National Applications

35 U.S.C. 111

Application.

[Editor Note: Applicable to any patent application filed on or after

December 18, 2013. See

35 U.S.C. 111 (pre-PLT (AIA))

or

35 U.S.C. 111

(pre-AIA)

for the law otherwise applicable.]

(a) IN GENERAL.—

(1) WRITTEN APPLICATION.—An application for

patent shall be made, or authorized to be made, by the inventor, except

as otherwise provided in this title, in writing to the Director.

(2) CONTENTS.—Such application shall

include—

(A) a specification as prescribed by

section

112

;

(B) a drawing as prescribed by

section 113

;

and

(C) an oath or declaration as prescribed

by

section

115

.

(3) FEE, OATH OR DECLARATION, AND CLAIMS.—The

application shall be accompanied by the fee required by law. The fee,

oath or declaration, and 1 or more claims may be submitted after the

filing date of the application, within such period and under such

conditions, including the payment of a surcharge, as may be prescribed by

the Director. Upon failure to submit the fee, oath or declaration, and 1

or more claims within such prescribed period, the application shall be

regarded as abandoned.

(4) FILING DATE.—The filing date of an

application shall be the date on which a specification, with or without

claims, is received in the United States Patent and Trademark Office.

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application for

patent shall be made or authorized to be made by the inventor, except as

otherwise provided in this title, in writing to the Director. Such

application shall include—

(A) a specification as prescribed by

section 112(a)

;

and

(B) a drawing as prescribed by

section

113

.

(2) CLAIM.—A claim, as required by subsections

ice.

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application for

patent shall be made or authorized to be made by the inventor, except as

otherwise provided in this title, in writing to the Director. Such

application shall include—

(A) a specification as prescribed by

section 112(a)

;

and

(B) a drawing as prescribed by

section

113

.

(2) CLAIM.—A claim, as required by subsections

(b) through (e) of

section 112

, shall

not be required in a provisional application.

(3) FEE.—The application shall be accompanied by

the fee required by law. The fee may be submitted after the filing date

of the application, within such period and under such conditions,

including the payment of a surcharge, as may be prescribed by the

Director. Upon failure to submit the fee within such prescribed period,

the application shall be regarded as abandoned.

(4) FILING DATE.—The filing date of a

provisional application shall be the date on which a specification, with

or without claims, is received in the United States Patent and Trademark

Office.

(5) ABANDONMENT.—Notwithstanding the absence of

a claim, upon timely request and as prescribed by the Director, a

provisional application may be treated as an application filed under

subsection (a). Subject to

section 119(e)(3)

, if

no such request is made, the provisional application shall be regarded as

abandoned 12 months after the filing date of such application and shall

not be subject to revival after such 12-month period.

(6) OTHER BASIS FOR PROVISIONAL

APPLICATION.—Subject to all the conditions in this subsection and

section 119(e)

, and as prescribed by the Director,

an application for patent filed under subsection (a) may be treated as a

provisional application for patent.

be regarded as

abandoned 12 months after the filing date of such application and shall

not be subject to revival after such 12-month period.

(6) OTHER BASIS FOR PROVISIONAL

APPLICATION.—Subject to all the conditions in this subsection and

section 119(e)

, and as prescribed by the Director,

an application for patent filed under subsection (a) may be treated as a

provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST

FILING DATE.—A provisional application shall not be entitled to the right

of priority of any other application under

section

119

,

365(a)

, or

386(a)

or to the

benefit of an earlier filing date in the United States under

section 120

,

121

,

365(c)

, or

386(c)

.

(8) APPLICABLE PROVISIONS.—The provisions of

this title relating to applications for patent shall apply to provisional

applications for patent, except as otherwise provided, and except that

provisional applications for patent shall not be subject to

sections 131

and

135

.

(c) PRIOR FILED APPLICATION.—Notwithstanding

the provisions of subsection (a), the Director may prescribe the conditions,

including the payment of a surcharge, under which a reference made upon the

filing of an application under subsection (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. 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. 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. Such application shall be treated as

having never been filed, unless—

(1) the application is revived under

section 27

; and

within such

period and under such conditions as may be prescribed by the Director. 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. Such application shall be treated as

having never been filed, unless—

(1) the application is revived under

section 27

; and

(2) a copy of the specification and any

drawings of the previously filed application are submitted to the

Director.

