Application Filed Without All Pages of Specification

The Office of Patent Application Processing (OPAP) reviews

application papers to determine whether all of the pages of specification are present

in the application. For an application filed under

37 CFR 1.53(b) or

(c)

prior to December 18, 2013 or a design application, if the

application is filed without all of the page(s) of the specification, but containing

something that can be construed as a written description, at least one drawing

figure, if necessary under

35 U.S.C. 113

(first sentence),

and, in a nonprovisional application, at least one claim, an OPAP notice (e.g., a

“Notice of Omitted Items”) will be sent indicating that the application papers so

deposited have been accorded a filing date, but are lacking some page(s) of the

specification. For an application other than a design application filed under

37 CFR

1.53(b)

or (c) on or after December 18, 2013, if the

application is filed without all of the page(s) of the specification, but contains

something that can be construed as a specification, with or without claims, an OPAP

notice (e.g., a “Notice of Omitted Items”) will be sent indicating that the

application papers so deposited have been accorded a filing date, but are lacking

some page(s) of the specification.

If the application does

not

contain anything

that can be construed as a written description, OPAP will mail a Notice of Incomplete

Application indicating that the application lacks the specification required by

35 U.S.C.

112

and

no

filing date is granted.

I.

APPLICATION ENTITLED TO FILING DATE

The procedure for handling nonprovisional application papers

having omitted items was revised in “Change in Procedure for Handling

Nonprovisional Applications Having Omitted Items,” 1315 OG 103 (February 20,

2007). Under the revised procedure, the mailing of an OPAP notice regarding a

missing page(s) of specification in a nonprovisional application will permit the

applicant to:

(A) promptly establish prior receipt in the USPTO of the page(s)

at issue

papers

having omitted items was revised in “Change in Procedure for Handling

Nonprovisional Applications Having Omitted Items,” 1315 OG 103 (February 20,

2007). Under the revised procedure, the mailing of an OPAP notice regarding a

missing page(s) of specification in a nonprovisional application will permit the

applicant to:

(A) promptly establish prior receipt in the USPTO of the page(s)

at issue. An applicant asserting that the page(s) was in fact received by

the USPTO with the application papers must, within two months from the date

of the OPAP notice, file a petition under

37 CFR

1.53(e)

with the petition fee set forth in

37 CFR 1.17(f)

, along

with evidence of such deposit. The petition fee will be refunded if it is

determined that the page(s) was in fact received by the USPTO with the

application papers deposited on filing. The two-month period is extendable

under

37

CFR 1.136

;

(B) promptly submit the omitted page(s) in a nonprovisional

application and accept the date of such submission as the application filing

date. An applicant desiring to submit the omitted page(s) in a

nonprovisional application and accept the date of such submission as the

application filing date must, within two months from the date of the OPAP

notice, file any omitted page(s) and a petition under

37 CFR

1.182

with the petition fee set forth in

37 CFR 1.17(f)

,

requesting the later filing date. The two-month period is extendable under

37 CFR

1.136

. For applications filed before September 16,

2012, an oath or declaration in compliance with

pre-AIA 37 CFR 1.63

and

pre-AIA 37 CFR 1.64

must be filed with the omitted page(s) and refer to such page(s); or

(C) accept the application as deposited in the USPTO by filing

an appropriate amendment. Applicant may accept the application as deposited

in the USPTO by either:

extendable under

37 CFR

1.136

. For applications filed before September 16,

2012, an oath or declaration in compliance with

pre-AIA 37 CFR 1.63

and

pre-AIA 37 CFR 1.64

must be filed with the omitted page(s) and refer to such page(s); or

(C) accept the application as deposited in the USPTO by filing

an appropriate amendment. Applicant may accept the application as deposited

in the USPTO by either:

(1) filing a substitute specification (including claims)

that amends the specification to renumber the pages consecutively and

cancels any incomplete sentences, in compliance with

37 CFR

1.121(b)(3)

and

1.125

, without adding the subject matter that

was in the omitted page(s) and without adding any new matter (see

35 U.S.C. 132(a)

). For a missing page of the

claim listing only, applicant is required to submit a replacement

claim listing with the claims renumbered consecutively, or, if

amendment to the claims is also necessary, then a complete claim

listing in compliance with

37 CFR 1.121(c)

.

