Nonprovisional Applications Filed Under 35 U.S.C. 111(a)

I.

APPLICATION FILING REQUIREMENTS

The procedure for filing a nonprovisional application under

35 U.S.C.

111(a)

is set forth in

37 CFR

1.53(b)

and

37 CFR 1.53(d)

.

37 CFR

1.53(b)

may be used to file any original, reissue, or

substitute nonprovisional application and any continuing application, i.e.,

continuation, divisional, or continuation-in-part.

Except for design applications, the filing date for

applications filed under

35 U.S.C. 111

on or after

December 18, 2013 is the date on which a specification, with or without claims, is

received in the Office. The filing date for a design application, except for a

continued prosecution application (CPA) under

37 CFR

1.53(d)

, is the date on which the specification as required

by

35 U.S.C.

112

, including at least one claim, and any required drawings

are received in the Office. Effective for applications filed on or after December

18, 2013,

37

CFR 1.53(b)

was amended to implement the changes to

35

U.S.C. 111(a)

and

35 U.S.C. 171

by the Patent

Law Treaties Implementation Act of 2012 (PLTIA) (Public Law 112-211).

35

U.S.C. 111(a)

now provides minimal formal requirements

necessary for an application to be entitled to a filing date to safeguard against

the loss of a filing date due to a technicality. However, these minimal formal

requirements should not be viewed as prescribing a best practice for the

preparation and filing of a patent application. The preparation of claims to any

claimed invention for which patent protection is desired and the inclusion of such

claims with the application on filing will help ensure that the application

satisfies the disclosure requirements of

35 U.S.C.

112(a)

for any such claimed invention.

For applications filed under

35 U.S.C.

111(a)

prior to December 18, 2013, a filing date is assigned

to a nonprovisional application as of the date a specification containing a

description and claim and any necessary drawings are filed in the U.S. Patent and

Trademark Office (Office). See

pre-PLT (AIA) 37 CFR

1.53(b)

s the disclosure requirements of

35 U.S.C.

112(a)

for any such claimed invention.

For applications filed under

35 U.S.C.

111(a)

prior to December 18, 2013, a filing date is assigned

to a nonprovisional application as of the date a specification containing a

description and claim and any necessary drawings are filed in the U.S. Patent and

Trademark Office (Office). See

pre-PLT (AIA) 37 CFR

1.53(b)

.

Failure to meet any of the requirements in

37 CFR

1.53(b)

will result in the application being denied a filing

date. The filing date to be accorded such an application is the date on which all

of the requirements of

37 CFR 1.53(b)

are met.

37 CFR

1.53(d)

may be used to file either a continuation or a

divisional application (but not a continuation-in-part) of a design application.

The prior nonprovisional application must be a design application, but not an

international design application, that is complete as defined by

37 CFR

1.51(b)

, except for the inventor’s oath or declaration if

the continued prosecution application (CPA) is filed on or after September 16,

2012, and the prior nonprovisional application contains an application data sheet

indicating the name, residence, and mailing address of each inventor. Any

application filed under

37 CFR 1.53(d)

must disclose

and claim only subject matter disclosed in the prior nonprovisional application

and must name as inventors the same or less than all of the inventors named in the

prior nonprovisional application. Under

37 CFR 1.53(d)

, the filing

date assigned is the date on which a request, on a separate paper, for an

application under

37 CFR 1.53(d)

is filed. An

application filed under

37 CFR 1.53(d)

must be filed

before the earliest of:

(A) payment of the issue fee on the prior application, unless a

petition under

37 CFR 1.313(c)

is

granted in the prior application;

(B) abandonment of the prior application; or

(C) termination of proceedings on the prior application

which a request, on a separate paper, for an

application under

37 CFR 1.53(d)

is filed. An

application filed under

37 CFR 1.53(d)

must be filed

before the earliest of:

(A) payment of the issue fee on the prior application, unless a

petition under

37 CFR 1.313(c)

is

granted in the prior application;

(B) abandonment of the prior application; or

(C) termination of proceedings on the prior application.

The filing fee, search fee and examination fee for an application

filed under

37

CFR 1.53(b)

or

37 CFR 1.53(d)

and the oath or

declaration for an application filed under

37 CFR 1.53(b)

can be

submitted after the filing date. In addition, for applications, other than design

applications, filed under

35 U.S.C. 111(a)

on or after

December 18, 2013, the claims and drawings may be submitted after the filing date,

within such period and under such conditions, including the payment of a

surcharge, as prescribed by the Office. See subsection II below for more

information on completion of an application subsequent to filing. However, no

amendment (including the submission of claims and drawings) may introduce new

matter into the disclosure of an application after its filing date. Drawings

should be submitted on filing if necessary for the understanding of the

invention.

If the required basic filing fee is not paid during the pendency

of the application, the application will be disposed of.

The basic filing fee must be paid within the pendency of a

nonprovisional application in order to permit benefit of the application to be

claimed under

35 U.S.C. 120

,

121

,

365(c)

, or

386(c)

in a subsequent nonprovisional application,

international application, or international design application.

