraph (c) of this section does not comply with the USPTO patent electronic

filing system requirements, the Office will publish the application as provided in

paragraph (a) of this section. If, however, the Office has not started the

publication process, the Office may use an untimely filed copy of the application

supplied by the applicant under paragraph (c) of this section in creating the

patent application publication.

Pre-AIA 37 CFR 1.215  Patent application publication

(a) The publication of an application under

35 U.S.C.

122(b)

shall include a patent application publication. The

date of publication shall be indicated on the patent application publication. The

patent application publication will be based upon the specification and drawings

deposited on the filing date of the application, as well as the executed oath or

declaration submitted to complete the application. The patent application

publication may also be based upon amendments to the specification (other than the

abstract or the claims) that are reflected in a substitute specification under

§

1.125(b)

, amendments to the abstract under

§ 1.121(b)

,

amendments to the claims that are reflected in a complete claim listing under

§

1.121(c)

, and amendments to the drawings under

§

1.121(d)

, provided that such substitute specification or

amendment is submitted in sufficient time to be entered into the Office file

wrapper of the application before technical preparations for publication of the

application have begun

the abstract under

§ 1.121(b)

,

amendments to the claims that are reflected in a complete claim listing under

§

1.121(c)

, and amendments to the drawings under

§

1.121(d)

, provided that such substitute specification or

amendment is submitted in sufficient time to be entered into the Office file

wrapper of the application before technical preparations for publication of the

application have begun. Technical preparations for publication of an application

generally begin four months prior to the projected date of publication. The patent

application publication of an application that has entered the national stage

under

35 U.S.C.

371

may also include amendments made during the

international stage. See paragraph (c) of this section for publication of an

application based upon a copy of the application submitted via the Office

electronic filing system.

(b) If applicant wants the patent application publication to include

assignee information, the applicant must include the assignee information on the

application transmittal sheet or the application data sheet (

§ 1.76

).

Assignee information may not be included on the patent application publication

unless this information is provided on the application transmittal sheet or

application data sheet included with the application on filing. Providing this

information on the application transmittal sheet or the application data sheet

does not substitute for compliance with any requirement of part 3 of this chapter

to have an assignment recorded by the Office.

on the patent application publication

unless this information is provided on the application transmittal sheet or

application data sheet included with the application on filing. Providing this

information on the application transmittal sheet or the application data sheet

does not substitute for compliance with any requirement of part 3 of this chapter

to have an assignment recorded by the Office.

(c) At applicant’s option, the patent application publication will be

based upon the copy of the application (specification, drawings, and oath or

declaration) as amended, provided that applicant supplies such a copy in

compliance with the Office electronic filing system requirements within one month

of the mailing date of the first Office communication that includes a confirmation

number for the application, or fourteen months of the earliest filing date for

which a benefit is sought under title 35, United States Code, whichever is

later.

(d) If the copy of the application submitted pursuant to paragraph

(c) of this section does not comply with the Office electronic filing system

requirements, the Office will publish the application as provided in paragraph (a)

of this section. If, however, the Office has not started the publication process,

the Office may use an untimely filed copy of the application supplied by the

applicant under paragraph (c) of this section in creating the patent application

publication.

A patent application publication includes a front page containing

information similar to that contained on the front page of a patent, the drawings (if any),

and the specification (including claims)

arted the publication process,

the Office may use an untimely filed copy of the application supplied by the

applicant under paragraph (c) of this section in creating the patent application

publication.

A patent application publication includes a front page containing

information similar to that contained on the front page of a patent, the drawings (if any),

and the specification (including claims). The patent application publication will generally

be based upon the following:

(A) The patent application papers and drawings deposited on the filing

date of the application;

(B) The executed oath or declaration submitted to complete the

application and/or application data sheet for applications filed on or after

September 16, 2012; and

(C) Any subsequently filed application papers and drawings submitted in

reply to a preexamination notice requiring a title and abstract in compliance with

37 CFR

1.72

, application papers in compliance with

37 CFR 1.52

,

drawings in compliance with

37 CFR 1.84

, a “Sequence Listing”

in compliance with

37 CFR 1.821

through

1.825

(for applications filed

before July 1, 2022), or a “Sequence Listing XML” in compliance with

37 CFR

1.831

through

1.835

(for applications filed on

or after July 1, 2022).