35 U.S.C. 111 (pre-PLT (AIA))

Application.

[Editor Note: Applicable to any patent application filed on or after

September 16, 2012, and before December 18, 2013. See

35 U.S.C.

111

or

35 U.S.C. 111 (pre-AIA)

for

the law otherwise applicable.]

(a) IN GENERAL.—

(1) WRITTEN APPLICATION.—An application for patent

shall be made, or authorized to be made, by the inventor, except as

otherwise provided in this title, in writing to the Director.

(2) CONTENTS.—Such application shall include—

(A) a specification as prescribed by

section

112

;

(B) a drawing as prescribed by

section

113

; and

(C) an oath or declaration as prescribed by

section

115

.

(3) FEE AND OATH OR DECLARATION.—The application

must be accompanied by the fee required by law. The fee and oath or

declaration may be submitted after the specification and any required

drawing are submitted, within such period and under such conditions,

including the payment of a surcharge, as may be prescribed by the

Director.

(4) FAILURE TO SUBMIT.—Upon failure to submit the

fee and oath or declaration within such prescribed period, the

application shall be regarded as abandoned, unless it is shown to the

satisfaction of the Director that the delay in submitting the fee and

oath or declaration was unavoidable or unintentional. 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.

ath or declaration within such prescribed period, the

application shall be regarded as abandoned, unless it is shown to the

satisfaction of the Director that the delay in submitting the fee and

oath or declaration was unavoidable or unintentional. 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.

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application for

patent shall be made or authorized to be made by the inventor, except as

otherwise provided in this title, in writing to the Director. Such

application shall include—

(A) a specification as prescribed by

section 112(a)

;

and

(B) a drawing as prescribed by

section

113

.

(2) CLAIM.—A claim, as required by subsections (b)

through (e) of

section 112

, shall

not be required in a provisional application.

(3) FEE.—

(A) The application must be accompanied by the

fee required by law.

(B) The fee may be submitted after the

specification and any required drawing are submitted, within such

period and under such conditions, including the payment of a

surcharge, as may be prescribed by the Director.

(C) Upon failure to submit the fee within

such prescribed period, the application shall be regarded as

abandoned, unless it is shown to the satisfaction of the Director

that the delay in submitting the fee was unavoidable or

unintentional.

(4) FILING DATE.—The filing date of a provisional

application shall be the date on which the specification and any required

drawing are received in the Patent and Trademark Office.

(5) ABANDONMENT.—Notwithstanding the absence of a

claim, upon timely request and as prescribed by the Director, a

provisional application may be treated as an application filed under

subsection (a). Subject to

section 119(e)(3)

, if

no such request is made, the provisional application shall be regarded as

abandoned 12 months after the filing date of such application and shall

not be subject to revival after such 12-month period.

the absence of a

claim, upon timely request and as prescribed by the Director, a

provisional application may be treated as an application filed under

subsection (a). Subject to

section 119(e)(3)

, if

no such request is made, the provisional application shall be regarded as

abandoned 12 months after the filing date of such application and shall

not be subject to revival after such 12-month period.

(6) OTHER BASIS FOR PROVISIONAL

APPLICATION.—Subject to all the conditions in this subsection and

section 119(e)

, and as prescribed by the Director,

an application for patent filed under subsection (a) may be treated as a

provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING

DATE.—A provisional application shall not be entitled to the right of

priority of any other application under

section

119

or

365(a)

or to the

benefit of an earlier filing date in the United States under

section 120

,

121

, or

365(c)

.

(8) APPLICABLE PROVISIONS.—The provisions of this

title relating to applications for patent shall apply to provisional

applications for patent, except as otherwise provided, and except that

provisional applications for patent shall not be subject to

sections 131

and

135

.

Pre-AIA 35 U.S.C.