See

37 CFR 1.78

. 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) and (f)

)

t of the application to be

claimed under

35 U.S.C. 120

,

121

,

365(c)

, or

386(c)

in a subsequent nonprovisional application,

international application, or international design application.

See

37 CFR 1.78

. 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) and (f)

).

37 CFR

1.53(h)

indicates that a patent application will not be

forwarded for examination on the merits until all required parts have been

received, except applications filed on or after September 16, 2012 will be

forwarded for examination even if lacking the inventor’s oath or declaration

provided that a compliant application data sheet (ADS) is filed.

II

.

COMPLETION OF NONPROVISIONAL APPLICATION UNDER 35 U.S.C. 111 SUBSEQUENT TO

FILING

For applications filed under

35 U.S.C.

111(a)

on or after December 18, 2013, except for design

applications, a filing date is granted to a nonprovisional application when a

specification, with or without claims, is received in the Office. The filing date

for a design application, except for a continued prosecution application (CPA)

under

37 CFR

1.53(d)

, is the date on which the specification as required

by

35 U.S.C.

112

, including at least one claim, and any required drawings

are received in the Office.

For applications filed prior to December 18, 2013, a

filing date is granted to a nonprovisional application for patent that includes at

least a specification as prescribed by

35 U.S.C. 112

containing a

description pursuant to

37 CFR 1.71

and at least one

claim pursuant to

37 CFR 1.75

, and any drawing

referred to in the specification or required by

37 CFR

1.81(a)

, which is filed in the U.S. Patent and Trademark

Office.

A.

Completion of Nonprovisional Application That Is Filed On or

After December 18, 2013 And Is Not A Design Application

[Editor Note: See subsection B., below, for information that pertains

to all applications filed under

35 U.S.C

claim pursuant to

37 CFR 1.75

, and any drawing

referred to in the specification or required by

37 CFR

1.81(a)

, which is filed in the U.S. Patent and Trademark

Office.

A.

Completion of Nonprovisional Application That Is Filed On or

After December 18, 2013 And Is Not A Design Application

[Editor Note: See subsection B., below, for information that pertains

to all applications filed under

35 U.S.C. 111(a)

on or

after September 16, 2012 (including utility and plant patent applications

filed on or after December 18, 2013 and design patent applications). See

subsection C., below, for information pertaining to applications filed under

35 U.S.C. 111(a)

before September 16,

2012.]

If an application which has been accorded a

filing date does not include the appropriate filing fee, search fee,

examination fee, or inventor's oath or declaration, applicant will be so

notified in accordance with

37 CFR 1.53(f)

. See

subsection II.B. below for information regarding completion of a nonprovisional

application that is missing the appropriate filing fee, search fee, examination

fee, or inventor’s oath or declaration.

If an application which has been accorded a

filing date does not include at least one claim, the applicant will be notified

and given a time period to file claim(s) and pay the surcharge, if required by

37 CFR

1.16(f)

, to avoid abandonment of the application provided

the applicant has given a correspondence address. If the applicant failed to

provide a correspondence address, the applicant has three months from the

filing date of the application within which to file claim(s) and pay the

surcharge required by

37 CFR 1.16(f)

to avoid

abandonment of the application. Therefore, an application filed without any

claims will be treated in a manner analogous to how an application without the

filing fee, search fee, or examination fee is treated. See subsection B. below

for more information

has three months from the

filing date of the application within which to file claim(s) and pay the

surcharge required by

37 CFR 1.16(f)

to avoid

abandonment of the application. Therefore, an application filed without any

claims will be treated in a manner analogous to how an application without the

filing fee, search fee, or examination fee is treated. See subsection B. below

for more information.

If an application which has been accorded a filing

date does not include any drawings, see

MPEP § 601.01(f)

for

information on completing the application. If an application which has been

accorded a filing date but is without all the figures of drawings, see

MPEP §

601.01(g)

for information on completing the

application.

B.

Completion of Nonprovisional Application, Including Design

Application, Filed On or After September 16, 2012

[Editor Note: See subsection A., above, for specific information

regarding applications that are filed under

35 U.S.C.

111(a)

on or after December 18, 2013 and are not

design applications. See subsection C., below, for applications filed before

September 16, 2012.]

If an application which has been accorded a

filing date does not include the appropriate filing fee, search fee,

examination fee, or inventor's oath or declaration, applicant will be so

notified in accordance with

37 CFR 1.53(f)

.

For applications filed before September 16, 2012,

the Office issued a Notice to File Missing Parts if an application under

37 CFR

1.53(b)

did not contain the basic filing fee, the search

fee, or the examination fee, or the inventor's oath or declaration, and the

applicant was given a time period (usually two months) within which to file the

missing basic filing fee, the search fee, the examination fee, or the

inventor's oath or declaration and pay the surcharge required by

37 CFR

1.16(f)

to avoid abandonment. See subsection II.C. below

for additional information regarding completion of a nonprovisional application

filed before September 16, 2012

, and the

applicant was given a time period (usually two months) within which to file the

missing basic filing fee, the search fee, the examination fee, or the

inventor's oath or declaration and pay the surcharge required by

37 CFR

1.16(f)

to avoid abandonment. See subsection II.C. below

for additional information regarding completion of a nonprovisional application

filed before September 16, 2012.

