[Federal Register Volume 61, Number 115 (Thursday, June 13, 1996)]
[Notices]
[Pages 30040-30046]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-15049]
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[[Page 30041]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 951019254-6136-02]
RIN 0651-XX05
Change in Procedure Relating to an Application Filing Date
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of change in procedure.
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SUMMARY: The Patent and Trademark Office (PTO) is implementing a change
in procedure relating to the treatment of applications filed without
all the pages of the specification or without all of the figures of the
drawings. Under this new procedure, the PTO will accord a filing date
to any application that contains something that can be construed as a
written description, any necessary drawing, and, in a nonprovisional
application, at least one claim, regardless of whether the application
is filed without all the pages of the specification or without all of
the figures of the drawings. Applications filed without all the pages
of the specification or without all of the figures of the drawings will
be treated by mailing a notice indicating that the application has been
accorded a filing date, but is missing pages of the specification of
figures of drawings.
The notice will indicate that failure to timely (37 CFR 1.181(f))
file a petition under 37 CFR 1.53(c) of 1.182 in response to such
notice will result in the PTO treating the original application papers
(the original disclosure of the intention) as including only those
application papers present in the PTO on the date of deposit.
EFFECTIVE DATE: July 22, 1996.
FOR FURTHER INFORMATION CONTACT:
Robert W. Bahr by telephone at (703) 305-9285, by facsimile at (703)
308-6916, or Jeffrey V. Nase by telephone at (703) 305-9285, or by mail
addressed to Box Comments--Patents, Assistant Commissioner for Patents,
Washington, D.C. 20231.
SUPPLEMENTARY INFORMATION: The PTO is implementing a change in
procedure relating to the treatment of applications filed without all
the pages of the specification (Section 608.01 of the Manual of Patent
Examining Procedure (MPEP)) (e.g., with page numbering revealing that
page(s) are missing), or without all of the figures of the drawings
(MPEP 608.02) (e.g., without drawing figures that are mentioned in the
specification). The procedure set forth in this notice will be
incorporated into the next revision of the MPEP.
The current treatment of applications that fail to identify the
names of the actual inventor(s) (e.g., an application naming the
inventorship only as ``Jane Doe et al.'') as required by 37 CFR 1.41(a)
and 1.53(b) is not affected by the adoption of the procedure set forth
in this notice.
In a Notice entitled ``Proposed Changes in Procedures Relating to
an Application Filing Date'' (Filing Date Notice), published in the
Federal Register at 60 FR 56982-84 (November 13, 1995), and in the PTO
Official Gazette at 1181 Off. Gaz. Pat. Office 12-13 (December 5,
1995), the PTO proposed a change in procedure relating to the treatment
of applications filed without all the pages of the specification or
without all of the figures of the drawings. In view of the comments
received in response to the Filing Date Notice, the PTO is adopting the
proposed change.
The adopted procedure for the treatment of applications filed
without all the pages of the specification or without all of the
figures of the drawings is set forth below.
Applications Filed Without All Pages of Specification
The Initial Application Examination Division reviews application
papers to determine whether all of the pages of the specification are
present in the 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, the names of all the inventors, and, in
a nonprovisional application, at least one claim, the Initial
Application Examination Division will mail a ``Notice of Omitted
Items'' indicating that the application papers so deposited have been
accorded a filing date, but are lacking some page(s) of the
specification.
The mailing of a ``Notice of Omitted Items'' will permit the
applicant to either: (1) Promptly establish prior receipt in the PTO of
the page(s) at issue (generally by way of a date-stamped postcard
receipt (MPEP 503)), or (2) promptly submit the omitted page(s) in a
nonprovisonal application and accept the date of such submission as the
application filing date. An applicant asserting that the page(s) was in
fact deposited in the PTO with the application papers must file a
petition under 37 CFR 1.53(c) (and the petition fee under 37 CFR
1.17(i) (37 CFR 1.17(q) in a provisional application), which will be
refunded if it is determined that the page(s) was in fact received by
the PTO with the application papers deposited on filing) with evidence
of such deposit within two months of the date of the ``Notice of
Omitted Items'' (37 CFR 1.181(f)). 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 file any omitted
page(s) with an oath or declaration in compliance with 37 CFR 1.63 and
1.64 referring to such page(s) and a petition under 37 CFR 1.182 (with
the petition fee under 37 CFR 1.17(h)) requesting the later filing date
within two months of the date of the ``Notice of Omitted Items'' (37
CFR 1.181(f)).