I.

AMENDMENTS

The patent application publication may also be based upon amendments

that expedite the publication process, provided that such amendments are submitted in

sufficient time to be entered into the application file before technical preparations

for publication of the application have begun (generally four months prior to the

projected publication date). While the Office will attempt to use the amendments

submitted by applicants, applicants are not entitled to have the amendments used in the

publication

ess, provided that such amendments are submitted in

sufficient time to be entered into the application file before technical preparations

for publication of the application have begun (generally four months prior to the

projected publication date). While the Office will attempt to use the amendments

submitted by applicants, applicants are not entitled to have the amendments used in the

publication. For example, the patent application publication may also be based upon the

following amendments because they are in formats useable for publication:

(A) Amendments to the specification that are reflected in a

substitute specification under

37 CFR 1.125(b)

;

(B) An amendment to the abstract under

37 CFR

1.121(b)

;

(C) Amendments to the claims that are reflected in a complete claim

listing under

37

CFR 1.121(c)

; and

(D) Amendments to drawings under

37 CFR 1.121(d)

.

The patent application publication of an application that has entered

the national stage under

35 U.S.C. 371

may also include

amendments made during the international stage, such as: amendments under

Article

34

and

19

; rectifications; corrections of

physical defects under PCT

Rule 26

; and an abstract rewritten

by the International Searching Authority.

If an applicant wants the publication to include drawings other than

those submitted with the application as filed (e.g., better quality or amended

drawings), applicant may file the replacement drawings in sufficient time to be entered

into the application file before four months prior to the projected publication date.

The Office cannot guarantee that the latest amendment or any particular

amendment will be included in the patent application publication

other than

those submitted with the application as filed (e.g., better quality or amended

drawings), applicant may file the replacement drawings in sufficient time to be entered

into the application file before four months prior to the projected publication date.

The Office cannot guarantee that the latest amendment or any particular

amendment will be included in the patent application publication.

If applicant

wishes to have the patent application publication be based upon a copy of the

application (specification, drawings and oath or declaration) as amended, applicant must

supply such a copy via the USPTO patent electronic filing system, e.g., set forth in the

Legal Framework for Patent Electronic System within one month of the mailing date of the

first Office correspondence (e.g., filing receipt) including a confirmation number for

the application or fourteen months of the earliest filing date for which a benefit is

sought under title 35, United States Code, whichever is later (see

37 CFR

1.215(c)

and

Assignment of Confirmation Number and Time

Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication

Purposes,

1241

Off. Gaz. Pat. Office

97 (December 12,

2000)). See also III. AMENDED APPLICATION FILED VIA THE USPTO PATENT ELECTRONIC FILING

SYSTEM, below. The Office will use the electronic copy provided by the applicant to

create the publication. A proper continued prosecution application (CPA) filed on or

after November 29, 2000 (but before July 14, 2003) will be published based upon the

application papers deposited on the filing date of the first prior application.

Applicants may review the bibliographic information contained in the

Office’s database, and application papers that have been scanned into the file wrapper,

via Patent Center. Applicants should bring any errors to the Office’s attention before

technical preparations for publication of the application have begun (generally four

months prior to the projected publication date)

irst prior application.

Applicants may review the bibliographic information contained in the

Office’s database, and application papers that have been scanned into the file wrapper,

via Patent Center. Applicants should bring any errors to the Office’s attention before

technical preparations for publication of the application have begun (generally four

months prior to the projected publication date).