For applications filed on or after September 16,

2012, the former missing parts practice under

pre-AIA 37 CFR

1.53(f)

was revised to allow applicants to postpone

filing the inventor's oath or declaration until the application is otherwise in

condition for allowance.

37 CFR 1.53(f)

was further

revised, effective December 18, 2013, to require that, for applications filed

on or after September 16, 2012, the inventor’s oath or declaration in

compliance with

37 CFR 1.63

or a substitute

statement in compliance with

37 CFR 1.64

must be filed

no later than the date the issue fee is paid to avoid abandonment of the

application. This time period is not extendable under

37 CFR

1.136

(see

37 CFR 1.136(c)

). The

Office may dispense with the notice under

37 CFR

1.53(f)(1)

if each required oath or declaration in

compliance with

37 CFR 1.63

or substitute

statement in compliance with

37 CFR 1.64

has been filed

before the application is in condition for allowance.

37 CFR

1.53(f)(1)

provides for a notice (if the applicant has

provided a correspondence address) if the application does not contain the

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

under

37

CFR 1.53(b)

does not contain the inventor's oath or

declaration.

37 CFR 1.53(f)(1)

provides

that applicant must pay the basic filing fee, search fee, and examination fee,

and pay the surcharge if required by

37 CFR 1.16(f)

within the

time period set in the notice to avoid abandonment

ation does not contain the

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

under

37

CFR 1.53(b)

does not contain the inventor's oath or

declaration.

37 CFR 1.53(f)(1)

provides

that applicant must pay the basic filing fee, search fee, and examination fee,

and pay the surcharge if required by

37 CFR 1.16(f)

within the

time period set in the notice to avoid abandonment.

Section 1.53(f)(3)

(discussed subsequently) sets forth

the time period for filing the inventor's oath or declaration in an application

under

37

CFR 1.53(b)

and provides the conditions under which an

applicant may postpone filing the inventor's oath or declaration until the

application is otherwise in condition for allowance.

37 CFR

1.53(f)(2)

provides for the situation where applicant has

not provided a correspondence address in an application under

37 CFR

1.53(b)

, and the application does not contain the basic

filing fee, the search fee, or the examination fee, or does not contain the

inventor's oath or declaration.

37 CFR 1.53(f)(2)

provides

that if the applicant has not provided a correspondence address, the applicant

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

surcharge if required by

37 CFR 1.16(f)

, within

three months from the filing date of the application to avoid abandonment.

37

CFR 1.53(f)(3)

sets forth the time period for filing the

inventor's oath or declaration in an application under

37 CFR

1.53(b)

and provides the conditions under which an

applicant may postpone filing the inventor's oath or declaration until the

application is otherwise in condition for allowance.

Section

1.53(f)(3)

specifically provides that the inventor's oath

or declaration in an application under

37 CFR 1.53(b)

must also be

filed within the period specified in

37 CFR 1.53(f)(1) or

in an application under

37 CFR

1.53(b)

and provides the conditions under which an

applicant may postpone filing the inventor's oath or declaration until the

application is otherwise in condition for allowance.

Section

1.53(f)(3)

specifically provides that the inventor's oath

or declaration in an application under

37 CFR 1.53(b)

must also be

filed within the period specified in

37 CFR 1.53(f)(1) or

(f)(2)

, 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

37 CFR

1.53(f)(3)(i) through (f)(3)(ii)

. This requires payment

of the surcharge under

37 CFR 1.16(f)

if the

inventor’s oath or declaration (executed by or with respect to each inventor)

is not submitted on filing of the application. If the surcharge is not paid at

the time the application is filed, the Office will send a Notice to File

Missing Parts requiring the surcharge. If, however, a general authorization to

charge any required fees to a deposit account (that covers fees under

37 CFR

1.16

) is submitted on filing of the application, the

Office will charge the surcharge in accordance with the deposit account

authorization. Payment of the surcharge cannot be postponed until a Notice of

Allowance issues or payment of the issue fee but must be paid in the time

period specified in

37 CFR 1.53(f)(1)

or

37 CFR

1.53(f)(2)

.

37

CFR 1.53(f)(3)(i)

provides that the application must be

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

in accordance with

37 CFR 1.76

identifying:

ccount

authorization. Payment of the surcharge cannot be postponed until a Notice of

Allowance issues or payment of the issue fee but must be paid in the time

period specified in

37 CFR 1.53(f)(1)

or

37 CFR

1.53(f)(2)

.

37

CFR 1.53(f)(3)(i)

provides that the application must be

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

in accordance with

37 CFR 1.76

identifying:

(1) each inventor by their legal name; and (2) 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. The applicant must file an oath or declaration in compliance

with

37

CFR 1.63

, or substitute statement in compliance with

37 CFR

1.64

, executed by or with respect to each actual inventor

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

35 U.S.C.

115(f)

.

