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37 CFR 1.53 Application number, filing date, and completion of application.

(a)

Application number.

Any papers received in the Patent and

Trademark Office which purport to be an application for a patent will be assigned

an application number for identification purposes.

(b)

Application filing requirements - Nonprovisional application.

The filing date of an application for patent filed under this section, other than

an application for a design patent or provisional application under paragraph (c)

of this section, is the date on which a specification, with or without claims, is

received in Office. The filing date of an application for a design patent filed

under this section, except for a continued prosecution application under paragraph

(d) of this section, is the date on which the specification as prescribed by

35 U.S.C.

112

, including at least one claim, and any required drawings

are received in the Office. No new matter may be introduced into an application

after its filing date. A continuing application, which may be a continuation,

divisional, or continuation-in-part application, may be filed under the conditions

specified in

35 U.S.C. 120

121

365(c)

386(c)

and

§ 1.78

(1) A continuation or divisional application that names as

inventors the same or fewer than all of the inventors named in the prior

application may be filed under this paragraph or paragraph (d) of this

section.

(2) A continuation-in-part application (which may disclose and

claim subject matter not disclosed in the prior application) or a

continuation or divisional application naming an inventor not named in the

prior application must be filed under this paragraph.

the same or fewer than all of the inventors named in the prior

application may be filed under this paragraph or paragraph (d) of this

section.

(2) A continuation-in-part application (which may disclose and

claim subject matter not disclosed in the prior application) or a

continuation or divisional application naming an inventor not named in the

prior application must be filed under this paragraph.

(c)

Application filing requirements - Provisional application.

The

filing date of a provisional application is the date on which a specification,

with or without claims, is received in the Office. No amendment, other than to

make the provisional application comply with the patent statute and all applicable

regulations, may be made to the provisional application after the filing date of

the provisional application.

(1) A provisional application must also include the cover sheet

required by

§ 1.51(c)(1)

, which may

be an application data sheet (

§ 1.76

), or a cover

letter identifying the application as a provisional application. Otherwise,

the application will be treated as an application filed under paragraph (b)

of this section.

(2) An application for patent filed under paragraph (b) of this

section may be converted to a provisional application and be accorded the

original filing date of the application filed under paragraph (b) of this

section. The grant of such a request for conversion will not entitle

applicant to a refund of the fees that were properly paid in the application

filed under paragraph (b) of this section. Such a request for conversion

must be accompanied by the processing fee set forth in

1.17(q)

and be filed prior to the earliest of:

(i) Abandonment of the application filed under paragraph

aragraph (b) of this

section. The grant of such a request for conversion will not entitle

applicant to a refund of the fees that were properly paid in the application

filed under paragraph (b) of this section. Such a request for conversion

must be accompanied by the processing fee set forth in

1.17(q)

and be filed prior to the earliest of:

(i) Abandonment of the application filed under paragraph

(b) of this section;

(ii) Payment of the issue fee on the application filed

under paragraph (b) of this section; or

(iii) Expiration of twelve months after the filing date of

the application filed under paragraph (b) of this section.

(3) A provisional application filed under paragraph (c) of this

section may be converted to a nonprovisional application filed under

paragraph (b) of this section and accorded the original filing date of the

provisional application. The conversion of a provisional application to a

nonprovisional application will not result in either the refund of any fee

properly paid in the provisional application or the application of any such

fee to the filing fee, or any other fee, for the nonprovisional application.

Conversion of a provisional application to a nonprovisional application

under this paragraph will result in the term of any patent to issue from the

application being measured from at least the filing date of the provisional

application for which conversion is requested. Thus, applicants should

consider avoiding this adverse patent term impact by filing a nonprovisional

application claiming the benefit of the provisional application under

U.S.C. 119(e)

, rather than converting the provisional

application into a nonprovisional application pursuant to this paragraph. A

request to convert a provisional application to a nonprovisional application

must be accompanied by the fee set forth in

1.17(i)

and an amendment including at least one claim

as prescribed by

35 U.S.C

ation claiming the benefit of the provisional application under

U.S.C. 119(e)

, rather than converting the provisional

application into a nonprovisional application pursuant to this paragraph. A

request to convert a provisional application to a nonprovisional application

must be accompanied by the fee set forth in

1.17(i)

and an amendment including at least one claim

as prescribed by

35 U.S.C. 112(b)

, unless

the provisional application under paragraph (c) of this section otherwise

contains at least one claim as prescribed by

35 U.S.C.

112(b)