An applicant willing to accept the application as deposited in the
PTO need not respond to the ``Notice of Omitted Items,'' and the
failure to file a petition under 37 CFR 1.53(c) or 1.182 (and the
requisite petition fee) as discussed above within two months of the
date of the ``Notice of Omitted Items'' (37 CFR 1.181(f)) will be
treated as constructive acceptance by the applicant of the application
as deposited in the PTO. Amendment of the specification is required in
a nonprovisional application to renumber the pages consecutively and
cancel any incomplete sentences caused by the absence of the omitted
pages. Such amendment should be by way of preliminary amendment
submitted prior to the first Office action to avoid delays in the
prosecution of the application.
If the application does not contain anything that can be construed
as a written description, the Initial Application Examination Division
will mail a Notice of Incomplete Application (PTO-1123) indicating that
the application lacks the specification required by 35 U.S.C. 112. The
applicant may file a petition under 37 CFR 1.53(c) (and the petition
fee under 37 CFR 1.17(i) (37 CFR 1.17(q) in a provisional application))
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(c) must be
accompanied by sufficient evidence (37 CFR 1.181(b)) to establish the
applicant's entitlement to the requested filing date (e.g., a date-
stamped postcard receipt (MPEP 503) to establish prior receipt in the
PTO of the missing specification). Alternatively, the applicant may
submit the omitted specification, including at least one claim in a
nonprovisional application, accompanied by an oath or declaration in
compliance with 37 CFR 1.63 and 1.64 referring to the specification
being submitted and accept the date of such submission as the
application filing date.
[[Page 30042]]
Original claims form part of the original disclosure and provide
their own written description See In re Anderson, 471 F.2d 1237, 176
USPQ 331 (CCPA 1973). As such, an application that contains at least
one claim, but dues not contain anything which can be construed as a
written description of such claim(s), would be unusual.
Nonprovisional Applications Filed Without at Least One Claim
35 U.S.C. 111(a)(2) requires that an application for patent
include, inter alia, ``a specification as prescribed by section 112 of
this title,'' and 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, first paragraph, provides, in part, that ``[t]he
specification shall contain a written description of the invention,''
and 35 U.S.C. 112, second paragraph, 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 1.151[(a)(1)], 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 (1955)) (emphasis in
the original).
Therefore, in an application filed under 35 U.S.C. 111(a), a claim
is a statutory requirement for according a filing date to the
application. 35 U.S.C. 162 and 171 make 35 U.S.C. 112 applicable to
plant and design applications, and 35 U.S.C. 162 specifically requires
the specification in a plant patent application to contain a claim. 35
U.S.C. 111(b)(2), however, provides that ``[a] claim, as required by
the second through fifth paragraphs of section 112, shall not be
required in a provisional application.'' Thus, with the exception of
provisional applications filed under 35 U.S.C. 111(b), any application
filed without at least one claim is incomplete and not entitled to a
filing date.
If a nonprovisional 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 Pats. 1980).
As 37 CFR 1.53(b)(2)(ii) 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(b)(2)(ii) 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 twelve 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(b)(20(ii).
Applications Filed Without Any Drawings
35 U.S.C. 111(a)(2)(B) and 111(b)(2)(B) each provide, in part, that
an ``application shall include * * * a drawing as prescribed by section
113 of this title'' and 35 U.S.C. 111(a)(4) and 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.''
35 U.S.C. 113 in turn provides that an ``applicant shall furnish a
drawing where necessary for the understanding of the subject matter
sought to be patented.''
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 an understanding of the
invention. 35 U.S.C. 113.