If an application under

37 CFR

1.53(b)

does not include the inventor's oath or

declaration but does contain the applicable filing fees (basic filing fee,

search fee, the examination fee, any applicable excess claims fee, and any

applicable application size fee), the surcharge required by

37 CFR

1.16(f)

(for filing the oath or declaration later than

the filing date), and a signed application data sheet providing the information

required by

37 CFR 1.53(f)(3)(i)

, the

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

file the inventor's oath or declaration.

If an application under

37 CFR

1.53(b)

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 application data sheet

providing the information required by

37 CFR

1.53(f)(3)(i)

, 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 parts

(b)

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 application data sheet

providing the information required by

37 CFR

1.53(f)(3)(i)

, 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 parts. While the inventor's oath or declaration will

not be required to be filed within the period for reply to the Notice to File

Missing Parts if the applicant provides a signed application data sheet

providing the information required by

37 CFR

1.53(f)(3)(i)

, any required filing fees and surcharge

required by

37 CFR 1.16(f)

must be filed within the period for reply

to the Notice to File Missing Parts to avoid abandonment.

If an application is in condition for allowance

but does not include an oath or declaration in compliance with

37 CFR

1.63

, or a substitute statement in compliance with

37 CFR

1.64

, executed by or with respect to each actual

inventor, the Office will issue a “Notice of Allowance and Fee(s) Due”

(PTOL-85) together with a "Notice of Allowability'' (PTOL-37) including a

"Notice Requiring Inventor’s Oath or Declaration" (PTOL-2306) requiring the

applicant to file an oath or declaration in compliance with

37 CFR

1.63

, or substitute statement in compliance with

37 CFR

1.64

, executed by or with respect to each actual

inventor, no later than the date of payment of the issue fee to avoid

abandonment. If applicant receives a “Notice Requiring Inventor’s Oath or

Declaration” and fails to file a proper reply to the notice before or with the

payment of the issue fee, the application will be regarded as abandoned. See

37 CFR 1.53(f)(3)(ii)

.

C.

Completion of Nonprovisional Application Filed Before September

16, 2012

[Editor Note: See subsections A. and B., above, for applications filed

under

35 U.S.C. 111

on or

after December 18, 2013

ring Inventor’s Oath or

Declaration” and fails to file a proper reply to the notice before or with the

payment of the issue fee, the application will be regarded as abandoned. See

37 CFR 1.53(f)(3)(ii)

.

C.

Completion of Nonprovisional Application Filed Before September

16, 2012

[Editor Note: See subsections A. and B., above, for applications filed

under

35 U.S.C. 111

on or

after December 18, 2013. See subsection B., above, for applications filed on

or after September 16, 2012.]

If an application which has been accorded a

filing date does not include the appropriate filing fee, search fee,

examination fee, or oath or declaration, applicant will be so notified in

accordance with

pre-AIA 37 CFR 1.53(f)

and

given a period of time within which to file the missing parts to complete the

application and to pay the surcharge as set forth in

37 CFR

1.16(f)

in order to prevent abandonment of the

application

Applicants should submit a copy of any notice to file missing

parts or notice of incomplete application with the reply submitted to the U.S.

Patent and Trademark Office, unless the reply is being submitted via the USPTO

patent electronic filing system. Applicants should also include the application

number on all correspondence to the Office. These measures will aid the Office

in matching papers to applications, thereby expediting the processing of

applications.

In order for the Office to so notify the applicant, a

correspondence address must also be provided in the application. The

correspondence address may be different from the mailing (post office) address

of the applicant. For example, the address of applicant’s registered attorney

or agent may be used as the correspondence address. If applicant fails to

provide the Office with a correspondence address, the Office will be unable to

provide applicant with notification to complete the application and to pay the

surcharge as set forth in

37 CFR 1.16(f)

different from the mailing (post office) address

of the applicant. For example, the address of applicant’s registered attorney

or agent may be used as the correspondence address. If applicant fails to

provide the Office with a correspondence address, the Office will be unable to

provide applicant with notification to complete the application and to pay the

surcharge as set forth in

37 CFR 1.16(f)

. In such a

case, applicant will be considered to have constructive notice as of the filing

date that the application must be completed within two months from the filing

date before abandonment occurs per

pre-AIA 37 CFR 1.53(f)

.

This time period may be extended pursuant to

37 CFR

1.136

.

The oath or declaration filed in reply to such a

notice under

pre-AIA 37 CFR 1.53(f)

must be executed by the inventors

and must identify the specification and any amendment filed with the

specification which includes subject matter not otherwise included in the

specification (including claims) or drawings of the application as filed. See

MPEP §

602

. If an amendment is filed with the oath or

declaration filed after the filing date of the application, it may be

identified in the oath or declaration but may not include new matter. No new

matter may be included after the filing date of the application. See

MPEP §

608.04(b)

. If the oath or declaration improperly

refers to an amendment filed after the filing date of the application which

contains new matter, a supplemental oath or declaration will be required

pursuant to

pre-AIA 37 CFR 1.67

, deleting the reference to the

amendment containing new matter. If an amendment is filed on the same day that

the application filed under

pre-AIA 37 CFR 1.53(b)

is

filed it is a part of the original application papers and the question of new

matter is not considered. Similarly, if the application papers are altered

prior to execution of the oath or declaration and the filing of the

application, new matter is not a consideration since the alteration is

considered as part of the original disclosure.