. The nonprovisional application resulting from

conversion of a provisional application must also include the filing fee,

search fee, and examination fee for a nonprovisional, and the surcharge

required by

§ 1.16(f)

if either the

basic filing fee for a nonprovisional application or the inventor's oath or

declaration was not present on the filing date accorded the resulting

nonprovisional application (

i.e.,

the filing date of the

original provisional application). A request to convert a provisional

application to a nonprovisional application must also be filed prior to the

earliest of:

(i) Abandonment of the provisional application filed under

paragraph (c) of this section; or

(ii) Expiration of twelve months after the filing date of

the provisional application filed under paragraph (c) of this

section.

(4) A provisional application is not entitled to the right of

priority under

35 U.S.C. 119

365(a)

, or

386(a)

§ 1.55

, or to the

benefit of an earlier filing date under

35 U.S.C.

120

121

365(c)

, or

386(c)

§ 1.78

of any other application. No claim for priority

under

35 U.S.C. 119(e)

§ 1.78(a)

may be made in a design application based

on a provisional application

section.

(4) A provisional application is not entitled to the right of

priority under

35 U.S.C. 119

365(a)

, or

386(a)

§ 1.55

, or to the

benefit of an earlier filing date under

35 U.S.C.

120

121

365(c)

, or

386(c)

§ 1.78

of any other application. No claim for priority

under

35 U.S.C. 119(e)

§ 1.78(a)

may be made in a design application based

on a provisional application. A provisional application disclosing

nucleotide and/or amino acid sequences is not required to include a separate

sequence listing; however, if submitted in a provisional application filed

on or after July 1, 2022, any submission of nucleotide and/or amino acid

sequence data must be by way of a “Sequence Listing XML” in compliance with

§§ 1.831

through

1.834

(d)

Application filing requirements - Continued prosecution (nonprovisional)

application.

(1) A continuation or divisional application (but not a

continuation-in-part) of a prior nonprovisional application may be filed as

a continued prosecution application under this paragraph, provided that:

(i) The application is for a design patent;

(ii) The prior nonprovisional application is a design

application, but not an international design application , that is

complete as defined by

§ 1.51(b)

, except

for the inventor’s oath or declaration if the application is filed on

or after September 16, 2012, and the prior nonprovisional application

contains an application data sheet meeting the conditions specified in

§ 1.53(f)(3)(i)

;

and

(iii) The application under this paragraph is filed before

the earliest of:

(A) Payment of the issue fee on the prior

application, unless a petition under

§ 1.313(c)

is granted in the prior

application;

(B) Abandonment of the prior application; or

application.

(2) The filing date of a continued prosecution application is

the date on which a request on a separate paper for an application under

this paragraph is filed. An application filed under this paragraph:

the prior

application, unless a petition under

§ 1.313(c)

is granted in the prior

application;

(B) Abandonment of the prior application; or

application.

(2) The filing date of a continued prosecution application is

the date on which a request on a separate paper for an application under

this paragraph is filed. An application filed under this paragraph:

(i) Must identify the prior application;

(ii) Discloses and claims only subject matter disclosed in

the prior application;

(iii) Names as inventors the same inventors named in the

prior application on the date the application under this paragraph was

filed, except as provided in paragraph (d)(4) of this section;

(iv) Includes the request for an application under this

paragraph, will utilize the file jacket and contents of the prior

application, including the specification, drawings and the inventor's

oath or declaration from the prior application, to constitute the new

application, and will be assigned the application number of the prior

application for identification purposes; and

(v) Is a request to expressly abandon the prior

application as of the filing date of the request for an application

under this paragraph.

(3) The filing fee, search fee, and examination fee for a

continued prosecution application filed under this paragraph are the basic

filing fee as set forth in

§ 1.16(b)

, the search

fee as set forth in

§ 1.16(l)

, and the

examination fee as set forth in

§ 1.16(p)

Is a request to expressly abandon the prior

application as of the filing date of the request for an application

under this paragraph.

