Applications Filed Without All Figures of Drawings

I.

REVIEW BY THE OFFICE OF PATENT APPLICATION PROCESSING

The Office of Patent Application Processing (OPAP) reviews

application papers to determine whether all of the figures of the drawings that

are mentioned in the specification are present in the application. If an

application filed under

35 U.S.C. 111

prior to

December 18, 2013, or a design application, is filed without all of the drawing

figure(s) referred to in the specification, and the application contains something

that can be construed as a written description, at least one drawing, 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 Item(s)”) will be

sent indicating that the application papers so deposited have been accorded a

filing date, but are lacking some of the figures of drawings described in the

specification. For an application, which is not 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 drawings, 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 drawings.

The procedure for handling nonprovisional

applications 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 drawing figure(s) in a nonprovisional application will permit

the applicant to:

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

drawing(s) at issue

plications 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 drawing figure(s) in a nonprovisional application will permit

the applicant to:

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

drawing(s) at issue. An applicant asserting that the drawing(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 CFR1.17(f)

, along

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

determined that the drawing(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 drawing(s) in a nonprovisional

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

date. An applicant desiring to submit the omitted drawing(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 drawing(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. For applications filed before September

16, 2012, the omitted drawings must be filed with an oath or declaration in

compliance with

pre-AIA 37 CFR 1.63

and

pre-AIA

37 CFR 1.64

referring to such drawing(s). The

two-month period is extendable under

37 CFR 1.136

; 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:

re September

16, 2012, the omitted drawings must be filed with an oath or declaration in

compliance with

pre-AIA 37 CFR 1.63

and

pre-AIA

37 CFR 1.64

referring to such drawing(s). The

two-month period is extendable under

37 CFR 1.136

; 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 an amendment including replacement drawing

sheets in compliance with

37 CFR 1.121(d)

to

renumber the drawing figures consecutively (if necessary), and a

substitute specification (excluding claims) that amends the

specification to cancel any references to any omitted drawing(s) and

corrects the references in the specification to the drawing figures to

correspond with any relabeled drawing figures, in compliance with

37 CFR 1.121(b)(3)

and

1.125

, without adding the subject matter that

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

35 U.S.C. 132(a)

). 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. Amendment of the specification is required in a

nonprovisional application to cancel all references to the omitted

drawing, both in the brief and detailed descriptions of the drawings

and including any reference numerals shown only in the omitted

drawings. In addition, an amendment with replacement sheets of

drawings in compliance with

37 CFR 1.121(d)

is

required in a nonprovisional application to renumber the drawing

figures consecutively, if necessary, and amendment of the

specification is required to correct the references to the drawing

figures to correspond with any relabeled drawing figures, both in the

brief and detailed descriptions of the drawings, or

, an amendment with replacement sheets of

drawings in compliance with

37 CFR 1.121(d)

is

required in a nonprovisional application to renumber the drawing

figures consecutively, if necessary, and amendment of the

specification is required to correct the references to the drawing

figures to correspond with any relabeled drawing figures, both in the

brief and detailed descriptions of the drawings, or

(2) filing an amendment to add the missing figure(s) by

relying on an incorporation by reference under

37 CFR

1.57(b)

or other portions of the original

disclosure, without adding any new matter (see

35 U.S.C.

132(a)

). Applicant is required to submit new and

replacement drawing sheets in compliance with

37 CFR

1.121(d)

to add the missing figure(s). 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 application, or international design application, that

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

portion of the drawings 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 drawings 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

FR 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 submission of omitted drawing(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 drawing(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 drawing(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 missing

drawing figure(s) in a provisional application will permit the applicant to either:

lications, the USPTO will not grant petitions under

37 CFR 1.182

to

accept omitted drawing(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 missing

drawing figure(s) in a provisional application will permit the applicant to either:

(1) promptly establish prior receipt of the drawing(s) at issue by filing 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. 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)

.

The treatment of an application subsequent to the mailing of a

“Notice of Omitted Item(s)” is discussed in

MPEP § 601.01(d)

.

Applications are often filed with drawings with several views of the

invention where the views are labeled using a number-letter combination, e.g., Fig.

1A, Fig. 1B, and Fig. 1C

601.01(b)

for treatment of provisional applications that

are not complete under

37 CFR 1.51(c)

.

The treatment of an application subsequent to the mailing of a

“Notice of Omitted Item(s)” is discussed in

MPEP § 601.01(d)

.

Applications are often filed with drawings with several views of the

invention where the views are labeled using a number-letter combination, e.g., Fig.

1A, Fig. 1B, and Fig. 1C. If a figure which is referred to in the specification by a

particular number cannot be located among the drawings, and the drawings include at

least one figure labeled with that particular number in combination with a letter,

correction will be required. For example, if the drawings show Figures 1A, 1B, and 1C

and the brief description of the drawings refers only to Figure 1, this is an error

in the specification which must be corrected.

II.

REVIEW BY EXAMINER

If it is discovered that an application that was forwarded for

examination was filed without all of the drawing figure(s) referred to in the

specification, and a Notice of Omitted Items or other OPAP notice regarding

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 if the application was filed under

35 U.S.C.

111(a)

prior to December 18, 2013 or is a design

application. 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 drawings.

A

ion 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 drawings.

A.

Application Entitled to a Filing Date

If the application 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

drawing figure(s) referred to in the specification;

(B) file any omitted drawing figure(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 drawing figure(s) as the

application filing date. For applications filed before September 16,

2012, the omitted drawing(s) must be filed with an oath or declaration in

compliance with

pre-AIA 37 CFR 1.63

and

pre-AIA 37 CFR 1.64

referring to the omitted

drawing figure(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 drawing figure(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 drawing figure(s) was

in fact received by the USPTO with the application papers deposited on

filing

etition fee set forth in

37 CFR

1.17(f)

alleging that the drawing figure(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 drawing figure(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 drawing figure(s) referred to in the application (item A

above), applicant is required to submit (1) an amendment to the specification

canceling all references to the omitted drawing figure(s) including any

reference numerals shown only in the omitted drawing figure(s), (2) an

amendment with replacement sheets of drawings in compliance with

37 CFR

1.121(d)

renumbering the drawing figure(s) submitted on

filing consecutively, and (3) a further amendment to the specification

correcting references to drawing figure(s) to correspond with the relabeled

drawing figure(s), both in the brief and detailed descriptions of the drawings.

The amendment should be submitted in response to the Office action.

If an 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 omitted portion of the drawing(s) 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 drawing(s) 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

he prior-filed

application, applicant may submit an amendment to include the inadvertently

omitted portion of the drawing(s) 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 filed under

35 U.S.C. 111(a)

prior to

December 18, 2013 or a design application is NOT entitled to a filing date

because the application does not contain any drawing figure, and at least one

drawing figure is necessary under

35 U.S.C 113

, first

sentence, the examiner should forward the application to OPAP for mailing of a

“Notice of Incomplete Application.”