III

hat

the application filed under

pre-AIA 37 CFR 1.53(b)

is

filed it is a part of the original application papers and the question of new

matter is not considered. Similarly, if the application papers are altered

prior to execution of the oath or declaration and the filing of the

application, new matter is not a consideration since the alteration is

considered as part of the original disclosure.

III.

APPLICATION UNDER 35 U.S.C. 111(a) FILED BY REFERENCE

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.

*****

ayment 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.

*****

(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

(2) a copy of the specification and any

drawings of the previously filed application are submitted to the

Director.

37 CFR 1.57 Incorporation by reference

[Editor Note: Paragraph (a) below is only applicable to patent

applications filed under

35 U.S.C. 111(a)

on or

after December 18, 2013.]

n 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.

37 CFR 1.57 Incorporation by reference

[Editor Note: Paragraph (a) below is only applicable to patent

applications filed under

35 U.S.C. 111(a)

on or

after December 18, 2013.]

(a) Subject to the conditions and requirements

of this paragraph, a reference made in the English language in an

application data sheet in accordance with

§

1.76

upon the filing of an application under

35 U.S.C. 111(a)

to a

previously filed application, indicating that the specification and any

drawings of the application under

35 U.S.C.

111(a)

are replaced by the reference to the

previously filed application, and specifying the previously filed

application by application number, filing date, and the intellectual

property authority or country in which the previously filed application

was filed, shall constitute the specification and any drawings of the

application under

35 U.S.C. 111(a)

for

purposes of a filing date under

§ 1.53(b)

.

(1) If 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 copy of the specification and drawings from the

previously filed application, an English language translation of

the previously filed application, and the fee required by

§ 1.17(i)

if it

is in a language other than English, and pay the surcharge required

by

§ 1.16(f)

, to

avoid abandonment. Such a notice may be combined with a notice

under

§ 1.53(f)

.

given a period of time within which

to file a copy of the specification and drawings from the

previously filed application, an English language translation of

the previously filed application, and the fee required by

§ 1.17(i)

if it

is in a language other than English, and pay the surcharge required

by

§ 1.16(f)

, to

avoid abandonment. Such a notice may be combined with a notice

under

§ 1.53(f)

.

(2) If the applicant has not provided a

correspondence address (

§ 1.33(a)

), the

applicant has three months from the filing date of the application

to file a copy of the specification and drawings from the

previously filed application, an English language translation of

the previously filed application, and the fee required by

§ 1.17(i)

if it

is in a language other than English, and pay the surcharge required

by

§ 1.16(f)

, to

avoid abandonment.

(3) An application abandoned under

paragraph (a)(1) or (a)(2) of this section shall be treated as

having never been filed, unless:

(i) The application is revived

under

§ 1.137

;

and

(ii) A copy of the specification and

any drawings of the previously filed application are filed in

the Office.

(4) A certified copy of the previously

filed application must be filed in the Office, unless the

previously filed application is an application filed under

35 U.S.C. 111

or

363

, or the

previously filed application is a foreign priority application and

the conditions set forth in

§

1.55(i)

are satisfied with respect to such

foreign priority application. The certified copy of the previously

filed application, if required by this paragraph, must be filed

within the later of four months from the filing date of the

application or sixteen months from the filing date of the

previously filed application, or be accompanied by a petition

including a showing of good and sufficient cause for the delay and

the petition fee set forth in

§

1.17(g)

pplication. The certified copy of the previously

filed application, if required by this paragraph, must be filed

within the later of four months from the filing date of the

application or sixteen months from the filing date of the

previously filed application, or be accompanied by a petition

including a showing of good and sufficient cause for the delay and

the petition fee set forth in

§

1.17(g)

.

*****

Effective December 18, 2013, title II of the Patent

Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to

implement the provisions of the Patent Law Treaty. Section 201(a) of the PLTIA

amended

35

U.S.C. 111

to add

35 U.S.C.

111(c)

. As provided in

35 U.S.C.

111(c)

, a nonprovisional application filed under

35

U.S.C. 111(a)

on or after December 18, 2013, may be filed by

a reference to a previously filed application (foreign, international,

provisional, or nonprovisional) indicating that the specification and any drawings

of the application are replaced by the reference to the previously filed

application.

35 U.S.C. 111(c)

specifically

provides that the Director may prescribe the conditions, including the payment of

a surcharge, under which a reference made upon the filing of an application under

35

U.S.C. 111(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.

35 U.S.C. 111(c)

further

provides that 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, and that 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.

35

U.S.C

s that 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, and that 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.

35

U.S.C. 111(c)

finally provides that such an application

shall be treated as having never been filed, unless: (1) the application is

revived under

35 U.S.C. 27

; and (2) a copy

of the specification and any drawings of the previously filed application are

submitted to the Director.