The application will maintain the filing date as of the date of

deposit of the application papers in the USPTO, and the original

application papers (i.e., the original disclosure of the invention)

will include only those application papers present in the USPTO on the

date of deposit , or

(2) filing a substitute specification

(excluding claims), in compliance with

37 CFR

1.121(b)(3)

and

1.125

, to add the subject matter in the omitted

page(s) by relying on an incorporation by reference under

37 CFR 1.57(b)

or

other portions of the original disclosure, without any adding new

matter (see

35 U.S.C. 132(a)

). For a

missing page of the claim listing, applicant is required to submit a

complete claim listing in compliance with

37 CFR

1.121(c)

, in compliance with

37 CFR

1.121(b)(3)

and

1.125

, to add the subject matter in the omitted

page(s) by relying on an incorporation by reference under

37 CFR 1.57(b)

or

other portions of the original disclosure, without any adding new

matter (see

35 U.S.C. 132(a)

). For a

missing page of the claim listing, applicant is required to submit a

complete claim listing in compliance with

37 CFR

1.121(c)

. If an application was filed on or

after September 21, 2004, and contains a claim under

37 CFR

1.55

for priority of a prior-filed foreign

application, or a claim under

37 CFR 1.78

for

the benefit of a prior-filed provisional, nonprovisional, or

international application that was present on the filing date of the

application, and the omitted portion of the specification was

inadvertently omitted from the application and is completely contained

in the prior-filed application, applicant may submit an amendment to

include the inadvertently omitted portion of the specification

pursuant to

37 CFR 1.57(b)

.

The amendment should be identified as an amendment pursuant to

37 CFR 1.57(b)

and

must comply with the requirements of

37 CFR

1.57(b)

and

37 CFR 1.121

. See

MPEP § 217

. The

application will maintain the filing date as of the date of deposit of

the original application papers in the USPTO. The original application

papers (i.e., the original disclosure of the invention) will include

only those application papers present in the USPTO on the original

date of deposit. The two-month period is extendable under

37 CFR 1.136

.

The submission of omitted page(s) in a nonprovisional application

and acceptance of the date of such submission as the application filing date is

tantamount to simply filing a new application. Thus, applicants should consider

filing a new application as an alternative to submitting a petition under

37 CFR

1.182

(with the petition fee under

37 CFR

1.17(f)

) with any omitted page(s), which is a cost effective

alternative in instances in which a nonprovisional application is deposited

without filing fees

ssion as the application filing date is

tantamount to simply filing a new application. Thus, applicants should consider

filing a new application as an alternative to submitting a petition under

37 CFR

1.182

(with the petition fee under

37 CFR

1.17(f)

) with any omitted page(s), which is a cost effective

alternative in instances in which a nonprovisional application is deposited

without filing fees. Likewise, in view of the relatively low filing fee for

provisional applications, and the USPTO’s desire to minimize the processing of

provisional applications, the USPTO will not grant petitions under

37 CFR

1.182

to accept omitted page(s) and accord an application

filing date as of the date of such submission in provisional applications. The

applicant should simply file a new completed provisional application. The mailing

of an OPAP notice regarding omitted page(s) in a provisional application will

permit the applicant to either: (1) promptly establish prior receipt of the

page(s) at issue by filing of a petition under

37 CFR

1.53(e)

with the petition fee set forth in

37 CFR

1.17(f)

, along with evidence of such deposit; or (2) accept

the application as deposited by failing to file a petition within a two-month

non-extendable time period. Applications in which an OPAP notice regarding omitted

items has been mailed will be retained in OPAP to await a reply to the notice.