In general, it has been PTO 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. The same practice has been followed in composition
applications. Other situations in drawings are usually not considered
necessary for an understanding of the invention under 35 U.S.C. 113
are:
I. 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;
II. 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;
III. 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
IV. 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:
a. A hydraulic system distinguished solely by the use therein of a
particular hydraulic fluid;
b. 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 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 usually be
processed for examination, so long as the application contains
something that can be construed as a written description and the names
of all the inventors. A nonprovisional 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 below, so long as the
application contains something that can be construed as a written
description and the names of all the inventors. In a situation in which
the appropriate examining group determines that drawings are necessary
under 35 U.S.C. 113 the filing date issue will be reconsidered on
reference from the examining group.
If a nonprovisional application does not have at least one claim,
or a provisional application does not have at
[[Page 30043]]
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, the Initial Application
Examination Division will mail a ``Notice of Incomplete Application''
indicating that the application lacks drawings and that 35 U.S.C. 113
requires a drawing where necessary for the understanding of the subject
matter sought to be patented.
The application may file a petition under 37 CFR 1.53(c) (and the
petition fee under 37 CFR 1.17(i) (37 CFR 1.17(q) in a provisional
application) asserting that (1) the drawing(s) at issue was submitted,
or (2) the drawing(s) is not necessary under 35 U.S.C. 113 for a filing
date. The petition must be accompanied by sufficient evidence to
establish the applicant's entitlement to the requested filing date
(e.g., a date-stamped postcard receipt (MPEP 503) to establish prior
receipt in the PTO of the drawing(s) at issue). Alternatively, the
applicant may submit drawing(s) accompanied by an oath or declaration
in compliance with 37 CFR 1.63 and 1.64 referring to the drawing(s)
being submitted and accept the date of such submission as the
application filing date.
In design applications, the Initial Application Examination
Division will mail a ``Notice of Incomplete Application'' indicating
that the application lacks the drawings required under 35 U.S.C. 113.
The applicant may: (1) Promptly file a petition under 37 CFR 1.53(c)
(and the petition fee under 37 CFR 1.17(i)) asserting that the missing
drawing(s) was submitted, or (2) promptly submit drawing(s) accompanied
by an oath or declaration in compliance with 37 CFR 1.63 and 1.64 and
accept the date of such submission as the application filing date. 37
CFR 1.154(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(c) asserting that drawings are unnecessary under 35 U.S.C.
113 for a filing date in a design application will not be found
persuasive.
Applications Filed Without All Figures of Drawings
The Initial Application Examination Division reviews application
papers to determine whether all mentioned drawing figures in the
specification are present in the application. If the 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, the names of all the inventors, and, in a
nonprovisional application, at least one claim, the Initial Application
Examination Division will mail a ``Notice of Omitted Items'' indicating
that the application papers so deposited have been accorded a filing
date, but are lacking some of the drawings described in the
specification.
The mailing of a ``Notice of Omitted Items'' will permit the
applicant to either: (1) Promptly establish prior receipt in the PTO of
the drawing(s) at issue (generally by way of a date-stamped postcard
receipt (MPEP 503)), or (2) promptly submit the omitted drawing(s) in a
nonprovisional application and accept the date of such submission as
the application filing date. An applicant asserting that the drawing(s)
was in fact deposited in the PTO with the application papers must file
a petition under 37 CFR 1.53(c) (and the petition fee under 37 CFR
1.17(i) (37 CFR 1.17(q) in a provisional application), which will be
refunded if it is determined that the drawing(s) was in fact received
by the PTO with the application papers deposited on filing) with
evidence of such deposit within two months of the date of the ``Notice
of Omitted Items'' (37 CFR 1.181(f)). An applicant desiring to submit
the omitted drawings in a nonprovisional application and accept the
date of such submission as the application filing date must file any
omitted drawing(s) with an oath or declaration in compliance with 37
CFR 1.63 and 1.64 referring to such drawing(s) and a petition under 37
CFR 1.182 (with the petition fee under 37 CFR 1.17(h)) requesting the
later filing date within two months of the date of the ``Notice of
Omitted Items'' (37 CFR 1.181(f)).