111

requirements substantially correspond to those of

pre-PLT (AIA) 35

U.S.C. 111

, but do not include conforming amendments with regard

to the oath or declaration provisions and other miscellaneous provisions of the AIA.

37 CFR 1.9 Definitions.

patent, except as otherwise provided, and except that

provisional applications for patent shall not be subject to

sections 131

and

135

.

Pre-AIA 35 U.S.C.

111

requirements substantially correspond to those of

pre-PLT (AIA) 35

U.S.C. 111

, but do not include conforming amendments with regard

to the oath or declaration provisions and other miscellaneous provisions of the AIA.

37 CFR 1.9 Definitions.

(a)

(1) A national application as used in this chapter

means either a U.S. application for patent which was filed in the Office

under

35 U.S.C. 111

, an

international application filed under the Patent Cooperation Treaty in

which the basic national fee under

35 U.S.C. 41(a)(1)(F)

has been paid, or an international design application filed under the

Hague Agreement in which the Office has received a copy of the

international registration pursuant to Hague Agreement Article 10.

(2) A provisional application as used in this

chapter means a U.S. national application for patent filed in the Office

under

35 U.S.C. 111(b)

.

(3) A nonprovisional application as used in this

chapter means either a U.S. national application for patent which was

filed in the Office under

35 U.S.C. 111(a)

, an

international application filed under the Patent Cooperation Treaty in

which the basic national fee under

35 U.S.C. 41(a)(1)(F)

has been paid, or an international design application filed under the

Hague Agreement in which the Office has received a copy of the

international registration pursuant to Hague Agreement Article 10.

(b) An international application as used in this chapter

means an international application for patent filed under the Patent

Cooperation Treaty prior to entering national processing at the Designated

Office stage.

*****

(l) Hague Agreement as used in this chapter means

the Geneva Act of the Hague Agreement Concerning the International Registration

of Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and

Hague Agreement Article as used in this chapter means an Article under the

Hague Agreement.

e Patent

Cooperation Treaty prior to entering national processing at the Designated

Office stage.

*****

(l) Hague Agreement as used in this chapter means

the Geneva Act of the Hague Agreement Concerning the International Registration

of Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and

Hague Agreement Article as used in this chapter means an Article under the

Hague Agreement.

(m) Hague Agreement Regulations as used in this

chapter means the Common Regulations Under the 1999 Act and the 1960 Act of the

Hague Agreement, and Hague Agreement Rule as used in this chapter means one of

the Hague Agreement Regulations.

(n) An international design application as used in

this chapter means an application for international registration of a design

filed under the Hague Agreement. Unless otherwise clear from the wording,

reference to "design application" or "application for a design patent" in this

chapter includes an international design application that designates the United

States.

I.

APPLICATIONS FILED UNDER 35 U.S.C. 111

Applications filed under

35 U.S.C. 111(a)

include original

nonprovisional utility, plant, design, divisional, continuation, and

continuation-in-part applications filed under

37 CFR 1.53(b)

, reissue

applications filed under

37 CFR 1.53(b)

, and design patent

continued prosecution applications (CPAs) filed under

37 CFR

1.53(d)

. See

MPEP § 601.01(a)

for an overview of

the procedures and requirements for filing applications under

35 U.S.C.

111(a)

.

For details regarding reissue, design, and plant patent

applications, see

MPEP

Chapters 1400

,

1500

, and

1600

,

respectively. For details regarding divisional, continuation, and

continuation-in-part applications, see

MPEP §§

201.06

et seq.

,

201.07

, and

201.08

, respectively. See

MPEP §

201.06(d)

for a discussion of continued prosecution

applications filed under

37 CFR 1.53(d)

5 U.S.C.

111(a)

.

For details regarding reissue, design, and plant patent

applications, see

MPEP

Chapters 1400

,

1500

, and

1600

,

respectively. For details regarding divisional, continuation, and

continuation-in-part applications, see

MPEP §§

201.06

et seq.

,

201.07

, and

201.08

, respectively. See

MPEP §

201.06(d)

for a discussion of continued prosecution

applications filed under

37 CFR 1.53(d)

.