(3) The filing fee, search fee, and examination fee for a

continued prosecution application filed under this paragraph are the basic

filing fee as set forth in

§ 1.16(b)

, the search

fee as set forth in

§ 1.16(l)

, and the

examination fee as set forth in

§ 1.16(p)

(4) An application filed under this paragraph may be filed by

fewer than all the inventors named in the prior application, provided that

the request for an application under this paragraph when filed is

accompanied by a statement requesting deletion of the name or names of the

person or persons who are not inventors of the invention being claimed in

the new application. No person may be named as an inventor in an application

filed under this paragraph who was not named as an inventor in the prior

application on the date the application under this paragraph was filed,

except by way of correction of inventorship under

§ 1.48

(5) Any new change must be made in the form of an amendment to

the prior application as it existed prior to the filing of an application

under this paragraph. No amendment in an application under this paragraph (a

continued prosecution application) may introduce new matter or matter that

would have been new matter in the prior application. Any new specification

filed with the request for an application under this paragraph will not be

considered part of the original application papers, but will be treated as a

substitute specification in accordance with

§ 1.125

nt in an application under this paragraph (a

continued prosecution application) may introduce new matter or matter that

would have been new matter in the prior application. Any new specification

filed with the request for an application under this paragraph will not be

considered part of the original application papers, but will be treated as a

substitute specification in accordance with

§ 1.125

(6) The filing of a continued prosecution application under this

paragraph will be construed to include a waiver of confidentiality by the

applicant under

35 U.S.C. 122

to the

extent that any member of the public, who is entitled under the provisions

§ 1.14

to access to, copies of, or information

concerning either the prior application or any continuing application filed

under the provisions of this paragraph, may be given similar access to,

copies of, or similar information concerning the other application or

applications in the file jacket.

(7) A request for an application under this paragraph is the

specific reference required by

35 U.S.C. 120

to every

application assigned the application number identified in such request. No

amendment in an application under this paragraph may delete this specific

reference to any prior application.

(8) In addition to identifying the application number of the

prior application, applicant should furnish in the request for an

application under this paragraph the following information relating to the

prior application to the best of his or her ability:

(i) Title of invention;

(ii) Name of applicant(s); and

(iii) Correspondence address.

(9) See

§ 1.103(b)

for

requesting a limited suspension of action in an application filed under this

paragraph.

ber of the

prior application, applicant should furnish in the request for an

application under this paragraph the following information relating to the

prior application to the best of his or her ability:

(i) Title of invention;

(ii) Name of applicant(s); and

(iii) Correspondence address.

(9) See

§ 1.103(b)

for

requesting a limited suspension of action in an application filed under this

paragraph.

(e)

Failure to meet filing date requirements.

(1) If an application deposited under paragraph (b), (c), or (d)

of this section does not meet the requirements of such paragraph to be

entitled to a filing date, applicant will be so notified, if a

correspondence address has been provided, and given a period of time within

which to correct the filing error. If, however, a request for an application

under paragraph (d) of this section does not meet the requirements of that

paragraph because the application in which the request was filed is not a

design application, and if the application in which the request was filed

was itself filed on or after June 8, 1995, the request for an application

under paragraph (d) of this section will be treated as a request for

continued examination under

§ 1.114

(2) Any request for review of a notification pursuant to

paragraph (e)(1) of this section, or a notification that the original

application papers lack a portion of the specification or drawing(s), must

be by way of a petition pursuant to this paragraph accompanied by the fee

set forth in

§ 1.17(f)

. In the

absence of a timely (

§ 1.181(f))

petition

pursuant to this paragraph, the filing date of an application in which the

applicant was notified of a filing error pursuant to paragraph (e)(1) of

this section will be the date the filing error is corrected.

n of the specification or drawing(s), must

be by way of a petition pursuant to this paragraph accompanied by the fee

set forth in

§ 1.17(f)

. In the

absence of a timely (

§ 1.181(f))

petition

pursuant to this paragraph, the filing date of an application in which the

applicant was notified of a filing error pursuant to paragraph (e)(1) of

this section will be the date the filing error is corrected.

(3) If an applicant is notified of a filing error pursuant to

paragraph (e)(1) of this section, but fails to correct the filing error

within the given time period or otherwise timely (

§ 1.181(f)

) take action pursuant to this paragraph,

proceedings in the application will be considered terminated. Where

proceedings in an application are terminated pursuant to this paragraph, the

application may be disposed of, and any filing fees, less the handling fee

set forth in

§ 1.21(n)

, will be

refunded.