Effective December 18, 2013,

37 CFR

1.57

was amended to implement the reference filing

provisions of

35 U.S.C. 111(c)

.

37 CFR

1.57(a)

now provides that, subject to the conditions and

requirements of

37 CFR 1.57(a)

, a reference,

made in the English language in an application data sheet (ADS) in accordance with

37 CFR

1.76

upon the filing of an application under

35

U.S.C. 111(a)

, to a previously filed application, indicating

that the specification and any drawings of the application under

35 U.S.C.

111(a)

are replaced by the reference to the previously filed

application, and specifying the previously filed application by application

number, filing date, and the intellectual property authority or country in which

the previously filed application was filed, shall constitute the specification and

any drawings of the application under

35 U.S.C. 111(a)

for purposes

of a filing date under

37 CFR 1.53(b)

. Thus, the

specification and any drawings of the previously filed application will be

considered in determining whether an application under

35 U.S.C.

111(a)

filed by reference under

37 CFR

1.57(a)

is entitled to a filing date under

37 CFR

1.53(b)

. When an application for a design patent includes a

reference to a previously filed application under

35 U.S.C.

111(c)

, the previously filed application must include at

least one claim.

35 U.S.C

the previously filed application will be

considered in determining whether an application under

35 U.S.C.

111(a)

filed by reference under

37 CFR

1.57(a)

is entitled to a filing date under

37 CFR

1.53(b)

. When an application for a design patent includes a

reference to a previously filed application under

35 U.S.C.

111(c)

, the previously filed application must include at

least one claim.

35 U.S.C. 171

provides that the filing date of an

application for a design patent is the date on which the specification as

prescribed by

35 U.S.C. 112

, which includes at least one claim, and any

required drawings are filed.

In a reference filing under

37 CFR

1.57(a)

, the reference to a previously filed application in

an ADS is not sufficient to establish a priority or benefit claim to that

previously filed application. Reference filing information is provided in a

section of the ADS that is separate from the foreign priority information section

and the domestic benefit claim information section. See

MPEP §

211

et seq.

for information regarding domestic benefit claims and

MPEP § 213

et seq.

for information regarding claims for foreign

priority.

The PLT and the Regulations under the PLT provide

for the establishment of Model International Forms (PLT Model forms). The PLT

Model forms may be found on WIPO’s Internet website at

https://wipolex.wipo.int/en/text/289773

. The requirement for a

reference to the previously filed application in an ADS will be satisfied by the

presentation of such reference to the previously filed application on the Patent

Law Treaty Model International Request Form (PLT Model Request form). Applicants

may use the PLT Model Request form for national applications under

35

U.S.C. 111

filed in the USPTO or national applications filed

in other PLT countries. However, as provided in

37 CFR

1.76(d)(2)

, information in an ADS will govern when

inconsistent with the information supplied at any time in PLT Model forms

Patent

Law Treaty Model International Request Form (PLT Model Request form). Applicants

may use the PLT Model Request form for national applications under

35

U.S.C. 111

filed in the USPTO or national applications filed

in other PLT countries. However, as provided in

37 CFR

1.76(d)(2)

, information in an ADS will govern when

inconsistent with the information supplied at any time in PLT Model forms.

Furthermore, if applicants want to postpone submission of the inventor’s oath or

declaration until the application is in condition for allowance, an ADS that

provides the inventor information is required. Accordingly, the use of an ADS to

supply application information for reference filing is encouraged.

If the applicant has provided a correspondence

address (

37

CFR 1.33(a)

), the applicant will be notified and given a

period of time within which to file a copy of the specification and drawings from

the previously filed application, an English language translation of the

previously filed application and the fee required by

37 CFR

1.17(i)

if it is in a language other than English, and pay

the surcharge required by

37 CFR 1.16(f)

, to avoid

abandonment. Such a notice may be combined with a notice under

37 CFR

1.53(f)

(e.g., a notice requiring that the applicant provide

at least one claim and pay the filing fees). See

37 CFR

1.57(a)(1)

.

If the applicant has not provided a correspondence

address (

37

CFR 1.33(a)

), the applicant has three months from the filing

date of the application under

35 U.S.C. 111(a)

filed by

reference under

37 CFR 1.57(a)

to file a copy

of the specification and drawings from the previously filed application, an

English language translation of the previously filed application and the fee

required by

37 CFR 1.17(i)

if it is in a

language other than English, and pay the surcharge required by

37 CFR

1.16(f)

, to avoid abandonment. See

37 CFR

1.57(a)(2)

ion under

35 U.S.C. 111(a)

filed by

reference under

37 CFR 1.57(a)

to file a copy

of the specification and drawings from the previously filed application, an

English language translation of the previously filed application and the fee

required by

37 CFR 1.17(i)

if it is in a

language other than English, and pay the surcharge required by

37 CFR

1.16(f)

, to avoid abandonment. See

37 CFR

1.57(a)(2)

.

