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USPTO MPEP › Chapter 0600 - Parts, Form, and Content of Application › MPEP § 601.01
Text
37 CFR 1.53 Application number, filing date, and completion of application.
[Editor Note: Paragraphs (b), (c), (f) and (h) below have limited
applicability as follows:
(1)
Paragraph (c)(4) is applicable to all
applications irrespective of filing date;
(2)
Paragraphs (b) and (c), are applicable
only to patent applications filed under
35 U.S.C.
111(a)
on or after December 18, 2013. See
pre-PLT (AIA) 37 CFR
1.53
for paragraphs (b) and (c) otherwise in
effect;
(3)
Paragraph (f), effective December 18,
2013, and paragraph (h), effective September 16, 2012, are applicable only
to patent applications filed under
35 U.S.C. 111(a)
on or
after September 16, 2012. See
pre-AIA 37 CFR 1.53
for
paragraphs (f) and (h) otherwise in effect.]
(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 a
provisional application under paragraph (c) of this section, is the date on
which a specification, with or without claims, is received in the 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)
, or
386(c)
and
§ 1.78
.
ion 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)
, or
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.
(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.
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 (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
ovisional
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
35 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 application,
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
pplication (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)
or
§ 1.55
, or to the
benefit of an earlier filing date under
35 U.S.C.
120
,
121
,
365(c)
, or
386(c)
or
§ 1.78
of any other
application. No claim for priority under
35 U.S.C.
119(e)
or
§ 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:
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
(C) Termination of proceedings on
the prior 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
(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)
.
(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 of
§
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.
(e) Failure to meet filing date requirements.
(1) If an application deposited under paragraph
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.
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, search fee, or 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
or
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
file a claim or claims, pay the basic filing fee, search fee, and
examination fee, and pay the surcharge if required by
§
1.16(f)
to avoid abandonment.
t include at least one claim or the inventor's
oath or declaration (
§§ 1.63
,
1.64
,
1.162
or
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
file a claim or claims, 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 (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
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.
(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.
uant 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.
(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.
s 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)
.
37 CFR 1.53 pre-PLT (AIA) Application number, filing date, and completion of application.
[Editor Note: Paragraphs (b) and (c)(1) to (3) are applicable to patent
applications filed under
35 U.S.C. 111
before December
18, 2013. For the text of paragraphs (a), (c)(4), (d), (e), (g), and (i)
applicable to patent applications filed under
35 U.S.C.
111
before December 18, 2013, see
37 CFR
1.53
. For the text of paragraphs (f) and (h), see
37 CFR
1.53
for applications filed under
35 U.S.C.
111
on or after September 16, 2012 and see
pre-AIA 37 CFR
1.53
for applications filed before September 16,
2012.]
*****
(b)
Application filing requirements - Nonprovisional
application.
The filing date of an application for patent filed
under this section, except for a provisional application under paragraph (c) of
this section or a continued prosecution application under paragraph (d) of this
section, is the date on which a specification as prescribed by
35 U.S.C.
112
containing a description pursuant to
§
1.71
and at least one claim pursuant to
§ 1.75
,
and any drawing required by
§ 1.81(a)
are filed in the
Patent and Trademark Office. No new matter may be introduced into an
application after its filing date
is section or a continued prosecution application under paragraph (d) of this
section, is the date on which a specification as prescribed by
35 U.S.C.
112
containing a description pursuant to
§
1.71
and at least one claim pursuant to
§ 1.75
,
and any drawing required by
§ 1.81(a)
are filed in the
Patent and Trademark 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
or
365(c)
and
§
1.78(c) and (d)
.
(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.
(c)
Application filing requirements - Provisional application.
The filing date of a provisional application is the date on which a
specification as prescribed by
35 U.S.C. 112(a)
, and any
drawing required by
§ 1.81(a)
are filed in the
Patent and Trademark 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.
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 (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
ovisional 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
35 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 application,
the inventor's oath or declaration, 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:
e 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.