(f)

Completion of application subsequent to filing—Nonprovisional (including

continued prosecution or reissue) application.

(1) If an application which has been accorded a filing date

pursuant to paragraph (b) or (d) of this section does not include the basic

filing fee, the search fee, or the examination fee, or if an application

which has been accorded a filing date pursuant to paragraph (b) of this

section does not include at least one claim or the inventor's oath or

declaration (

§ 1.63

1.64

§ 1.162

1.175

), and the applicant has provided a

correspondence address (

§ 1.33(a)

), the

applicant will be notified and given a period of time within which to pay

the basic filing fee, search fee, and examination fee, and pay the surcharge

if required by

§ 1.16(f)

to avoid

abandonment.

his

section does not include at least one claim or the inventor's oath or

declaration (

§ 1.63

1.64

§ 1.162

1.175

), and the applicant has provided a

correspondence address (

§ 1.33(a)

), the

applicant will be notified and given a period of time within which to pay

the basic filing fee, search fee, and examination fee, and pay the surcharge

if required by

§ 1.16(f)

to avoid

abandonment.

(2) If an application which has been accorded a filing date

pursuant to paragraph (b) of this section does not include the basic filing

fee, search fee, examination fee, at least one claim, or the inventor's oath

or declaration, and the applicant has not provided a correspondence address

(

1.33(a)

), the applicant has three months from the

filing date of the application within which to file a claim or claims, pay

the basic filing fee, search fee, and examination fee, and pay the surcharge

required by

§ 1.16(f)

to avoid

abandonment.

(3) The inventor's oath or declaration in an application under

1.53(b)

must also be filed within the period specified

in paragraph (f)(1) or (f)(2) of this section, except that the filing of the

inventor's oath or declaration may be postponed until the application is

otherwise in condition for allowance under the conditions specified in

paragraphs (f)(3)(i) and (f)(3)(ii) of this section.

(i) The application must be an original

(non-reissue) application that contains an application data sheet in

accordance with

§ 1.76

identifying:

(A) Each inventor by his or her legal

name;

(B) A mailing address where the

inventor customarily receives mail, and residence, if an

inventor lives at a location which is different from where the

inventor customarily receives mail, for each inventor.

ion.

(i) The application must be an original

(non-reissue) application that contains an application data sheet in

accordance with

§ 1.76

identifying:

(A) Each inventor by his or her legal

name;

(B) A mailing address where the

inventor customarily receives mail, and residence, if an

inventor lives at a location which is different from where the

inventor customarily receives mail, for each inventor.

(ii) The applicant must file each required

oath or declaration in compliance with

1.63

, or substitute statement in compliance with

§ 1.64

, no later

than the date on which the issue fee for the patent is paid. If the

applicant is notified in a notice of allowability that an oath or

declaration in compliance with

§ 1.63

, or

substitute statement in compliance with

1.64

, executed by or with respect to each named

inventor has not been filed, the applicant must file each required

oath or declaration in compliance with

1.63

, or substitute statement in compliance with

§ 1.64

, no later

than the date on which the issue fee is paid to avoid abandonment.

This time period is not extendable under

1.136

(see

§ 1.136(c)

). The

Office may dispense with the notice provided for in paragraph (f)(1)

of this section if each required oath or declaration in compliance

with

§ 1.63

, or

substitute statement in compliance with

1.64

, has been filed before the application is

in condition for allowance.

(4) If the excess claims fees required by

1.16(h)

and

This time period is not extendable under

1.136

(see

§ 1.136(c)

). The

Office may dispense with the notice provided for in paragraph (f)(1)

of this section if each required oath or declaration in compliance

with

§ 1.63

, or

substitute statement in compliance with

1.64

, has been filed before the application is

in condition for allowance.

(4) If the excess claims fees required by

1.16(h)

and

(i)

and multiple

dependent claim fee required by

§ 1.16(j)

are not paid

on filing or on later presentation of the claims for which the excess claims

or multiple dependent claim fees are due, the fees required by

1.16(h), (i), and (j)

, must be paid or the claims

canceled by amendment prior to the expiration of the time period set for

reply by the Office in any notice of fee deficiency. If the application size

fee required by

§ 1.16(s)

(if any) is

not paid on filing or on later presentation of the amendment necessitating a

fee or additional fee under

§ 1.16(s)

, the fee

required by

§ 1.16(s)

must be paid

prior to the expiration of the time period set for reply by the Office in

any notice of fee deficiency in order to avoid abandonment.