In response to a notice requiring a copy of the

specification and drawings from the previously filed application, applicants must

submit an actual copy of the specification (including any claims) and any drawings

of the previously filed application without any modifications. If the

specification and drawings submitted in response to the notice are modified, i.e.,

updated, corrected, or reformatted in any manner, such modified specification and

any modified drawings would not satisfy the copy requirement of

35 U.S.C.

111(c)

and

37 CFR 1.57(a)

. Any desired

changes to the copy of the previously filed application must be made by way of an

amendment under

37 CFR 1.121

without adding new matter.

An application abandoned under

37 CFR 1.57(a)(1) or

(a)(2)

shall be treated as having never been filed, unless:

(1) the application is revived under

37 CFR 1.137

; and (2) a copy

of the specification and any drawings of the previously filed application are

filed in the Office. See

37 CFR 1.57(a)(3)

.

An applicant may also claim priority to or the

benefit of an application filed by reference under

35 U.S.C.

111(c)

and

37 CFR 1.57(a)

. However, the

phrase ”treated as having never been filed” in

35 U.S.C.

111(c)

and

37 CFR 1.57(a)(3)

precludes an

applicant from claiming priority to or the benefit of an application filed by

reference that has been abandoned under

35 U.S.C.

111(c)

and

37 CFR 1.57(a)(1)

or

1.57(a)(2)

. An applicant may claim priority to or the

benefit of an application abandoned under

35 U.S.C.

111(c)

and

37 CFR 1.57(a)(1)

or

he

phrase ”treated as having never been filed” in

35 U.S.C.

111(c)

and

37 CFR 1.57(a)(3)

precludes an

applicant from claiming priority to or the benefit of an application filed by

reference that has been abandoned under

35 U.S.C.

111(c)

and

37 CFR 1.57(a)(1)

or

1.57(a)(2)

. An applicant may claim priority to or the

benefit of an application abandoned under

35 U.S.C.

111(c)

and

37 CFR 1.57(a)(1)

or

(a)(2)

only if the application is revived under

37 CFR

1.137

and a copy of the specification and any drawings of

the previously filed application are submitted to the Office.

A certified copy of the previously filed application

must be filed in the Office within the later of four months from the filing date

of the application or sixteen months from the filing date of the previously filed

application, unless the previously filed application is an application filed under

35

U.S.C. 111

or

35 U.S.C. 363

, or the

previously filed application is a foreign priority application and the conditions

set forth in

37 CFR 1.55(h)

are satisfied

with respect to such foreign priority application. See

37 CFR

1.57(a)(4)

.

If a certified copy is required under

37

CFR 1.57(a)(4)

and it is not filed within the later of four

months from the filing date of the application or sixteen months from the filing

date of the previously filed application, the certified copy must be accompanied

by a petition including a showing of good and sufficient cause for the delay and

the petition fee set forth in

37 CFR 1.17(g)

. The

requirement for a certified copy of a previously filed foreign application is to

ensure that the copy of the specification and any drawings subsequently provided

by the applicant correspond to the specification and any drawings of the

previously filed foreign application. The interim copy provision of

37

CFR 1.55(j)

is not applicable to the requirement for a

certified copy of a previously filed foreign application in an application filed

by reference under

35 U.S.C. 111(c)

and

37 CFR

1.57(a)

copy of the specification and any drawings subsequently provided

by the applicant correspond to the specification and any drawings of the

previously filed foreign application. The interim copy provision of

37

CFR 1.55(j)

is not applicable to the requirement for a

certified copy of a previously filed foreign application in an application filed

by reference under

35 U.S.C. 111(c)

and

37 CFR

1.57(a)

.

Applicants filing by reference under

35

U.S.C. 111(c)

and

37 CFR 1.57

should take care

to ensure that the application number, filing date, and intellectual property

authority or country of the previously filed application is accurately specified

on the ADS as the specification and drawings of the application specified on the

ADS is the specification and drawings of the application being filed by reference

under

35

U.S.C. 111(c)

and

37 CFR 1.57

. If an applicant

specifies an application number, filing date, or intellectual property authority

or country of an application other than the application number, filing date, or

intellectual property authority or country of the intended previously filed

application on the ADS (i.e., the applicant mistypes the application number,

filing date, or intellectual property authority or country on the ADS), the

applicant may file a petition under

37 CFR 1.53

to have the

application accorded a filing date as of the date the specification and drawings

of the intended previously filed application is filed in the Office using that

specification and drawings (rather than the specification and drawings of the

application specified on the ADS). Simply submitting the specification and

drawings of the intended previously filed application without such a petition

under

37 CFR

1.53

in reply to a notice under

37 CFR

1.57(a)

requiring the specification and drawings of the

application specified on the ADS will result in the submission being treated as an

incomplete reply

n the specification and drawings of the

application specified on the ADS). Simply submitting the specification and

drawings of the intended previously filed application without such a petition

under

37 CFR

1.53

in reply to a notice under

37 CFR

1.57(a)

requiring the specification and drawings of the

application specified on the ADS will result in the submission being treated as an

incomplete reply. A reference filing statement made upon filing cannot be

rescinded because the reference to the previously filed application constitutes

the specification and any drawings of the instant application. See

35

U.S.C. 111(c)

. Accordingly, to avoid the risk of incorrect

filings and the required surcharge, applicants should simply file a copy of the

specification and drawings of the previously filed application, if available,

instead of relying upon the reference filing provisions.