Failure to timely reply to the OPAP notice in a nonprovisional application will

result in abandonment of the application. Nonprovisional applications that are

timely completed will then be forwarded to the appropriate Technology Center for

examination of the application. For provisional applications in which applicant

accepts the application as deposited by failing to timely file a petition in

response to an OPAP notice regarding omitted items, if the provisional application

is complete under

37 CFR 1.51(c)

, it will be

held in the Office’s Image File Wrapper (IFW) system and automatically abandoned

at the end of its pendency period

examination of the application. For provisional applications in which applicant

accepts the application as deposited by failing to timely file a petition in

response to an OPAP notice regarding omitted items, if the provisional application

is complete under

37 CFR 1.51(c)

, it will be

held in the Office’s Image File Wrapper (IFW) system and automatically abandoned

at the end of its pendency period. See

MPEP § 601.01(a)

for treatment of

nonprovisional applications that are not complete under

37 CFR

1.51(b)

and

MPEP § 601.01(b)

for treatment of

provisional applications that are not complete under

37 CFR

1.51(c)

).

II.

APPLICATION NOT ENTITLED TO FILING DATE

If the application does

not

contain

anything that can be construed as a written description, OPAP will mail a Notice

of Incomplete Application indicating that the application lacks the specification

required by

35

U.S.C. 112

. Applicant may:

(A) file a petition under

37 CFR 1.53(e)

with the

petition fee set forth in

37 CFR 1.17(f)

,

asserting that (1) the missing specification was submitted, or (2) the

application papers as deposited contain an adequate written description

under

35

U.S.C. 112

. The petition under

37 CFR

1.53(e)

must be accompanied by sufficient evidence

(

37 CFR

1.181(b)

) to establish applicant’s entitlement to the

requested filing date (

e.g.,

a date-stamped postcard

receipt (

MPEP § 503

) to establish

prior receipt in the USPTO of the missing specification);

(B) submit the omitted specification, including at least one

claim if the application is a nonprovisional application filed under

35 U.S.C. 111(a)

prior to December 18, 2013 or a

design application, and accept the date of such submission as the

application filing date. For applications filed before September 16, 2012,

the omitted specification should be accompanied by an oath or declaration in

compliance with

pre-AIA 37 CFR 1.63

and

pre-AIA

37 CFR 1.64

referring to the specification being

submitted; or

(C) submit an amendment under

37 CFR

1.57(b)

in a nonprovisional application

n application, and accept the date of such submission as the

application filing date. For applications filed before September 16, 2012,

the omitted specification should be accompanied by an oath or declaration in

compliance with

pre-AIA 37 CFR 1.63

and

pre-AIA

37 CFR 1.64

referring to the specification being

submitted; or

(C) submit an amendment under

37 CFR

1.57(b)

in a nonprovisional application. If a

nonprovisional application was filed on or after September 21, 2004, and

contains a claim under

37 CFR 1.55

for priority

of a prior-filed foreign application, or a claim under

37 CFR

1.78

for the benefit of a prior-filed provisional,

nonprovisional, or international application that was present on the filing

date of the application, and the specification was inadvertently omitted

from the application and is completely contained in the prior-filed

application, applicant may submit an amendment to include the inadvertently

omitted specification pursuant to

37 CFR

1.57(b)

. The amendment must be accompanied by a

petition under

37 CFR 1.53(e)

along

with the petition fee set forth in

37 CFR

1.17(f)

. See

MPEP §

217

. The amendment should be identified as an

amendment pursuant to

37 CFR 1.57(b)

and must

comply with the requirements of

37 CFR

1.57(b)

and

37 CFR 1.121

. The

two-month period is extendable under

37 CFR 1.136

.

Applications in which a “Notice of Incomplete Application” has

been mailed will be retained in OPAP to await action by the applicant since

further action by the applicant is necessary for the application to be accorded a

filing date. Unless applicant completes the application or files a petition under

37 CFR

1.53(e)

with the petition fee set forth in

37 CFR

1.17(f)

, within the period set in the “Notice of Incomplete

Application,” the application will be processed as an incomplete application under

37 CFR

1.53(e)

.

