Requisites of the Application

The Office of Patent Application Processing (OPAP) reviews application

papers to determine whether a new application is entitled to a filing date. Note that as a

result of the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211,

December 18, 2012, and specifically, the amendments to the patent laws to implement the

provisions of the Patent Law Treaty (PLT) in title II of the PLTIA, the filing date

requirements for applications filed on or after December 18, 2013 are different from the

filing date requirements for applications filed prior to December 18, 2013. Except for

design applications, the filing date for nonprovisional applications filed on or after

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

in the Office. See

MPEP §

601.01(a)

for additional information. Similarly, provisional

applications filed on or after December 18, 2013 may receive a filing date even if the

application is filed without drawings. See

MPEP § 601.01(b)

for additional

information. 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. See

MPEP § 601.01(a)

. Also,

for applications filed on or after December 18, 2013, an application (other than an

application for a design patent) is not required to include any drawings to be entitled to

a filing date. It should be noted, however,

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

continues to

require the application to include a drawing as prescribed by

35 U.S.C. 113

, which

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

patented. Therefore, any drawings necessary for the understanding of the invention should

be submitted with the application on filing

e entitled to

a filing date. It should be noted, however,

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

continues to

require the application to include a drawing as prescribed by

35 U.S.C. 113

, which

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

patented. Therefore, any drawings necessary for the understanding of the invention should

be submitted with the application on filing.

If the subject matter of the application admits of illustration by a

drawing to facilitate understanding of the invention, including where a drawing is

necessary for the understanding of the invention, the Office will continue the practice of

requiring a drawing. See

MPEP

§ 608.02

, subsection IV. As discussed in

MPEP § 608.02

, this

requirement prior to examination should continue to be extremely rare and limited to the

situation in which no examination can be performed due to the lack of an illustration of

the invention.

In addition, 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. See

MPEP § 601.01(a)

, subsection III.

The minimal formal requirements resulting from the

implementation of the PLTIA and PLT 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

TIA and PLT 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. Similarly, while the absence of any drawing on the filing of an application no

longer raises a question as to whether the application is entitled to a filing date, the

preparation of drawings for a provisional or nonprovisional application is prudent where a

drawing is necessary for the understanding of the subject matter sought to be patented, and

inclusion of such drawing(s) with the application on filing will help ensure that the

requirements of

35 U.S.C.

113

are satisfied for any such claimed invention.

If an application (other than an application for a design

patent) is filed on or after December 18, 2013, without any claims, OPAP will issue a

notice giving the applicant a time period within which to submit at least one claim in

order to avoid abandonment. An application will not be placed on an examiner’s docket

unless and until the application includes a specification including at least one claim.

For applications filed under

pre-PLT (AIA) 35 U.S.C.

111

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)

.

Once OPAP determines that the application is entitled to a

filing date, OPAP then determines whether the application as filed is complete, e.g.,

includes the required fees, the inventor’s oath or declaration, and all pages of the

specification and drawings

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)

.

Once OPAP determines that the application is entitled to a

filing date, OPAP then determines whether the application as filed is complete, e.g.,

includes the required fees, the inventor’s oath or declaration, and all pages of the

specification and drawings. If the papers filed are not entitled to a filing date, OPAP

will send a “Notice of Incomplete Application” informing applicant of the deficiencies; if

the application is entitled to a filing date but it is not complete, 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 and indicating what papers must be filed to

complete the application.

The examiner should be careful to see that the application is

complete when taken up for examination. If, for example, pages of the specification or

drawings are missing, the examiner should determine whether the application is entitled to

the filing date assigned, and what action should be taken. See

MPEP §§ 601.01(d)

and

601.01(g)

for guidance.