If the previously filed application is also a

priority application under

35 U.S.C. 119(a) through (d) and

(f)

,

172

,

35 U.S.C. 365(a) or

(b)

, or

35 U.S.C. 386(a) or (b)

and

37 CFR

1.55

, an applicant should also consider filing a copy of the

specification and drawings of the previously filed application in the Office no

later than fourteen month from the filing date of the previously filed application

(regardless of the time period provided in

37 CFR 1.57(a)

) to avoid the

loss of the right of priority under

37 CFR 1.55

in the event that

the application number, filing date, or intellectual property authority or country

of an application specified on the ADS is not the application number, filing date,

or intellectual property authority or country of the intended previously filed

application

tion

(regardless of the time period provided in

37 CFR 1.57(a)

) to avoid the

loss of the right of priority under

37 CFR 1.55

in the event that

the application number, filing date, or intellectual property authority or country

of an application specified on the ADS is not the application number, filing date,

or intellectual property authority or country of the intended previously filed

application.

An application filed to obtain a filing date which

includes both a reference to a previously filed application as provided for in

37 CFR

1.57(a)

and application papers including a specification and

drawings will be processed as a reference filing and applicant will be charged the

surcharge under

37 CFR 1.16(f)

even though a specification and drawings

were submitted with the reference filing. The ADS form indicates that “the

description and any drawings of the present application are replaced by this

reference to the previously filed application.” Accordingly, the Office will send

out a notice (e.g., Notice to File Missing Parts) requiring the surcharge and a

copy of the specification and any drawings. Applicants must respond to the notice

by filing a copy of the specification and any drawings of the previously filed

application or by stating that the specification and drawings submitted on filing

is a copy of the specification and drawings of the previously filed application.

If the specification and drawings submitted on filing were not a copy of the

specification and drawings of the previously filed application but instead were

modified, i.e., updated, corrected, or reformatted in any manner, such modified

specification and any modified drawings would not satisfy the copy requirement of

35

U.S.C. 111(c)

and

37 CFR 1.57(a)

. In response to

the notice, applicant must submit a copy of the specification and any drawings of

the previously filed application. Any desired changes to the copy of the

previously filed application must be made by way of an amendment under

37 CFR

1.121

without adding new matter

specification and any modified drawings would not satisfy the copy requirement of

35

U.S.C. 111(c)

and

37 CFR 1.57(a)

. In response to

the notice, applicant must submit a copy of the specification and any drawings of

the previously filed application. Any desired changes to the copy of the

previously filed application must be made by way of an amendment under

37 CFR

1.121

without adding new matter. The modified specification

and any drawings that were submitted on filing would not constitute the

specification and drawings of the instant application and thus would not be used

for examination purposes. However, applicant may file a petition under

37 CFR

1.182

, including the fee under

37 CFR

1.17(f)

, requesting that the modified specification and any

drawings submitted on filing be removed from the file of the application filed by

reference, and be accorded the status as a separate application by being placed in

a new file wrapper and assigned a new application number, with the new application

being accorded a filing date as of the date the application filed by reference was

filed. An application filed by reference is not improper simply because it is

accompanied by a specification and drawings. Thus, an applicant will not be

entitled to a refund of the filing fees paid in a proper application filed by

reference. If the petition under

37 CFR 1.182

requesting that

the modified specification and any drawings be removed from the file of the

application filed by reference is granted, new filing fees, including the

surcharge required by

37 CFR 1.16(f)

, would be

needed for the new application created as a result of the grant of the

petition.

Reference filing is intended for situations when a

copy of the previously filed application is not available at the time the current

application is being filed. If a copy of the previously filed application is

available, applicant should file the copy of the specification and drawings under

35

U.S.C

1.16(f)

, would be

needed for the new application created as a result of the grant of the

petition.

Reference filing is intended for situations when a

copy of the previously filed application is not available at the time the current

application is being filed. If a copy of the previously filed application is

available, applicant should file the copy of the specification and drawings under

35

U.S.C. 111(a)

and

37 CFR 1.51(b)

and not

complete the section of the ADS for filing by reference. As explained above, if

the reference filing section of the ADS is completed, applicants will be required

to pay the surcharge under

37 CFR 1.16(f)

, even if a copy

of the previously filed application is present on filing the application. A

reference filing statement made upon filing cannot be rescinded because the

reference to the previously filed application constitutes the specification and

any drawings of the instant application. See

35 U.S.C.

111(c)

.

There is no provision for the filing of a

continuation-in-part of a previously filed application under

37 CFR

1.57(a)

.

35 U.S.C. 111(c)

provides that

the reference to the previously filed application “shall constitute the

specification and any drawings of the subsequent application.” The specification

and any drawings of a continuation-in-part would need to extend beyond the

specification and any drawings of the previously filed application. Thus, the

filing by reference of a continuation-in-part of the previously filed application

is not contemplated by

35 U.S.C. 111(c)

.