*****
*****
37 CFR 1.53 pre-AIA Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under
pre-AIA 35
U.S.C. 111
before September 16, 2012. For the text of
paragraphs (a), (c)(4), (d), (e), (g), and (i) applicable to patent applications
filed under
35 U.S.C. 111
before September
16, 2012, see
37 CFR 1.53
. For the text of
paragraphs (b) and (c)(1) to (3) applicable to patent applications filed under
35
U.S.C. 111
before September 16, 2012, see
pre-PLT (AIA) 37 CFR
1.53
.]
*****
(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 an oath or declaration by the applicant pursuant to
§§
1.63
,
1.162
or
§
1.175
, 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, search fee, and examination
fee, file an oath or declaration in an application under paragraph (b) of this
section, and pay the surcharge if required by
§ 1.16(f)
to avoid abandonment.
e applicant pursuant to
§§
1.63
,
1.162
or
§
1.175
, 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, search fee, and examination
fee, file an oath or declaration in an application under paragraph (b) of this
section, 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, the search fee, the examination fee, or an oath or
declaration by the applicant pursuant to
§§
1.63
,
1.162
or
§
1.175
, 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, search fee, and
examination fee, file an oath or declaration, and pay the surcharge required by
§
1.16(f)
to avoid abandonment.
(3) 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.
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.
(4) 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 oath
or declaration from the prior application for a continuation or divisional
application under paragraph (b) of this section.
(5) 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 certain minor
informalities may be waived subject to subsequent correction whenever
required.
*****
37 CFR
1.53
relates to application numbers, filing dates, and completion
of applications. Note that the substantive requirements under
37 CFR 1.53
for applications filed on or after September 16, 2012 as compared to those filed prior
to September 16, 2012 (pre-AIA) are the same with the exception of
37 CFR
1.53(f)
, pertaining to completion of a nonprovisional application
subsequent to filing. Also, note that the filing date requirements under
37 CFR 1.53(b)
and (c)
for applications filed on or after December 18, 2013 are
different from those filed prior to December 18, 2013
September 16, 2012 as compared to those filed prior
to September 16, 2012 (pre-AIA) are the same with the exception of
37 CFR
1.53(f)
, pertaining to completion of a nonprovisional application
subsequent to filing. Also, note that the filing date requirements under
37 CFR 1.53(b)
and (c)
for applications filed on or after December 18, 2013 are
different from those filed prior to December 18, 2013. For example, under
37 CFR
1.53(b)
, except for design applications, nonprovisional
applications filed on or after December 18, 2013 may receive a filing date even if the
application is filed without claims or drawings. See
MPEP § 601.01(a)
for
additional information. Similarly, provisional applications filed on or after December
18, 2013 may receive a filing date even if the application is filed without drawings.
See
MPEP §
601.01(b)
for additional information. If the subject matter of
a nonprovisional application admits of illustration by a drawing to facilitate
understanding of the invention, including where a drawing is necessary for the
understanding of the invention, the Office will continue the practice of requiring a
drawing. See
MPEP §
608.02
(item IV). Any claim or any drawing submitted after the
filing date of an application may not contain new matter.
37 CFR 1.53(a)
indicates that an application number is assigned for identification purposes to any
paper which purports to be an application for a patent, even if the application is
incomplete or informal. The remaining sections of
37 CFR 1.53
treat nonprovisional
applications filed under
35 U.S.C. 111(a)
separately from
provisional applications filed under
35 U.S.C. 111(b)
.
37 CFR
1.53(d)
sets forth the filing date requirements for a continued
prosecution application (CPA). A CPA is a nonprovisional application which must be filed
on or after December 1, 1997. Only a continuation or divisional application (but not a
continuation-in-part) may be filed as a CPA. See
MPEP §
201.06(d)
U.S.C. 111(a)
separately from
provisional applications filed under
35 U.S.C. 111(b)
.
37 CFR
1.53(d)
sets forth the filing date requirements for a continued
prosecution application (CPA). A CPA is a nonprovisional application which must be filed
on or after December 1, 1997. Only a continuation or divisional application (but not a
continuation-in-part) may be filed as a CPA. See
MPEP §
201.06(d)
. CPA practice under
37 CFR 1.53(d)
does not apply to utility and plant applications. CPAs can only be filed in design
applications filed under
35 U.S.C. 111(a)
.
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.