(5) This paragraph applies to continuation or divisional

applications under paragraphs (b) or (d) of this section and to

continuation-in-part applications under paragraph (b) of this section.

See

1.63(d)

concerning the submission of a copy of the

inventor's oath or declaration from the prior application for a continuing

application under paragraph (b) of this section.

(6) If applicant does not pay the basic filing fee

during the pendency of the application, the Office may dispose of the

application.

section and to

continuation-in-part applications under paragraph (b) of this section.

See

1.63(d)

concerning the submission of a copy of the

inventor's oath or declaration from the prior application for a continuing

application under paragraph (b) of this section.

(6) If applicant does not pay the basic filing fee

during the pendency of the application, the Office may dispose of the

application.

(g)

Completion of application subsequent to filing—Provisional

application.

(1) If a provisional application which has been accorded a

filing date pursuant to paragraph (c) of this section does not include the

cover sheet required by

§ 1.51(c)(1)

or the

basic filing fee (

§ 1.16(d)

), and

applicant has provided a correspondence address (

1.33(a))

, applicant will be notified and given a

period of time within which to pay the basic filing fee, file a cover sheet

(

1.51(c)(1))

, and pay the surcharge required by

1.16(g)

to avoid abandonment.

(2) If a provisional application which has been accorded a

filing date pursuant to paragraph (c) of this section does not include the

cover sheet required by

§ 1.51(c)(1)

or the

basic filing fee (

§ 1.16(d)

), and

applicant has not provided a correspondence address (

1.33(a)

), applicant has two months from the filing

date of the application within which to pay the basic filing fee, file a

cover sheet (

§ 1.51(c)(1)

), and pay

the surcharge required by

§ 1.16(g)

to avoid

abandonment.

(3) If the application size fee required by

1.16(s)

(if any) is not paid on filing, the fee

required by

§ 1.16(s)

must be paid

prior to the expiration of the time period set for reply by the Office in

any notice of fee deficiency in order to avoid abandonment.

(4) If applicant does not pay the basic filing fee during the

pendency of the application, the Office may dispose of the application.

nt.

(3) If the application size fee required by

1.16(s)

(if any) is not paid on filing, the fee

required by

§ 1.16(s)

must be paid

prior to the expiration of the time period set for reply by the Office in

any notice of fee deficiency in order to avoid abandonment.

(4) If applicant does not pay the basic filing fee during the

pendency of the application, the Office may dispose of the application.

(h)

Subsequent treatment of application - Nonprovisional (including continued

prosecution) application.

An application for a patent filed under

paragraphs (b) or (d) of this section will not be placed on the files for

examination until all its required parts, complying with the rules relating

thereto, are received, except that the inventor's oath or declaration may be filed

when the application is otherwise in condition for allowance pursuant to paragraph

(f)(3) of this section and minor informalities may be waived subject to subsequent

correction whenever required.

(i)

Subsequent treatment of application - Provisional application.

A provisional application for a patent filed under paragraph (c) of this section

will not be placed on the files for examination and will become abandoned no later

than twelve months after its filing date pursuant to

35 U.S.C.

111(b)(1)

INCOMPLETE NONPROVISIONAL APPLICATIONS FILED UNDER 37 CFR 1.53(b)

Utility Applications

If the nonprovisional utility application papers filed

under

37 CFR

1.53(b)

do not include at least a specification or if the

submitted papers are too informal to be given a filing date, the case is held in the

Office of Patent Application Processing (OPAP) as an incomplete application and the

applicant is informed of the shortcomings of the papers. No filing date is granted until

the incompleteness is corrected.

Design Applications

If the nonprovisional design application papers filed

under

37 CFR

1.53(b)

do not include at least a specification containing a

description and at least one claim and a drawing, if necessary under

35 U.S.C

ssing (OPAP) as an incomplete application and the

applicant is informed of the shortcomings of the papers. No filing date is granted until

the incompleteness is corrected.

Design Applications

If the nonprovisional design application papers filed

under

37 CFR

1.53(b)

do not include at least a specification containing a

description and at least one claim and a drawing, if necessary under

35 U.S.C.

113

(first sentence), or if the submitted application papers

are too informal to be given a filing date, the case is held in the Office of Patent

Application Processing (OPAP) as an incomplete application and the applicant is

informed of the shortcomings of the papers. No filing date is granted until the

incompleteness is corrected.

