Applications Filed Without Drawings

[Editor Note: This section is only applicable to applications filed prior to

December 18, 2013 or to design applications. Applications, which are not design

applications, filed under

35 U.S.C. 111(a) or (b)

on or

after December 18, 2013 are entitled to a filing date even if the application does

not contain drawings. If such an application is filed without drawings, it may be

completed subsequent to its filing date. See

37 CFR

1.53(e)

and

MPEP § 601.01(g)

.]

35 U.S.C.

111(a)(2)(B)

and

35 U.S.C. 111(b)(1)(B)

each

provide, in part, that an “application shall include . . . a drawing as prescribed by

section 113.”

35

U.S.C. 113

(first sentence) in turn provides that an “applicant

shall furnish a drawing where necessary for the understanding of the subject matter

sought to be patented.” For applications filed prior to December 18, 2013,

35 U.S.C.

111(a)(4)

and

35 U.S.C. 111(b)(4)

each provide,

in part, that the “filing date. . . shall be the date on which . . . any required

drawing are received in the Patent and Trademark Office.” Therefore, design

applications and applications filed under

35 U.S.C. 111(a) or (b)

prior to

December 18, 2013 must have any required drawing, if it is necessary for the

understanding of the invention, in order to receive a filing date. For applications

other than design applications filed on or after December 18, 2013, although drawings

are not required in order to receive a filing date, drawings should be submitted on

filing if necessary for the understanding of the invention because no amendment may

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

Applications filed without drawings are initially inspected to

determine whether a drawing is referred to in the specification, and if not, whether

a drawing is necessary for the understanding of the invention.

35 U.S.C. 113

(first sentence)

if necessary for the understanding of the invention because no amendment may

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

Applications filed without drawings are initially inspected to

determine whether a drawing is referred to in the specification, and if not, whether

a drawing is necessary for the understanding of the invention.

35 U.S.C. 113

(first sentence).

It has been USPTO practice to treat an application that contains at

least one process or method claim as an application for which a drawing is not

necessary for an understanding of the invention under

35 U.S.C. 113

(first sentence). The same practice has been followed in composition applications.

Other situations in which drawings are usually not considered necessary for the

understanding of the invention under

35 U.S.C. 113

(first sentence)

are:

(A)

Coated articles or products:

where the invention resides

solely in coating or impregnating a conventional sheet

(

e.g.,

paper or cloth, or an article of known and

conventional character with a particular composition), unless significant

details of structure or arrangement are involved in the article claims;

(B)

Articles made from a particular material or composition:

where the invention consists in making an article of a particular material or

composition, unless significant details of structure or arrangement are

involved in the article claims;

(C)

Laminated structures:

where the claimed invention involves

only laminations of sheets (and coatings) of specified material unless

significant details of structure or arrangement (other than the mere order of

the layers) are involved in the article claims; or

(D)

Articles, apparatus, or systems where sole distinguishing feature is

presence of a particular material:

where the invention resides

solely in the use of a particular material in an otherwise old article,

apparatus or system recited broadly in the claims, for example:

(1) A hydraulic system distinguished solely by the use

therein of a particular hydraulic fluid;

volved in the article claims; or

(D)

Articles, apparatus, or systems where sole distinguishing feature is

presence of a particular material:

where the invention resides

solely in the use of a particular material in an otherwise old article,

apparatus or system recited broadly in the claims, for example:

(1) A hydraulic system distinguished solely by the use

therein of a particular hydraulic fluid;

(2) Packaged sutures wherein the structure and arrangement of

the package are conventional and the only distinguishing feature is the

use of a particular material.