An applicant willing to accept the application as deposited in the
PTO need not respond to the ``Notice of Omitted Items,'' and the
failure to file a petition under 37 CFR 1.53(c) or 1.182 (and the
requisite petition fee) as discussed above within two months of the
date of the ``Notice of Omitted Items'' (37 CFR 1.181(f)) will be
treated as constructive acceptance by the applicant of the application
as deposited in the PTO. 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, a separate letter is required in nonprovisional
application to renumber the drawing figures consecutively (showing the
proposed changes in red ink), if necessary, and amendment of the
specification is required to correct the references to the drawing
figures to correspond with any relabelled drawing figures, both in the
brief and detailed descriptions of the drawings. Such amendment and
correction to the drawing figures, if necessary, should be by way of
preliminary amendment submitted prior to the first office action to
avoid delays in the prosecution of the application.
Subsequent Treatment of Application
In instances in which a ``Notice of Incomplete Application'' has
been mailed, further action by the applicant is necessary for the
application to be accorded a filing date. As such, the application will
be retained in the Initial Application Examination Division to await
such action. Unless the applicant either completes the application or
files a petition under 27 CFR 1.53(c) (and the petition fee under 37
CFR 1.17(i) or 1.17(q)) within the period set in the ``Notice of
Incomplete Application,'' the application will be processed as an
incomplete application under 37 CFR 1.53(c).
In instances in which a ``Notice of Omitted Items'' has been
mailed, the application will be retained in the Initial Application
Examination Division for a period of two months from the mailing date
of ``Notice of Omitted Items'' to permit the applicant to either: (1)
Establish prior receipt in the PTO of the page(s) or drawing(s) at
issue, or (2) promptly submit the omitted page(s) or drawing(s) in a
nonprovisional application and accept the date of such submission as
the application filing date. Extensions of time under 37 CFR 1.136 will
not be applicable to this two-month time period.
The grant of a petition under 37 CFR 1.182 to accept the omitted
page(s) or drawing(s) in a nonprovisional application and accord the
date of such submission as the application filing date will be
indicated by the issuance of a new filing receipt indicating the filing
date accorded the application.
Unless the applicant timely files a petition under 37 CFR 1.53(c)
or 1.182 (and the requisite petition fee), the application will
maintain the filing date as of the date of deposit of the application
papers in the PTO, and the original application papers (i.e., the
original disclosure of the invention) will include only those
application papers present in the PTO on the date of deposit.
Nonprovisional applications that are complete under 35 CFR
[[Page 30044]]
1.51(a)(1) will then be forwarded to the appropriate examining group
for examination of the application. Provisional applications that are
complete under 35 CFR 1.51(a)(2) will then be forwarded to Files
Repository. The current practice for treating applications that are not
complete under 37 CFR 1.51(a) will remain unchanged (37 CFR 1.53(d)).
Any petition under 37 CFR 1.53(c) or 1.182 not filed within this
two-month period may be dismissed as untimely. 37 CFR 1.181(f). Under
the adopted procedure, the PTO may strictly adhere to the two-month
period set forth in 37 CFR 1.181(f), and dismiss as untimely any
petition not filed within this two-month period. This strict adherence
to the two-month period set forth in 37 CFR 1.181(f) is justified as
such applications will now be forwarded for examination at the end of
this two-month period. It is further justified in instances in which
the applicant seeks to submit the omitted page(s) or drawing(s) in a
nonprovisional application and request the date of such submission as
the application filing date since: (1) According the application a
filing date later than the date of deposit may affect the date of
expiration of any patent issuing on the application due to the changes
to 35 U.S.C. 154 contained in Public Law 103-465, Sec. 532, 108 Stat.
4809 (1994), and (2) the filing of a continuation-in-part application
is a sufficiently equivalent mechanism for adding additional subject
matter to avoid the loss of patent rights.
The submission of omitted page(s) or 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(h)) with any omitted page(s) or
drawing(s), which is a cost-effective alternative in instances in which
an nonprovisional application is deposited without filing fees.