III

pplicant since

further action by the applicant is necessary for the application to be accorded a

filing date. Unless applicant completes the application or files a petition under

37 CFR

1.53(e)

with the petition fee set forth in

37 CFR

1.17(f)

, within the period set in the “Notice of Incomplete

Application,” the application will be processed as an incomplete application under

37 CFR

1.53(e)

.

III.

APPLICATION FORWARDED FOR EXAMINATION

If it is discovered that an application that was forwarded to a

Technology Center (TC) for examination was filed without all of the page(s) of the

specification, and a Notice of Omitted Items has

not

been

mailed by OPAP, the examiner should review the application to determine whether

the application is entitled to a filing date. An application filed under

35 U.S.C.

111(a)

prior to December 18, 2013 or a design application is

entitled to a filing date if the application contains something that can be

construed as a written description, at least one drawing figure (if necessary

under

35 U.S.C.

113

, first sentence), and at least one claim. If the

application is not a design application and was filed under

35 U.S.C.

111(a)

on or after December 18, 2013, the application is

entitled to a filing date if it is filed with a specification, with or without

claims. However, claims must be filed before the application is sent to the

TC.

A.

Application Entitled to a Filing Date

If an application filed without all of the pages of the

specification is entitled to a filing date, the examiner should notify

applicant of the omission in the next Office action and require applicant to do

one of the following:

(A) accept the application, as filed, without all of the

page(s) of the specification;

(B) file any omitted page(s) and a petition under

37

CFR 1.182

with the petition fee set forth in

37 CFR 1.17(f)

,

requesting the date of submission of the omitted page(s) as the

application filing date

d notify

applicant of the omission in the next Office action and require applicant to do

one of the following:

(A) accept the application, as filed, without all of the

page(s) of the specification;

(B) file any omitted page(s) and a petition under

37

CFR 1.182

with the petition fee set forth in

37 CFR 1.17(f)

,

requesting the date of submission of the omitted page(s) as the

application filing date. For applications filed before September 16,

2012, the omitted pages must be accompanied by an oath or declaration in

compliance with

pre-AIA 37 CFR 1.63

and

pre-AIA 37 CFR 1.64

referring to the omitted

page(s); or

(C) file a petition under

37 CFR 1.53(e)

with

the petition fee set forth in

37 CFR

1.17(f)

alleging that the page(s) indicated as

omitted was in fact deposited with the USPTO with the application papers,

including any and all evidence supporting the allegation. See

MPEP § 503

. The petition

fee will be refunded if it is determined that the page(s) was in fact

received by the USPTO with the application papers deposited on filing.

If applicant is willing to accept the application, as filed,

without all of the page(s) of the application (item A above), an amendment of

the specification is required to renumber the pages of the application

consecutively and to cancel any incomplete sentences caused by the absence of

the omitted page(s). The amendment should be submitted in response to the

Office action.

If an application was filed on or after September 21, 2004, and

contains a claim under

37 CFR 1.55

for priority of

a prior-filed foreign application, or a claim under

37 CFR

1.78

for the benefit of a prior-filed provisional,

nonprovisional, international, or international design application that was

present on the filing date of the application, and the omitted portion of the

specification was inadvertently omitted from the application and is completely

contained in the prior-filed application, applicant may submit an amendment to

include the inadvertently omitted portion of the specification pursuant to

37 CFR 1.5

l,

nonprovisional, international, or international design application that was

present on the filing date of the application, and the omitted portion of the

specification was inadvertently omitted from the application and is completely

contained in the prior-filed application, applicant may submit an amendment to

include the inadvertently omitted portion of the specification pursuant to

37 CFR 1.57(b)

. The amendment should be submitted in

response to the Office action and must comply with

37 CFR

1.57(b)

and

37 CFR 1.121

. See

MPEP § 217

.

Any petition filed in accordance with item B or C above will

be forwarded to the Office of Petitions.

B.

Application NOT Entitled to a Filing Date

If upon review of the application, the examiner determines that

the application is NOT entitled to a filing date, the examiner should forward

the application to OPAP for mailing of a “Notice of Incomplete

Application.”