Nonprovisional Application Filed Without at Least One Claim

[Editor Note: This section is only applicable to nonprovisional applications

filed prior to December 18, 2013 or to design applications. Nonprovisional

applications, which are not design applications, filed under

35 U.S.C.

111(a)

on or after December 18, 2013 are entitled to a

filing date even if the specification does not contain claims. If such an

application is filed without claims, it may be completed subsequent to its filing

date. See

MPEP §

601.01(a)

, subsection II.]

For nonprovisional applications filed prior to December 18, 2013 or

design applications, the applicable version of

35 U.S.C. 111(a)(2)

requires that

an application for patent include,

inter alia,

“a specification as

prescribed by section 112,” and the applicable version of

35 U.S.C.

111(a)(4)

provides that the “filing date of an application

shall be the date on which the specification and any required drawing are received in

the Patent and Trademark Office.”

35 U.S.C. 112(a)

provides, in

part, that “[t]he specification shall contain a written description of the

invention,” and

35 U.S.C. 112(b)

, provides that

“[t]he specification shall conclude with one or more claims particularly pointing out

and distinctly claiming the subject matter which the applicant regards as his

invention.” Also, the Court of Appeals for the Federal Circuit stated in

Litton Systems, Inc. v. Whirlpool Corp.:

Both statute,

35 U.S.C. 111[(a)]

, and

federal regulations,

37 CFR 1.51[(b)]

, make clear

the requirement that an application for a patent

must

include.

. . a specification and claims. . . . The omission of any

one

of these component parts makes a patent application incomplete and thus not

entitled to a filing date.

728 F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir. 1984)(citing

Gearon v. United States,

121 F. Supp 652, 654, 101 USPQ 460,

461 (Ct. Cl. 1954),

cert. denied,

348 U.S. 942, 104 USPQ 409

ment that an application for a patent

must

include.

. . a specification and claims. . . . The omission of any

one

of these component parts makes a patent application incomplete and thus not

entitled to a filing date.

728 F.2d 1423, 1437, 221 USPQ 97, 105 (Fed. Cir. 1984)(citing

Gearon v. United States,

121 F. Supp 652, 654, 101 USPQ 460,

461 (Ct. Cl. 1954),

cert. denied,

348 U.S. 942, 104 USPQ 409

(1955))(emphasis in the original).

Therefore, in an application filed under

35 U.S.C.

111(a)

prior to December 18, 2013 and in a design application,

a claim is a statutory requirement for according a filing date to the application.

35 U.S.C.

171

makes

35 U.S.C. 112

applicable to

design applications.

35 U.S.C. 162

specifically

requires the specification in a plant patent application to contain a claim, but a

claim is not required for receiving a filing date for plant patent applications filed

on or after December 18, 2013. In addition,

35 U.S.C. 111(b)(2)

provides that

“[a] claim, as required by subsections (b) through (e) of section 112, shall not be

required in a provisional application.” Thus, only design applications and

nonprovisional applications filed prior to December 18, 2013 that are filed without

at least one claim are incomplete and not entitled to a filing date.

If a nonprovisional application filed prior to December 18, 2013 or a

design application does not contain at least one claim, a “Notice of Incomplete

Application” will be mailed to the applicant(s) indicating that no filing date has

been granted and setting a period for submitting a claim. The filing date will be the

date of receipt of at least one claim. See

In re Mattson,

208 USPQ

168 (Comm’r Pat. 1980). In 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

referring to the claim being submitted is also

required

dicating that no filing date has

been granted and setting a period for submitting a claim. The filing date will be the

date of receipt of at least one claim. See

In re Mattson,

208 USPQ

168 (Comm’r Pat. 1980). In 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

referring to the claim being submitted is also

required.

If a nonprovisional application filed prior to December 18, 2013 or a

design application is accompanied by a preliminary amendment which cancels all claims

without presenting any new or substitute claims, the Office will disapprove such an

amendment. See

37

CFR 1.115(b)(1)

and

Exxon Corp. v. Phillips Petroleum

Co.,

265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001). Thus, the

application will not be denied a filing date merely because such a preliminary

amendment was submitted on filing. For fee calculation purposes, the Office will

treat such an application as containing only a single claim.

As

37 CFR 1.53(c)(2)

permits the conversion of an application

filed under

35

U.S.C. 111(a)

to an application under

35 U.S.C.

111(b)

, an applicant in an application, other than for a design

patent, filed under

35 U.S.C. 111(a)

on or after June 8, 1995, without at least

one claim has the alternative of filing a petition under

37 CFR

1.53(c)(2)

to convert such application into an application

under

35 U.S.C.

111(b)

, which does not require a claim to be entitled to its

date of deposit as a filing date. Such a petition, however, must be filed prior to

the expiration of 12 months after the date of deposit of the application under

35 U.S.C.

111(a)

, and comply with the other requirements of

37 CFR

1.53(c)(2)

. See

MPEP § 601.01(c)

. For nonprovisional

applications filed under

35 U.S.C. 111(a)

on or after

December 18, 2013, there is no need to request conversion to a provisional

application because such applications do not require presentation of at least one

claim to obtain a filing date

of deposit of the application under

35 U.S.C.

111(a)

, and comply with the other requirements of

37 CFR

1.53(c)(2)

. See

MPEP § 601.01(c)

. For nonprovisional

applications filed under

35 U.S.C. 111(a)

on or after

December 18, 2013, there is no need to request conversion to a provisional

application because such applications do not require presentation of at least one

claim to obtain a filing date.

The treatment of an application subsequent to the mailing of a

“Notice of Incomplete Application” is discussed in

MPEP §

601.01(d)

.