Likewise, in view of the relatively low filing fee for provisional
applications, and the PTO's desire to minimize the processing of
provisional applications, the PTO will not grant petitions under 37 CFR
1.182 to accept omitted page(s) or drawing(s) and accord an application
filing date as of the date of such submission. Instead, the applicant
should simply refile the complete provisional application.
Response to Comments
Thirteen comments were received in response to the Filing Date
Notice. Nine comments expressly supported the proposed change, while
the remaining four comments simply made additional comments or
suggested additional changes, but did not oppose the proposed change.
The written comments have been analyzed, and responses to the comments
follow.
Comment (1): One comment suggested that the PTO should, by
rulemaking, permit the addition of subject matter in a foreign
application for which priority is claimed.
Response: Where an application includes in the papers deposited on
filing with the application a certified copy of a foreign application
for which priority is claimed, the PTO will grant a timely petition
under 37 CFR 1.182 requesting that: (1) the corresponding sheets of
drawings in the foreign priority application be accepted for any
omitted sheets of drawings in the application, or (2) the foreign
priority application be accepted as the application as filed, which may
result in the treatment of the foreign priority application as an
application filed in a non-English language (37 CFR 1.52(d)).
In instances in which the foreign priority application was not
present among the papers deposited on filing with the application, any
addition of subject matter from the foreign priority application into
the application must be considered as new matter under 35 U.S.C. 132
(and, as such, will not be permitted by petition), unless the
application-as-filed specifically incorporates the foreign priority
application by reference.
Drawing figures do not require translation of the subject matter
shown therein and individual drawing figures are sufficiently
segregated that it is considered appropriate to permit, by petition
under 37 CFR 1.182, the acceptance of the corresponding sheets of
drawings in the foreign priority application for any omitted sheets of
drawings in the application. The specification of a foreign priority
application, however, is generally subject to translation and revision
prior to its filing in the PTO as the specification of an application.
As such, it is considered appropriate to permit, by petition under 37
CFR 1.182, the acceptance of a foreign priority application as the
application as filed, but it is not considered acceptable to permit the
acceptance of a translation of portions of the foreign priority
application for omitted pages of the specification.
Finally, the occurrence of situations in which it is necessary for
an applicant to request that the corresponding sheets of drawings in
the foreign priority application be accepted for any omitted sheets of
drawings in the application, or the foreign priority application be
accepted as the application as filed is relatively rare. In addition,
the treatment of these few applications on an ad hoc basis pursuant to
37 CFR 1.182 and 1.183 has proven acceptable.
Comment (2): One comment suggested that the PTO should consider
requiring a declaration from the attorney averring that the omitted
matter was inadvertently omitted.
Response: First, in view of a registered practitioner's
responsibilities as set forth in 37 CFR Part 10, the PTO does not
generally require verification of statements by registered
practitioners. See, e.g., 37 CFR 1.125 and 1.137. Second, as there is
no apparent benefit to omitting material from an application as
deposited in the PTO, there appears to be little justification for
requiring even a statement that the omitted matter was inadvertently
omitted.
Comment (3): One comment questioned whether the change would be
applicable to applications filed under 37 CFR 1.60 or 1.62.
Response: The adopted procedure applies to applications filed under
37 CFR 1.53.
37 CFR 1.60 requires, inter alia, that the application be a true
copy of the prior application (37 CFR 1.60(b)(2)), and a copy that
omits pages of specification or sheets of drawings from the prior
application is not a true copy of the prior application. As such, a
copy that omits pages of specification or sheets of drawings from the
prior application is an improper application under 37 CFR 1.60, and
cannot be accorded a filing date as an application under 37 CFR 1.60
until the filing error is corrected.
The PTO considers 37 CFR 1.60 to be unnecessary in view of changes
to 37 CFR 1.4(d), and a trap for the unwary. The PTO has previously
proposed to eliminate 37 CFR 1.60 (See notice of proposed rulemaking
entitled ``Changes to Implement 20-Year Patent Term and Provisional
Application'' (20-Year Term Notice of Proposed Rulemaking) published in
the Federal Register at 59 FR 63951 (December 12, 1994), and in the
Patent and Trademark Office Official Gazette at 1170 Off. Gaz. Pat.