Handling of Incomplete Applications

A Notice of Incomplete Application is prepared and mailed by OPAP

when nonprovisional application papers filed under

37 CFR 1.53(b)

are deemed incomplete under

35 U.S.C. 111(a)

Even though an application purports to include the component parts

necessary to obtain a filing date, the application will still be held to be incomplete

and a filing date will be refused if the component parts fail to satisfy the

requirements set forth above.

For example, if the documents purporting to be a specification are so

obviously informal and incoherent that they clearly do not constitute a specification as

required by

35 U.S.C.

112

and

37 CFR 1.71

, the application is not

acceptable for examination and it will not be accorded a filing date until corrections

are made. The filing date of the application will be the date the corrections are made.

Filing dates are accorded to nonprovisional applications filed under

37 CFR

1.53(b)

submitted without the names of all the inventors, the

required fees (basic filing fee, and search and examination fees (for applications filed

on or after December 8, 2004)), at least one claim (for applications filed on or after

December 13, 2013) and/or the inventor's oath or declaration

the corrections are made.

Filing dates are accorded to nonprovisional applications filed under

37 CFR

1.53(b)

submitted without the names of all the inventors, the

required fees (basic filing fee, and search and examination fees (for applications filed

on or after December 8, 2004)), at least one claim (for applications filed on or after

December 13, 2013) and/or the inventor's oath or declaration. In such cases, a notice is

mailed by OPAP requiring the appropriate fees, claims (for applications filed on or

after December 13, 2013) and for applications filed before September 16, 2012, the oath

or declaration (which must include the names of all the inventors), accompanied by a

surcharge (

37 CFR

1.16(f)

For applications filed on or after September 16, 2012

(except reissue applications), applicant may postpone filing the inventor’s oath or

declaration until the application is in condition for allowance if an application data

sheet (ADS) in compliance with

37 CFR 1.76

is filed identifying:

(1) each inventor by their legal name; and (2) for each inventor, a mailing address

where the inventor customarily receives mail, and residence, if the inventor lives at a

location which is different from where the inventor customarily receives mail. See

37 CFR

1.53(f)(3)

. Applicant must file the inventor’s oath or declaration

no later than the date on which the issue fee is paid. See

35 U.S.C.

115(f)

The Office has modified the missing parts practice for

applications (other than reissue applications) filed on or after September 16, 2012

f the inventor lives at a

location which is different from where the inventor customarily receives mail. See

37 CFR

1.53(f)(3)

. Applicant must file the inventor’s oath or declaration

no later than the date on which the issue fee is paid. See

35 U.S.C.

115(f)

The Office has modified the missing parts practice for

applications (other than reissue applications) filed on or after September 16, 2012. If

an application under

37 CFR 1.53(b)

filed on or after

September 16, 2012, contains the applicable filing fees (basic filing fee, search fee,

examination fee, any applicable excess claims fee, and any applicable application size

fee), the surcharge required by

37 CFR 1.16(f)

, and a signed ADS

providing the required inventor information, but does not include the inventor’s oath or

declaration, the Office will not issue a Notice to File Missing Parts requiring the

applicant to file the inventor’s oath or declaration. Instead, the Office may send an

informational notice notifying the applicant that the inventor’s oath or declaration has

not been received or that there are deficiencies in an inventor’s oath or declaration

that was filed. If an application under

37 CFR 1.53(b)

filed on or after

September 16, 2012, that does not contain the inventor’s oath or declaration also does

not contain the applicable filing fees, or the surcharge required by

37 CFR 1.16(f)

, or

a signed ADS providing the inventor information, the Office will issue a Notice to File

Missing Parts giving the applicant a time period (usually two months) within which to

file the missing filing fees, the surcharge required by

37 CFR 1.16(f)

and a signed ADS providing the inventor information (or the inventor’s oath or

declaration) to avoid abandonment

urcharge required by

37 CFR 1.16(f)

, or

a signed ADS providing the inventor information, the Office will issue a Notice to File

Missing Parts giving the applicant a time period (usually two months) within which to

file the missing filing fees, the surcharge required by

37 CFR 1.16(f)

and a signed ADS providing the inventor information (or the inventor’s oath or

declaration) to avoid abandonment. If an application is in condition for allowance and

the required inventor’s oath or declaration (an oath or declaration under

37 CFR

1.63

, or a substitute statement under

37 CFR 1.64

executed by or with respect to each actual inventor) has not yet been filed, the Office

will issue a notice with the Notice of Allowability requiring the inventor’s oath or

declaration to be filed no later than the date on which the issue fee is paid.

