Content of Provisional and Nonprovisional Applications

35 U.S.C. 111

Application.

[Editor Note: Applicable to any patent application filed under this provision

on or after December 18, 2013. See

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

or

pre-AIA 35

U.S.C. 111

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 (b) through (e)

of

section

112

, shall not be required in a provisional

application.

atent 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)

of this

title, 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)

.

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

pre-AIA 35

U.S.C. 111

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)

of this title, 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 1.51  General requisites of an application.

(a) Applications for patents must be made to the Director of the

United States Patent and Trademark Office. An application transmittal letter

limited to the transmittal of the documents and fees comprising a patent

application under this section may be signed by a juristic applicant or patent

owner.

s and other miscellaneous provisions of the AIA.

37 CFR 1.51  General requisites of an application.

(a) Applications for patents must be made to the Director of the

United States Patent and Trademark Office. An application transmittal letter

limited to the transmittal of the documents and fees comprising a patent

application under this section may be signed by a juristic applicant or patent

owner.

(b) A complete application filed under

§ 1.53(b)

or

§

1.53(d)

comprises:

(1) A specification as prescribed by

35 U.S.C.

112

, including a claim or claims, see

§§

1.71

to

1.77

;

(2) The inventor’s oath or declaration, see

§§

1.63

and

1.64

;

(3) Drawings, when necessary, see

§§

1.81

to

1.85

; and

(4) The prescribed filing fee, search fee, examination fee, and

application size fee, see

§ 1.16

.

(c) A complete provisional application filed under

§ 1.53(c)

comprises:

(1) A cover sheet identifying:

(i) The application as a provisional application,

(ii) The name or names of the inventor or inventors, (see

§ 1.41(a)(2)

),

(iii) The residence of each named inventor,

(iv) The title of the invention,

(v) The name and registration number of the attorney or

agent (if applicable),

(vi) The docket number used by the person filing the

application to identify the application (if applicable),

(vii) The correspondence address, and

(viii) The name of the U.S. Government agency and Government

contract number (if the invention was made by an agency of the U.S.

Government or under a contract with an agency of the U.S.

Government);

(2) A specification as prescribed by

35 U.S.C.

112(a)

, see §

1.71

;

(3) Drawings, when necessary, see

§§

1.81

to

1.85

; and

(4) The prescribed filing fee and application size fee, see

§

1.16

.

s, and

(viii) The name of the U.S. Government agency and Government

contract number (if the invention was made by an agency of the U.S.

Government or under a contract with an agency of the U.S.

Government);

(2) A specification as prescribed by

35 U.S.C.

112(a)

, see §

1.71

;

(3) Drawings, when necessary, see

§§

1.81

to

1.85

; and

(4) The prescribed filing fee and application size fee, see

§

1.16

.

(d) Applicants are encouraged to file an information disclosure

statement in nonprovisional applications. See

§ 1.97

and

§ 1.98

. No

information disclosure statement may be filed in a provisional application.

I.

GUIDELINES FOR DRAFTING A NONPROVISIONAL PATENT APPLICATION UNDER 35 U.S.C.

111(a)

The following guidelines illustrate the preferred layout and content of

patent applications filed under

35 U.S.C. 111(a)

. These guidelines

are suggested for the applicant’s use. See also

37 CFR 1.77

and

MPEP §

608.01(a)

. If an application data sheet (

37 CFR 1.76

) is

used, data supplied in the application data sheet need not be provided elsewhere in the

application with one exception for applications filed before September 16, 2012. For

such applications, the citizenship of each inventor must be provided in the oath or

declaration under

pre-AIA 37 CFR 1.63

even if this information is provided in the

application data sheet (see

pre-AIA 37 CFR 1.76(b)

). If there is

a discrepancy between the information submitted in an application data sheet and the

information submitted elsewhere in the application, the application data sheet will

control except for the naming of the inventors which is governed by

37 CFR 1.41

and, for applications filed before September 16, 2012, the citizenship of the inventors.

See

MPEP §

601.05

.

A complete application filed under

35 U.S.C. 111(a)

comprises a

specification, including claims, as prescribed by

35 U.S.C. 112

, drawings as

prescribed by

35

U.S.C. 113

, an oath or declaration as prescribed by

35 U.S.C.

115

, and the prescribed filing fee, search fee, examination fee

and application size fee

s filed before September 16, 2012, the citizenship of the inventors.

See

MPEP §

601.05

.

A complete application filed under

35 U.S.C. 111(a)

comprises a

specification, including claims, as prescribed by

35 U.S.C. 112

, drawings as

prescribed by

35

U.S.C. 113

, an oath or declaration as prescribed by

35 U.S.C.

115

, and the prescribed filing fee, search fee, examination fee

and application size fee.

Arrangement and Contents of the Specification

The following order of arrangement is preferable in framing the

specification. See also

MPEP § 608.01(a)

. Each of the lettered items should appear

in upper case, without underlining or bold type, as section headings.

(A) Title of the invention. (See

MPEP §

606

).

(B) Cross-reference to related applications. (See

MPEP § 211

et seq.

).

(C) Statement regarding federally sponsored research or

development. (See

MPEP § 310

).

(D) The names of the parties to a joint research agreement (see

37 CFR

1.71(g)

).

(E) An incorporation by reference statement regarding the material

in:

(1) One or more ASCII plain text files, submitted via the USPTO patent

electronic filing system or on one or more read-only optical discs (see

37 CFR 1.52(e)(8)

)

for the following document types:

(a) A “Computer Program Listing Appendix” (see 37 CFR

1.96(c));

(b) A “Sequence Listing” (see 37 CFR 1.821(c));

or

(c) “Large Tables” (see 37 CFR 1.58(c)).