Office 377 (January 3, 1995)), and will again propose to eliminate 37
CFR 1.60, as well as 37 CFR 1.62, in an impending rulemaking to
implement the Administration's regulatory reform initiative.
A continuation or divisional application may be filed under 35
U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b)(1), by
providing
[[Page 30045]]
a copy of the prior application, including a copy of the oath or
declaration in such prior application, as filed. The patent statutes
and rules of practice do not require that an oath or declaration
include a recent date of execution, and the Examining Corps has been
directed not to object to an oath or declaration as lacking either a
recent date of execution or any date of execution. This change in
examining practice will appear in the next revision of the MPEP. As is
currently the situation under 37 CFR 1.60 and 1.62, the applicant's
duty of candor and good faith including compliance with the duty of
disclosure requirements of Sec. 1.56 is continuous and applies to the
continuation or divisional application, notwithstanding the lack of a
newly executed oath or declaration.
37 CFR 1.60(b)(4) and 1.62(a) currently permit the filing of a
continuation or divisional application by less than all of the
inventors named in a prior application without a newly executed oath or
declaration. The oath or declaration in an application filed under 37
CFR 1.53(b), however, must identify the inventorship of such
application. Thus, unless it is necessary to file a continuation or
divisional application under 37 CFR 1.60 to name less than all of the
inventors named in a prior application, applicants are encouraged to
file continuing applications under 37 CFR 1.53(b) (i.e., omit any
reference to 37 CFR 1.60 in the application papers) to avoid an
inadvertent failure to comply with all of the requirements of 37 CFR
1.60.
An application under 37 CFR 1.62 uses the content of the prior
application, and is itself only a request for an application under 37
CFR 1.62. As such, there is no concern that an application under 37 CFR
1.62 will be filed without all the pages of the specification or
without all of the figures of the drawings.
Comment (4): One comment questioned whether a filing date would be
accorded if the name of an inventor were omitted.
Response: 37 CFR 1.41 and 1.53 currently require that an
application be filed in the name of the actual inventor or inventors,
and this notice does not involve changes to the rules of practice. The
PTO will propose to eliminate this requirement in 37 CFR 1.41 and 1.53
in the rulemaking to implement the Administration's regulatory reform
initiative.
Comment (5): One comment suggested that the notices be mailed out
as soon as possible to avoid a loss of rights for those applicants who
require completion or refiling of the application. Another comment
suggested that the decision as to whether an application is
``incomplete'' should be made by the Examining Corps, rather than on a
formalistic basis by the Initial Application Examination Division.
Response: The efficient pre-examination processing of applications
is in the mutual interest of the PTO and applicants. The PTO is
currently in the process of modifying its pre-examination processing
procedures to avoid any unnecessary delay. This new procedure will not
impact the pre-examination processing of applications, in that the
Initial Application Examination Division will mail a ``Notice of
Incomplete Application,'' ``Notice of Omitted Items,'' and ``Notice to
File Missing Parts'' under this new procedure at the time the ``Notice
of Incomplete Application'' and ``Notice to File Missing Parts'' are
currently mailed.
The adopted procedure replaces formalistic procedures with
procedures based upon the requirements for a filing date as set forth
in 35 U.S.C. 111, 112, and 113. Filing date issues are ultimately
decided by the Office of Petitions in the Office of the Deputy
Assistant Commissioner for Patent Policy and Projects (MPEP 1002.02(b)
(35)) on the basis of whether and when the application meets the
requirements for a filing date as set forth in 35 U.S.C. 111, 112, and
113, and not on the basis of who made the initial decision not to
accord a filing date to the application.
It should be recognized that there is tension between the comments
objecting to any review of the entitlement of an application to a
filing date by the Initial Application Examination Division (arguing
that this issue should be considered only the Examining Corps) and the
desire for speedy notification to the applicant that a portion of the
application appears to have been omitted. To defer all review of the
entitlement of an application to a filing date until the application is
picked-up for examination would cause a significant delay in any such
notification to the applicant.