For applications which have been accorded a filing date

under

37 CFR

1.53(b)

, if any of the basic filing fee, the search fee, or the

examination fee are paid on a date later than the filing date of the application, the

surcharge under

37 CFR

1.16(f)

is required. In addition to the basic filing fee, the

search fee, and the examination fee,

37 CFR 1.16(s)

sets forth the

application size fee for any application (including any reissue applications) filed

under

35 U.S.C.

111

, the specification and drawings of which exceed 100 sheets of

paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer

readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix”

filed in an American Standard Code for Information Interchange (ASCII) plain text file

or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a

read-only optical disc or via the USPTO patent electronic filing system in compliance

with the rules. See

CFR 1.52(f)

.The application size fee applies for each additional

50 sheets or fraction thereof over 100 sheets of paper

iled in an American Standard Code for Information Interchange (ASCII) plain text file

or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a

read-only optical disc or via the USPTO patent electronic filing system in compliance

with the rules. See

CFR 1.52(f)

.The application size fee applies for each additional

50 sheets or fraction thereof over 100 sheets of paper. Any “Sequence Listing” or CRF of

a “Sequence Listing” in compliance with

37 CFR 1.821(c) or (e)

, any

“Sequence Listing XML” in compliance with

37 CFR

1.831(a)

, and any “Computer Program Listing Appendix” in

compliance with

37 CFR

1.96(c)

submitted on a read-only optical disc

under

37 CFR

1.52(e)

or submitted in an ASCII plain text file or XML file (as

applicable) via the USPTO patent electronic filing system will be excluded when

determining the application size fee required by

37 CFR 1.16(s)

. See

37 CFR 1.52(f)(1)

and (2)

. See also

MPEP § 607

. The application size fee

required by

37 CFR

1.16(s)

must be paid prior to the expiration of the time period

set for reply by the Office in any notice of fee deficiency in order to avoid

abandonment (

37 CFR

1.53(f)(3)

). See

MPEP § 607

for additional information

regarding fees. In addition to the basic filing fee, the search fee, the examination

fee, and the application size fee required under

37 CFR 1.16

, the prescribed filing

fee (

37 CFR

1.51(b)(4)

) may include additional fees for filing more than 3

independent claims (

CFR 1.16(h)

), for filing a total of more than 20 claims

(

37 CFR

1.16(i)

), or for filing a multiple dependent claim

(

37 CFR

1.16(j)

). In those cases where the basic filing fee, the search

fee, the examination fee, and the application size fee are paid, but additional fees are

required, under

37 CFR

1.16

, a notice is mailed by OPAP or the Technology Center (TC),

requiring that the balance of the prescribed fee be paid

a total of more than 20 claims

(

37 CFR

1.16(i)

), or for filing a multiple dependent claim

(

37 CFR

1.16(j)

). In those cases where the basic filing fee, the search

fee, the examination fee, and the application size fee are paid, but additional fees are

required, under

37 CFR

1.16

, a notice is mailed by OPAP or the Technology Center (TC),

requiring that the balance of the prescribed fee be paid.

A nonprovisional application filed under

37 CFR 1.53(b)

may

be filed with a preliminary amendment which is limited to the cancellation of claims.

Any preliminary amendment, regardless of when it is filed, must be in compliance with

37 CFR

1.121

, e.g., it must include a complete listing of all of the

claims. Therefore, the Office strongly recommends that applicants file their

applications with a specification containing only the desired set of claims, rather than

filing the application with a preliminary amendment canceling claims. If such a

preliminary amendment canceling claims is filed, it will diminish the number of claims

to be considered for calculation of the filing fee. Any other changes to the application

should be the subject of a separate amendment which may be entered after the filing fee

has been calculated and the filing date granted. If a preliminary amendment which

cancels claims does not accompany the application at the time the application is filed,

and there is a fee deficiency, the notification of insufficient fee will inform the

inventor, attorney, or agent of the possibility of correcting the insufficient payment

by either (1) paying the additional required fee amount, or (2) filing an amendment

which cancels claims so that the remaining claims are covered by the fee submitted upon

filing. However, no refund will be made once the fee for claims is properly paid, even

though claims are later canceled, unless a petition for express abandonment under