Due to the high cost and limited usefulness of printed paper or

composed electronic image versions of lengthy nucleotide and/or amino acid sequences,

“Sequence Listings” (for applications filed before July 1, 2022) and “Sequence Listing

XMLs” (for applications filed on or after July 1, 2022) which are at least 600 Kb (about

300 typed pages) are not printed with the paper and composed electronic image (page

image) versions of patents and patent application publications. It is noted that a

“Sequence Listing XML” file is transformed from an XML file to an ASCII plain text file,

and the ASCII plain text file size is used to determine if the “Sequence Listing XML” is

a lengthy “Sequence Listing XML.” Lengthy “Sequence Listings” or “Sequence Listing XMLs”

will be published only in electronic form on the USPTO sequence homepage (

https://seqdata.uspto.gov

). The

patent or patent application publication will include a statement that the patent or

application contains a lengthy “Sequence Listing” or “Sequence Listing XML” section (as

applicable) and a hyperlink to the webpage containing the “Sequence Listing” or

“Sequence Listing XML”. See

MPEP §§ 2419

et seq. and

2435

.

A.

Avoid Filing Preliminary Amendments

Applicants should not file any preliminary amendment with the

application. Submitting applications without any accompanying preliminary amendment

reduces the processing required of the Office, and will help to ensure that patent

application publications are printed correctly

the “Sequence Listing” or

“Sequence Listing XML”. See

MPEP §§ 2419

et seq. and

2435

.

A.

Avoid Filing Preliminary Amendments

Applicants should not file any preliminary amendment with the

application. Submitting applications without any accompanying preliminary amendment

reduces the processing required of the Office, and will help to ensure that patent

application publications are printed correctly.

A preliminary amendment that is present on the filing date of the

application is part of the original disclosure of the application under

37 CFR

1.115(a)(1)

. The Office will include such a preliminary

amendment that is present on the filing date of the application in the patent

application publication. If the preliminary amendment that is present on the filing

date of the application is not in a format that is useable for publication, the

Office will issue a notice requiring the applicant to submit the amendment in a

format useable for publication. Generally, a substitute specification (excluding

claims) is required for any preliminary amendments to the specification (other than

the claims) that are present on the filing date of the application. Even though a

substitute specification is a useable format for publication, applicant should not

file a substitute specification with the application because the application size fee

will be calculated based on the application papers including the clean version and

marked-up version of the substitute specification.

To avoid submitting preliminary amendments, applicants should

incorporate any desired amendments into the text of the specification including a new

set of claims, even where the application is a continuation or divisional application

of a previously-filed patent application. In such a continuation or divisional

application, a new specification (e.g., reflecting amendments made in the parent

application) may be submitted together with a copy of the oath or declaration from

the previously filed application so long as no new matter is included in the

specification

where the application is a continuation or divisional application

of a previously-filed patent application. In such a continuation or divisional

application, a new specification (e.g., reflecting amendments made in the parent

application) may be submitted together with a copy of the oath or declaration from

the previously filed application so long as no new matter is included in the

specification. See

pre-AIA 37 CFR 1.63 (d)(1)(iii)

. The specific reference to the

prior application required by

35 U.S.C. 119(e)

or

120

and

37 CFR 1.78(a)

in applications

filed before September 16, 2012 can be submitted in an application data sheet (ADS)

rather than in a preliminary amendment to the first sentence(s) of the specification.

Such references in applications filed on or after September 16, 2012 may only be made

in an ADS. If the specific reference is submitted in a preliminary amendment,

however, a substitute specification will not be required if the preliminary amendment

only adds or amends a benefit claim.

B.

Requests for Republication to Correct Errors

Applications with poor quality text, which may be acceptable for

scanning and examination purposes, may lead to errors in the patent application

publication. Correction of these errors and inclusion of any desired amendments into

the text of the originally-filed specification and drawings will only occur if

applicant files a request for republication under

37 CFR 1.221(a)

. They will not be

corrected by the Office in a corrected publication under

37 CFR

1.221(b)

. See

MPEP § 1130

.

II.