Comment (6): One comment noted that 35 U.S.C. 111(b) does not
require a claim for a provisional application. Several comments
suggested that the PTO automatically treat any nonprovisional
application filed without at least one claim as a provisional
application, if such application is otherwise entitled to a filing date
as a provisional application.
Response: A provisional application does not require a claim to be
entitled to a filing date. As discussed supra, 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(b)(2)(ii) to convert
such application into an application under 35 U.S.C. 111(b). The PTO
does not consider it appropriate to ``automatically'' consider an
application filed under 35 U.S.C. 111(a) without a claim to be an
application under 35 U.S.C. 111(b) (a provisional application), since
the applicant may not desire an application under 35 U.S.C. 111(b), and
may desire to file a claim to obtain an application filing date as of
the date of submission of such claim.
Comment (7): One comment suggested that the MPEP should clearly
indicate that applications filed without all the pages of specification
or all the figures of drawings described in the specification cannot
automatically be treated as defective under 35 U.S.C. 112, but must be
considered for compliance with 35 U.S.C. 112 by the subject matter that
is present in the application papers.
Response: In an effort to improve the examination of applications,
chapter 2100 of the MPEP has been revised to set forth specific
guidelines for rejections under 35 U.S.C. 101, 102, 103, and 112. MPEP
2161 et seq. set forth the guidelines for rejections under 35 U.S.C.
112, first and second paragraphs, and do not authorize a rejection
under 35 U.S.C. 112 based merely upon the fact that pages of
specification or figures of drawing were omitted.
Comment (8): One comment questioned whether the proposed procedure
for the treatment of applications filed without all the pages of
specification or all the figures of drawings described in the
specification is applicable to provisional applications, noting that 35
U.S.C. 111(b) provides that a claim is not required in a provisional
application.
Response: The adopted procedure applies to applications (both
provisional and nonprovisional) filed under 37 CFR 1.53. The procedure
recognizes that 35 U.S.C. 111(b) does not require a claim in a
provisional application.
Comment (9): One comment suggested that the two-month period for
taking action would be unfair in instances in which the PTO prepares
and enters the notice into the Patent Application Locating and
Monitoring (PALM) system but fails to mail the notice or mails the
notice to an incorrect correspondence address.
Response: The ``Notice of Omitted Items'' is not an action within
the meaning of 35 U.S.C. 113 to which a response is required to avoid
[[Page 30046]]
abandonment. An applicant simply has the opportunity to file a
petition, but need not take action, in response to a ``Notice of
Omitted Items.'' Thus, the timeliness of any such petition is governed
by 37 CFR 1.181(f). 37 CFR 1.181(f) provides that any petition not
filed within two months from the action complained of may be dismissed
as untimely.
Establishing prior receipt in the PTO of the page(s) or drawing(s)
at issue or submitting the omitted page(s) or drawings(s) and accepting
the date of such submission as the application filing date would result
in an addition to the papers constituting the original disclosure of
the application, and submitting the omitted page(s) or drawings(s) and
accepting the date of such submission as the application filing date
would result in a change in application filing date. As a change in
either the original disclosure or filing date of an application would
interfere with the examination of the application for compliance with
35 U.S.C. 102, 103, and 112, the PTO will not forward an application in
which a ``Notice of Omitted Items'' has been mailed for examination
until it is apparent that the applicant has not responded to the
``Notice of Omitted Items.'' Thus, a nonprovisional application will
not be processed for examination, and the examination of the
application will be delayed, until the expiration of two months from
the mailing date of ``Notice of Omitted Items.'' The two-month period
set forth in 37 CFR 1.181(f) is considered an appropriate balance
between providing an applicant sufficient time to take action in
response to a ``Notice of Omitted Items'' and avoiding unnecessary
delays in the examination of the application, which would be
undesirable in view of 35 U.S.C. 154 as amended by Public Law 103-465.
While an applicant willing to accept a nonprovisional application as
deposited in the PTO need not respond to the ``Notice of Omitted
Items,'' the filing of an express communication to that effect would
permit the PTO to proceed with the processing of the application for
examination, and, as such, may reduce the delay in the examination of
the application.