37 CFR

1.138(d)

is granted. See

MPEP § 711.01

ient payment

by either (1) paying the additional required fee amount, or (2) filing an amendment

which cancels claims so that the remaining claims are covered by the fee submitted upon

filing. However, no refund will be made once the fee for claims is properly paid, even

though claims are later canceled, unless a petition for express abandonment under

37 CFR

1.138(d)

is granted. See

MPEP § 711.01

A filing date is normally granted before a review of the subject matter

claimed in a nonprovisional application. If a nonprovisional application filed under

37 CFR

1.53(b)

appears sufficient, the application is forwarded to the

examiner for consideration during the regular course of examination.

II.

INCOMPLETE PROVISIONAL APPLICATIONS

If the provisional application papers do not include at least a

specification containing a description and a drawing, if necessary under

35 U.S.C.

113

(first sentence) (for applications filed prior to March 18,

2013) or if the submitted application papers are too informal to be given a filing date,

the case is held in OPAP as an incomplete application and the applicant is informed of

the shortcomings of the papers. No filing date is granted until the incompleteness is

corrected.

Such incompleteness may consist of the omission of any one of the

following parts of an application. The component parts of a provisional application

necessary to obtain a filing date are:

A specification, with or without claims, as prescribed by

35 U.S.C.

112(a)

pre-AIA 35 U.S.C. 112

, first

paragraph, and

37 CFR

1.71

A drawing, if necessary under

35 U.S.C. 113

(first sentence) and

37 CFR

1.81(a)

(for applications filed prior to March 18, 2013).

Even though an application purports to include the component part(s)

necessary to obtain a filing date, the application will still be held to be incomplete

and a filing date will be refused if the component parts fail to satisfy the

requirements set forth above

1.71

A drawing, if necessary under

35 U.S.C. 113

(first sentence) and

37 CFR

1.81(a)

(for applications filed prior to March 18, 2013).

Even though an application purports to include the component part(s)

necessary to obtain a filing date, the application will still be held to be incomplete

and a filing date will be refused if the component parts fail to satisfy the

requirements set forth above. For example, if the documents purporting to be a

specification are so obviously informal and incoherent that they would clearly not

constitute a specification as required by

35 U.S.C. 112(a)

35 U.S.C.

112

, first paragraph, and

37 CFR 1.71

, the application would

not be acceptable and would not be accorded a filing date until corrections are made.

The filing date of the application would be the date the corrections were made. A

provisional application will not be examined. However, a provisional application which

does not include a cover sheet (

37 CFR 1.51(c)(1)

, which may be

an application data sheet (

37 CFR 1.76

) or a

cover letter, identifying the application as a provisional application, will be treated

as a nonprovisional application filed under

37 CFR 1.53(b)

. See

37 CFR

1.53(c)(1)

NOTE: No amendment, other than to make the provisional application

comply with the patent statute and all applicable regulations, may be made to the

provisional application after the filing date of the provisional application. See

37 CFR

1.53(c)

III.

INFORMAL APPLICATIONS

An application is informal if it is typed on both sides of the paper, or

is not permanent, legible, or reproducible. If such informalities are timely corrected,

the application is given the filing date on which the original informal papers were

filed

ons, may be made to the

provisional application after the filing date of the provisional application. See

37 CFR

1.53(c)

III.

INFORMAL APPLICATIONS

An application is informal if it is typed on both sides of the paper, or

is not permanent, legible, or reproducible. If such informalities are timely corrected,

the application is given the filing date on which the original informal papers were

filed.

OPAP accords a filing date, as of the date indicated by the “Office

Date” stamp (see

MPEP §

505

), to application papers which include a specification

containing a description and at least one claim (nonprovisional applications filed under

37 CFR

1.53(b)

prior to March 18, 2013 and design applications), and a

drawing, if necessary under

35 U.S.C. 113

(first sentence) and

37 CFR

1.53(b)

, but are informal because they do not comply with the

rules or notices. In such applications, OPAP will send a Notice (e.g., Notice to File

Corrected Application Papers) requiring correction of the informality. Failure to

correct the informality within the specified time results in abandonment of the

application.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.