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

design application having at least one claim, or a provisional application having at

least some disclosure, directed to the subject matter discussed above for which a

drawing is usually not considered essential for a filing date,

not

describing drawing figures in the specification, and

filed without drawings will simply be processed, so long as the application contains

something that can be construed as a written description. A nonprovisional

application filed prior to December 18, 2013 or a design application having at least

one claim, or a provisional application having at least some disclosure, directed to

the subject matter discussed above for which a drawing is usually not considered

essential for a filing date, describing drawing figure(s) in the specification, but

filed without drawings will be treated as an application filed without all of the

drawing figures referred to in the specification as discussed in

MPEP §

601.01(g)

, so long as the application contains something

that can be construed as a written description. In a situation in which the

appropriate Technology Center (TC) determines that drawings are necessary under

35 U.S.C.

113

(first sentence) the filing date issue will be reconsidered

by the USPTO in nonprovisional applications filed prior to December 18, 2013 or in

design applications

in

MPEP §

601.01(g)

, so long as the application contains something

that can be construed as a written description. In a situation in which the

appropriate Technology Center (TC) determines that drawings are necessary under

35 U.S.C.

113

(first sentence) the filing date issue will be reconsidered

by the USPTO in nonprovisional applications filed prior to December 18, 2013 or in

design applications. The application will be returned to the Office of Patent

Application Processing (OPAP) for mailing of a “Notice of Incomplete

Application.”

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

design application does not have at least one claim directed to the subject matter

discussed above for which a drawing is usually not considered essential for a filing

date, or a provisional application filed prior to December 18, 2013 does not have at

least some disclosure directed to the subject matter discussed above for which a

drawing is usually not considered essential for a filing date, and is filed without

drawings, OPAP will mail a “Notice of Incomplete Application” indicating that the

application lacks drawings and that

35 U.S.C. 113

(first sentence)

requires a drawing where necessary for the understanding of the subject matter sought

to be patented.

Applicant may file a petition under

37 CFR 1.53(e)

with the petition fee set forth in

37 CFR 1.17(f)

, asserting that

(A) the drawing(s) at issue was submitted, or (B) the drawing(s) is not necessary

under

35 U.S.C.

113

(first sentence) for a filing date. The petition must be

accompanied by sufficient evidence 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

drawing(s) at issue). Alternatively, applicant in a nonprovisional application may

submit drawing(s) and accept the date of such submission as the application filing

date

date. The petition must be

accompanied by sufficient evidence 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

drawing(s) at issue). Alternatively, applicant in a nonprovisional application may

submit drawing(s) and accept the date of such submission as the application filing

date. For applications filed before September 16, 2012, such drawings 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 drawing(s) being submitted.

If the drawing(s) was inadvertently omitted from a nonprovisional

application filed on or after September 21, 2004, and the application 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 application, or international design application that

was present on the filing date of the application, and the inadvertently omitted

drawing(s) is completely contained in the prior-filed application, the applicant may

submit the omitted drawing(s) by way of an amendment in compliance with

37 CFR

1.57(b)

. The amendment must be by way of a petition under

37 CFR

1.53(e)

accompanied by the petition fee set forth in

37

CFR 1.17(f)

. See

MPEP §

217

.

In design applications, OPAP will mail a “Notice of Incomplete

Application” indicating that the application lacks the drawings required under

35 U.S.C.

113

(first sentence). The applicant may: (A) promptly file a

petition under

37

CFR 1.53(e)

with the petition fee set forth in

37 CFR 1.17(f)

, asserting that the missing drawing(s) was

submitted; or (B) promptly submit drawing(s) and accept the date of such submission

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

such drawing(s) must be accompanied by an oath or declaration in compliance with

pre-AIA 37 CFR

1.63

and

pre-AIA 37 CFR 1.64

37

CFR 1.53(e)

with the petition fee set forth in

37 CFR 1.17(f)

, asserting that the missing drawing(s) was

submitted; or (B) promptly submit drawing(s) and accept the date of such submission

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

such drawing(s) must be accompanied by an oath or declaration in compliance with

pre-AIA 37 CFR

1.63

and

pre-AIA 37 CFR 1.64

. Applicant

may also be able to file an amendment by way of a petition under

37 CFR

1.53(e)

as provided for in

37 CFR

1.57(b)(3)

as discussed above.

37 CFR

1.153(a)

provides that the claim in a design application “shall

be in formal terms to the ornamental design for the article (specifying name) as

shown, or as shown and described.” As such, petitions under

37 CFR 1.53(e)

asserting that drawings are unnecessary under

35 U.S.C. 113

(first sentence)

for a filing date in a design application will

not

be found

persuasive.

The treatment of an application subsequent to the mailing of a

“Notice of Incomplete Application” is discussed in

MPEP §

601.01(d)

.