While a ``Notice of Omitted Items'' is not an action within the
meaning of 35 U.S.C. 133, the principles regarding nonreceipt or
delayed receipt of a ``Notice of Omitted Items,'' due either to a
failure on the part of the PTO to properly mail such notice or a
failure on the part of the U.S. Postal Service to deliver such notice
to the correspondence address in a timely manner, are applicable to the
nonreceipt or delayed receipt of a ``Notice of Omitted Items.''
Applicants are directed to the Notice entitled ``Withdrawing the
Holding of Abandonment when Office Actions Are Not Received,''
published in the PTO Official Gazette at 1156, Off. Gaz. Pat. Office 53
(November 16, 1993), for the evidence necessary to establish nonreceipt
of a ``Notice of Omitted Items,'' and the Notice entitled ``Procedures
For Restarting Response Periods,'' published in the PTO Official
Gazette at 1160 Off. Gaz. Pat. Office 14 (March 1, 1994), for the
evidence necessary to establish delayed receipt of a ``Notice of
Omitted Items.''
Comment (10): One comment suggested that while the proposed
procedure is an improvement, it still conflicts with 35 U.S.C. 112 and
113. The comment specifically argues that the sufficiency of an
application is a matter for determination by an examiner skilled in the
subject matter of the application, in that Congress did not intend that
the sufficiency of an application be determined by the Initial Patent
Examination Division.
Response: The adopted procedure will accord a filing date to any
application that contains something that can be construed as a written
description, any necessary drawing, and, in a nonprovisional
application, at least one claim. This procedure is consistent with the
requirements for a filing date as set forth in 35 U.S.C. 111, 112, and
113. 35 U.S.C. 113, second sentence, contemplates that drawings may be
filed after the filing date of an application. 35 U.S.C. 113, however,
provides that an ``application shall furnish a drawing where necessary
for the understanding of the subject matter sought to be patented,''
and 35 U.S.C. 111(a)(4) and 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.'' As such, the
PTO has the statutory authority, and responsibility, to determine
whether a drawing is necessary under 35 U.S.C. 113 in an application
filed without drawings prior to according a filing date to that
application.
There is nothing in 35 U.S.C. 111, 112, or 113 that limits the
authority of the Commissioner to delegate the determination of whether
or when any application meets the requirements for a filing date as set
forth in 35 U.S.C. 111, 112, and 113. In any event, filing date issues
are, as discussed supra, ultimately decided by Office of the Deputy
Assistant Commissioner for Patent Policy and Projects on the basis of
whether and when the application meets the requirements for a filing
date as set forth in 35 U.S.C. 111, 112, and 113, and not on the basis
of who made the initial decision not to accord a filing date to the
application.
Comment (11): One comment suggested that the proposed procedure be
adopted by rulemaking. Another comment suggested that the proposed
procedure either be adopted by rulemaking or clearly set forth in the
MPEP.
Response: 37 CFR 1.53(b)(1) provides that the ``filing date of an
application for patent filed under this section, except for a
provisional application, is the date on which a specification
containing a description pursuant to Sec. 1.71 and at least one claim
pursuant to Sec. 1.75; and any drawing required by Sec. 1.81(a), are
filed in the Patent and Trademark Office in the name of the actual
inventor or inventors as required by Sec. 1.41.'' 37 CFR 1.53(b)(2)
provides that the ``filing date of a provisional application is the
date on which: a specification as prescribed by 35 U.S.C. 112, first
paragraph; and any drawing required by Sec. 1.81(a), are filed in the
Patent and Trademark Office in the name of the actual inventor or
inventors as required by Sec. 1.41.'' Thus, no change to the rules of
practice is necessary to adopt the procedure set forth in this notice.
It should be noted that the MPEP 608.01 sets forth the former
procedure for treating an application filed without all of the pages of
specification or filed under 35 U.S.C. 111(a) without at least one
claim. Likewise, MPEP 608.02 sets forth the former procedure for
treating an application filed without drawings or all of the figures of
drawings.
The next revision of the MPEP will incorporate the change in
procedure set forth in this notice.
Dated: June 5, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 96-15049 Filed 6-12-96; 8:45 am]
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