Effective December 18, 2013, the Patent Law Treaties

Implementation Act of 2012 (PLTIA) amended the patent laws to implement the

provisions of the Patent Law Treaty in title II. Notable changes included the filing

date requirements for nonprovisional applications filed under

35 U.S.C.

111(a)

. Unless the application is for a design patent,

nonprovisional applications filed under

35 U.S.C. 111(a)

on or after

December 18, 2013, are no longer required to include at least one claim or any

drawings in order to receive a filing date for the application. See

MPEP §§

601.01(e)

and

601.01(f)

. The filing date of an

application for a design patent is the date on which the Office receives the

specification including at least one claim and any required drawings. See

35

U.S.C. 171(c)

. In addition, 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. See

MPEP §

601.01(a)

, subsection III.

Applications filed under

35 U.S.C.

111(b)

are provisional applications for patent and are filed

under

37 CFR

1.53(c)

. Significant differences between nonprovisional

applications filed under

35 U.S.C. 111(a)

and provisional

applications filed under

35 U.S.C. 111(b)

include the

following:

(A) No claim is required in a provisional application.

(B) No oath or declaration is required in a provisional

application

s filed under

35 U.S.C.

111(b)

are provisional applications for patent and are filed

under

37 CFR

1.53(c)

. Significant differences between nonprovisional

applications filed under

35 U.S.C. 111(a)

and provisional

applications filed under

35 U.S.C. 111(b)

include the

following:

(A) No claim is required in a provisional application.

(B) No oath or declaration is required in a provisional

application.

(C) Provisional applications will not be examined for

patentability.

(D) A provisional application is not entitled to

claim priority to any foreign application or the benefit of any earlier filed

national application.

(E) A design patent application is not entitled to

claim the benefit of a provisional application (See

35 U.S.C.

172

and

37 CFR 1.53(c)(4)

).

See

MPEP §

201.04

for detailed information regarding provisional

applications.

For applications not filed under

35 U.S.C.

111

, see

MPEP Chapters 1800

and

2900

for details regarding international applications

(PCT) and international design applications, respectively.

II.

INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES

35 U.S.C. 363

International application designating the

United States: Effect.

An international application designating the United

States shall have the effect, from its international filing date under article 11

of the treaty, of a national application for patent regularly filed in the Patent

and Trademark Office.

37 CFR

1.9(a)(1)

defines a national application as a U.S. application

which was filed in the Office under

35 U.S.C. 111

, an international

application filed under the Patent Cooperation Treaty in which the basic national fee

under

35 U.S.C.

41(a)(1)(F)

has been paid, or an international design

application filed under the Hague Agreement in which the Office has received a copy

of the international registration pursuant to Hague Agreement Article 10

a U.S. application

which was filed in the Office under

35 U.S.C. 111

, an international

application filed under the Patent Cooperation Treaty in which the basic national fee

under

35 U.S.C.

41(a)(1)(F)

has been paid, or an international design

application filed under the Hague Agreement in which the Office has received a copy

of the international registration pursuant to Hague Agreement Article 10.

Note that

37 CFR 1.9(b)

defines an

international application for patent as one filed under the Patent Cooperation Treaty

prior to entering national processing at the Designated Office stage.

Treatment of a national application under

35 U.S.C.

111

and a national stage application (a national application

which entered the national stage from an international application in which the

conditions of

37 CFR 1.9(a)(1)

have been satisfied) are similar but not

identical.

See

MPEP § 1893.03

et seq.

for examination of international applications in the

national stage, and

MPEP § 1896

for a description of the differences between a

nonprovisional application filed under

35 U.S.C. 111(a)

and an

international application filed under the Patent Cooperation Treaty that entered the

national stage. Note in particular the following examples:

(A) Restriction practice as explained in

MPEP §

806

et seq.

is applied to national applications under

35

U.S.C. 111(a)

while unity of invention practice as

explained in

MPEP §§ 1850

and

1893.03(d)

is applied to national stage applications.