APPENDICES

Appendices, other than those containing “Sequence Listings” (for

applications filed before July 1, 2022), “Sequence Listing XMLs” (for applications filed

on or after July 1, 2022), or “Large Tables”, are not printed if they are contained on

pages located after the claims. If the application includes multiple claim sets in the

specification, the Office may treat pages located after the first set of claims as

appendices

n those containing “Sequence Listings” (for

applications filed before July 1, 2022), “Sequence Listing XMLs” (for applications filed

on or after July 1, 2022), or “Large Tables”, are not printed if they are contained on

pages located after the claims. If the application includes multiple claim sets in the

specification, the Office may treat pages located after the first set of claims as

appendices. Note that computer program listings may be printed if they are included in

the specification before the claims, but that “Computer Program Listing Appendices” that

are submitted via the USPTO patent electronic filing system or on a read-only optical

disc in accordance with

37 CFR 1.96(c)

and

37 CFR 1.52(e)

are

not printed as part of the patent or patent application publication.

III.

AMENDED APPLICATION FILED VIA THE USPTO PATENT ELECTRONIC FILING SYSTEM

At applicant’s option, a patent application publication may be based

upon a copy of the application (specification, drawings and oath or declaration) as

amended, provided that applicant supplies such a copy in compliance with the USPTO

patent electronic filing system requirements, e.g. set forth in the Legal Framework for

Patent Electronic System within one month of the mailing date of the first Office

communication that includes a confirmation number for the application, or fourteen

months of the earliest filing date for which a benefit is sought under title 35, United

States Code, whichever is later.

37 CFR 1.215(c)

. If the copy of the

application submitted under

37 CFR 1.215(c)

does not comply with

the USPTO patent electronic filing system requirements, the Office will publish the

application as provided in

37 CFR 1.215(a)

. If the copy of the

application submitted under

37 CFR 1.215(c)

was untimely, the

Office may use the untimely filed copy of the application supplied by the applicant

under

37 CFR

1.215(c)

in creating the patent application publication so long as

the copy was received before the Office has started the publication process

ments, the Office will publish the

application as provided in

37 CFR 1.215(a)

. If the copy of the

application submitted under

37 CFR 1.215(c)

was untimely, the

Office may use the untimely filed copy of the application supplied by the applicant

under

37 CFR

1.215(c)

in creating the patent application publication so long as

the copy was received before the Office has started the publication process. For further

information about the USPTO patent electronic filing system, see the Electronic Business

Center on the USPTO website (

www.uspto.gov

).

IV.

APPLICANT INFORMATION

If a patent application is filed pursuant to

37 CFR

1.46

, the patent application publication will include the name of

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.

The information must be provided on the application data sheet (ADS) filed with the

application. If the applicant information is corrected or updated in accordance with

37 CFR

1.46(c)

after filing the application, the corrected or updated

information may be used, if the information is recognized by the Office before the

technical preparation for the publication has begun.

Errors in applicant information printed on the

publication are not considered material mistakes by the Office under

37 CFR

1.211(b)

(e.g., errors in the assignee’s name). See

MPEP §

1130

. Thus, these errors may only be corrected if applicant

files a request for republication under

37 CFR 1.211(a)

.

V.

ASSIGNEE INFORMATION

For applications filed on or after September 16, 2012, if the applicant

would like the assignee data to be published, the assignee data must be submitted on the

application data sheet (ADS). For applications filed before September 16, 2012, if the

applicant would like the assignee data to be published, the information must be provided

on the application transmittal letter or the application data sheet (ADS) filed with the

application

ptember 16, 2012, if the applicant

would like the assignee data to be published, the assignee data must be submitted on the

application data sheet (ADS). For applications filed before September 16, 2012, if the

applicant would like the assignee data to be published, the information must be provided

on the application transmittal letter or the application data sheet (ADS) filed with the

application. Providing this information on the application transmittal letter or 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. If the assignee data is recorded

with the Assignment Recordation Branch only, the information will not be published as

part of the patent application publication.

Errors in assignee information printed on the publication are not

considered material mistakes by the Office under

37 CFR 1.221(b)

(e.g., errors in the

assignee’s name). See

MPEP § 1130

. Thus, these assignment errors and applicant’s

failure to include assignment data may only be corrected if applicant files a request

for republication under

37 CFR 1.221(a)

.

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