(2) An XML file for a “Sequence Listing XML” (see 37 CFR

1.831(a)), submitted via the USPTO patent electronic filing system or on

one or more read-only optical discs (see 37 CFR 1.52(e)(8)).

(F) Statement regarding prior disclosures by an

inventor or joint inventor.

(G) Background of the invention. (See

MPEP §

608.01(c)

).

(1) Field of the invention.

));

or

(c) “Large Tables” (see 37 CFR 1.58(c)).

(2) An XML file for a “Sequence Listing XML” (see 37 CFR

1.831(a)), submitted via the USPTO patent electronic filing system or on

one or more read-only optical discs (see 37 CFR 1.52(e)(8)).

(F) Statement regarding prior disclosures by an

inventor or joint inventor.

(G) Background of the invention. (See

MPEP §

608.01(c)

).

(1) Field of the invention.

(2) Description of related art including information

disclosed under

37 CFR 1.97

and

37

CFR 1.98

.

(H) Brief summary of the invention. (See

MPEP §

608.01(d)

).

(I) Brief description of the several views of the drawing. (See

MPEP §

608.01(f)

).

(J) Detailed description of the invention. (See

MPEP §

608.01(g)

).

(K) Claim(s) (commencing on a separate sheet). (See

MPEP §

608.01(i)-(p)

).

(L) Abstract of the Disclosure (commencing on a separate sheet).

(See

MPEP §

608.01(b)

).

(M) “Sequence Listing”, if present and submitted as a PDF image

file via the USPTO patent electronic filing system or on physical sheets of

paper (see 37 CFR 1.821(c) (2) and (3)).

II.

GUIDELINES FOR DRAFTING A PROVISIONAL APPLICATION UNDER 35 U.S.C. 111(b)

A provisional application should preferably conform to the arrangement

guidelines for nonprovisional applications. The specification must, however, comply with

35 U.S.C.

112(a)

and refer to drawings, where necessary for an understanding

of the invention. Unlike an application filed under

35 U.S.C. 111(a)

which requires

claims before examination, a provisional application does not require claims.

Furthermore, no oath or declaration is required. See

MPEP §

201.04

.

A cover sheet providing identifying information is required for a

complete provisional application. In accordance with

37 CFR 1.51(c)(1)

the cover sheet

must state that it is for a provisional application, it must identify and give the

residence of the inventor or inventors, and it must give a title of the invention

quire claims.

Furthermore, no oath or declaration is required. See

MPEP §

201.04

.

A cover sheet providing identifying information is required for a

complete provisional application. In accordance with

37 CFR 1.51(c)(1)

the cover sheet

must state that it is for a provisional application, it must identify and give the

residence of the inventor or inventors, and it must give a title of the invention. The

cover sheet must also give the name and registration number of the attorney or agent (if

applicable), the docket number used by the person filing the application (if applicable)

and the correspondence address. If there is a governmental interest, the cover sheet

must include a statement as to rights to inventions made under federally sponsored

research and development (See

MPEP § 310

).

37 CFR

1.51(c)(1)(viii)

requires the name of the government agency and

the contract number, if the invention was developed by or while under contract with an

agency of the U.S. government.

Unlike applications filed under

35 U.S.C. 111(a)

, provisional

applications should not include an information disclosure statement. See

37 CFR

1.51(d)

. Since no substantive examination is made, such statements

are unnecessary. The Office will not accept an information disclosure statement in a

provisional application. Any such statement received will be returned or disposed of at

the convenience of the Office.

This cover sheet information enables the Office to prepare a proper

filing receipt and provides the Office of Patent Application Processing (OPAP) with most

of the information needed to process the provisional application. See

MPEP §

201.04

for a sample cover sheet.

III.

THE APPLICATION

The parts of the application may be included in a single document.

The paper standard requirements for papers submitted as part of the

record of a patent application is covered in

MPEP § 608.01

, subsection I.

Determination of completeness of an application is covered in

MPEP § 506

and

§

601.01

et seq

ess the provisional application. See

MPEP §

201.04

for a sample cover sheet.

III.

THE APPLICATION

The parts of the application may be included in a single document.

The paper standard requirements for papers submitted as part of the

record of a patent application is covered in

MPEP § 608.01

, subsection I.

Determination of completeness of an application is covered in

MPEP § 506

and

§

601.01

et seq.

The elements of the application are stored together in an electronic

file wrapper, bearing appropriate identifying data including the application number and

filing date (

MPEP §

719

).

See also the following the MPEP sections.

Provisional applications,

MPEP §

201.04

.

Divisional applications,

MPEP §

201.06

.

Continuation applications,

MPEP §

201.06(c)

.

Continued prosecution applications,

MPEP §

201.06(d)

.

Reissue applications,

MPEP § 1401

.

Design applications,

MPEP Chapter 1500

.

Plant applications,

MPEP Chapter 1600

.

International applications filed under the Patent

Cooperation Treaty (PCT),

MPEP Chapter 1800

.

International Applications, commencement and entry into

national stage,

MPEP §

1893.01

.

Biotechnology applications,

MPEP Chapter

2400

.

International design applications,

MPEP Chapter

2900

.

Ex Parte

Reexamination,

MPEP Chapter 2200

.

Inter Partes

Reexamination,

MPEP Chapter 2600

.

Supplemental Examination,

MPEP Chapter

2800

.

A model, exhibit, or specimen is normally not admitted as part of the

application, although it may be required in the prosecution of the application

(

37 CFR

1.91

and

1.93

,

MPEP § 608.03

).

Copies of an application will be provided by the USPTO upon request and

payment of the fee set forth in

37 CFR 1.19(b)

unless the

application has been disposed of (see

37 CFR 1.53(e), (f) and (g)

).