(B) National nonprovisional applications filed under

35

U.S.C. 111(a)

without an executed oath or declaration,

basic filing fee, search fee, or examination fee are governed by the

notification practice set forth in

37 CFR 1.53(f)

, as are

utility and plant patent applications filed on or after December 18, 2013,

without a claim. Incomplete national stage applications are governed by the

notification practice set forth in

37 CFR 1.495.

III.

INTERNATIONAL DESIGN APPLICATION DESIGNATING THE UNITED STATES

35 U.S.C. 385

Effect of international design

application

governed by the

notification practice set forth in

37 CFR 1.53(f)

, as are

utility and plant patent applications filed on or after December 18, 2013,

without a claim. Incomplete national stage applications are governed by the

notification practice set forth in

37 CFR 1.495.

III.

INTERNATIONAL DESIGN APPLICATION DESIGNATING THE UNITED STATES

35 U.S.C. 385

Effect of international design

application.

An international design application designating

the United States shall have the effect, for all purposes, from its filing date

determined in accordance with

section 384

, of an application

for patent filed in the Patent and Trademark Office pursuant to chapter 16.

37 CFR 1.9 Definitions.

(a)

(1) A national application as used in this

chapter means either a U.S. application for patent which was filed in

the Office under

35 U.S.C. 111

, an

international application filed under the Patent Cooperation Treaty in

which the basic national fee under

35 U.S.C.

41(a)(1)(F)

has been paid, or an international

design application filed under the Hague Agreement in which the Office

has received a copy of the international registration pursuant to

Hague Agreement Article 10.

(2) A provisional application as used in

this chapter means a U.S. national application for patent filed in the

Office under

35 U.S.C.

111(b)

.

(3) A nonprovisional application as used in

this chapter means either a U.S. national application for patent which

was filed in the Office under

35 U.S.C.

111(a)

, an international application filed under

the Patent Cooperation Treaty in which the basic national fee under

35 U.S.C. 41(a)(1)(F)

has been paid, or an

international design application filed under the Hague Agreement in

which the Office has received a copy of the international registration

pursuant to Hague Agreement Article 10.

*****

r patent which

was filed in the Office under

35 U.S.C.

111(a)

, an international application filed under

the Patent Cooperation Treaty in which the basic national fee under

35 U.S.C. 41(a)(1)(F)

has been paid, or an

international design application filed under the Hague Agreement in

which the Office has received a copy of the international registration

pursuant to Hague Agreement Article 10.

*****

(l) Hague Agreement as used in this chapter

means the Geneva Act of the Hague Agreement Concerning the International

Registration of Industrial Designs adopted at Geneva, Switzerland, on July

2, 1999, and Hague Agreement Article as used in this chapter means an

Article under the Hague Agreement.

(m) Hague Agreement Regulations as used in

this chapter means the Common Regulations Under the 1999 Act and the 1960

Act of the Hague Agreement, and Hague Agreement Rule as used in this chapter

means one of the Hague Agreement Regulations.

(n) An international design application as

used in this chapter means an application for international registration of

a design filed under the Hague Agreement. Unless otherwise clear from the

wording, reference to "design application" or "application for a design

patent" in this chapter includes an international design application that

designates the United States.

Title I of the Patent Law Treaties Implementation Act of 2012

(PLTIA), Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012) implemented the Hague

Agreement Concerning International Registration of Industrial Designs. The Hague

Agreement is an international agreement that enables an applicant to file a single

international design application which may have the effect of an application for

protection for the design(s) in countries and/or intergovernmental organizations that

are parties to the Hague Agreement (the “Contracting Parties”) designated in the

application. The United States is a Contracting Party to the Hague Agreement, which

took effect with respect to the United States on May 13, 2015

single

international design application which may have the effect of an application for

protection for the design(s) in countries and/or intergovernmental organizations that

are parties to the Hague Agreement (the “Contracting Parties”) designated in the

application. The United States is a Contracting Party to the Hague Agreement, which

took effect with respect to the United States on May 13, 2015. The Hague Agreement is

administered by the International Bureau of the World Intellectual Property

Organization (“the International Bureau”).

See

MPEP Chapter 2900

for information

regarding international design applications.