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601.01(a) Nonprovisional Applications Filed Under 35 U.S.C. 111(a)

MPEP SECTION SUMMARY The details of filing a nonprovisional application under 35 U.S.C. 111(a) are outlined here. This section includes a discussion on the requirements for filing a nonprovisional application. Both the completion of nonprovisional applications filed before or on or after September 16, 2012 and before and after December 18th, 2013 are covered.

I.   APPLICATION FILING REQUIREMENTS

The procedure for filing a nonprovisional application is set forth in 37 CFR 1.53(b) and 37 CFR 1.53(d).

37 CFR 1.53(b) may be used to file any original, reissue, or substitute nonprovisional application and any continuing application, i.e., continuation, divisional, or continuation-in-part.

Except for design applications, the filing date for applications filed under 35 U.S.C. 111 on or after December 18, 2013 is the date on which a specification, with or without claims, is received in the Office.

• 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, including at least one claim, and any required drawings are received in the Office.

For applications filed under 35 U.S.C. 111(a) 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).

• Failure to meet any of the requirements will result in the application being denied a filing date.

37 CFR 1.53(d) may be used to file either a continuation or a divisional application (but not a continuation-in-part) of a design application.

• The prior nonprovisional application must be a design application, but not an international design application, that is complete, except for the inventor’s oath or declaration if the continued prosecution application (CPA) is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor.

An application filed under 37 CFR 1.53(d) must be filed before the earliest of:

• (A) payment of the issue fee on the prior application, unless a petition is granted in the prior application;
  
• (B) abandonment of the prior application; or
  
• (C) termination of proceedings on the prior application.

The filing fee, search fee and examination fee for an application filed under 37 CFR 1.53(b) or 37 CFR 1.53(d) and the oath or declaration for an application filed under 37 CFR 1.53(b) can be submitted after the filing date.

• In addition, for applications, other than design applications, filed under 35 U.S.C. 111(a) on or after December 18, 2013, the claims and drawings may be submitted after the filing date, within such period and under such conditions, including the payment of a surcharge, as prescribed by the Office.

A patent application will not be forwarded for examination on the merits until all required parts have been received, except applications filed on or after September 16, 2012 will be forwarded for examination even if lacking the inventor’s oath or declaration provided that a compliant application data sheet (ADS) is filed.

II.   COMPLETION OF NONPROVISIONAL APPLICATION SUBSEQUENT TO FILING

For applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, except for design applications, a filing date is granted to a nonprovisional application when a specification, with or without claims, is received in the Office.

• 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, including at least one claim, and any required drawings are received in the Office.

For applications filed prior to December 18, 2013, a filing date is granted to a nonprovisional application for patent that includes at least a specification containing a description and at least one claim, and any drawing referred to in the specification or required, which is filed in the U.S. Patent and Trademark Office.

A. Completion of Nonprovisional Application That Is Filed On or After December 18, 2013 And Is Not A Design Application

If an application which has been accorded a filing date does not include at least one claim, the applicant will be notified and given a time period to file claim(s) and pay the surcharge, if required, to avoid abandonment of the application provided the applicant has given a correspondence address.

• If the applicant failed to provide a correspondence address, the applicant has three months from the filing date of the application within which to file claim(s) and pay the surcharge to avoid abandonment of the application.

B. Completion of Nonprovisional Application, Including Design Application, Filed On or After September 16, 2012

For applications filed on or after September 16, 2012, the former missing parts practice under pre-AIA 37 CFR 1.53(f) was revised to allow applicants to postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance.

• 37 CFR 1.53(f) was further revised, effective December 18, 2013, to require that, for applications filed on or after September 16, 2012, the inventor’s oath or declaration or a substitute statement must be filed no later than the date the issue fee is paid to avoid abandonment of the application.
  
• This time period is not extendable under 37 CFR 1.136.

C. Completion of Nonprovisional Application Filed Before September 16, 2012

If an application which has been accorded a filing date does not include the appropriate filing fee, search fee, examination fee, or oath or declaration, applicant will be so notified in accordance with pre-AIA 37 CFR 1.53(f) and given a period of time within which to file the missing parts to complete the application and to pay the surcharge in order to prevent abandonment of the application.

• In order for the Office to so notify the applicant, a correspondence address must also be provided in the application.
  
• The correspondence address may be different from the mailing (post office) address of the applicant.
  • For example, the address of applicant’s registered attorney or agent may be used as the correspondence address.

The oath or declaration filed in reply to such a notice under pre-AIA 37 CFR 1.53(f) must be executed by the inventors and must identify the specification and any amendment filed with the specification which includes subject matter not otherwise included in the specification (including claims) or drawings of the application as filed.

III. APPLICATION UNDER 35 U.S.C. 111(a) FILED BY REFERENCE

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.

A reference, made in the English language in an application data sheet (ADS) upon the filing of an application under 35 U.S.C. 111(a), to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date.

• Thus, the specification and any drawings of the previously filed application will be considered in determining whether an application under 35 U.S.C. 111(a) filed by reference is entitled to a filing date.

In a reference filing under 37 CFR 1.57(a), the reference to a previously filed application in an ADS is not sufficient to establish a priority or benefit claim to that previously filed application.

MPEP SECTION SUMMARY This section covers details on the filing of provisional applications under 35 U.S.C. 111(b). For instance, in addition to the required components of a provisional application, a cover sheet identifying the application as a provisional application must also be filed.

  Section Frequency Chart

A provisional application filed on or after December 18, 2013 will be given a filing date as of the date a specification, with or without claims, is received in the Office.

For provisional applications filed prior to December 18, 2013, the application will be given a filing date as of the date the written description and any necessary drawings are filed in the Office.

The filing date requirements for a provisional application substantially parallel the requirements for a nonprovisional application.

• Amendments, other than those required to make the provisional application comply with applicable regulations, are not permitted after the filing date of the provisional application.

When the specification or drawing are omitted, the applicant must be notified and given a time period in which to submit the missing element to complete the filing.

All provisional applications must be filed with a cover sheet, which may be an application data sheet or a cover letter identifying the application as a provisional application.

• The Office will treat an application as having been filed under 37 CFR 1.53(b), unless the application is clearly identified as a provisional application.
  
• A provisional application, which is identified as such, but which does not have a complete cover sheet will be treated as a provisional application.
  
• However, the complete cover sheet and a surcharge will be required to be submitted at a later date.
  
  

MPEP SECTION SUMMARY This section covers the conversion from a nonprovisional application to a provisional application. The procedure essentially requires the filing of a request for conversion along with the processing fee. A discussion on the ramifications of converting a nonprovisional application to a provisional application is also included. In addition, this section covers the conversion from a provisional application to a nonprovisional application. The procedure requires the filing of a request for the conversion of the provisional application to a nonprovisional application and the proper fee. There is also a quick statement made about how claiming the benefit of a provisional application is a better option than converting a provisional application to a nonprovisional.

  Section Frequency Chart

I.   CONVERSION FROM A NONPROVISIONAL APPLICATION TO A PROVISIONAL APPLICATION

An application filed under 37 CFR 1.53(b) may be converted to a provisional application.

• The procedure requires the filing of a request for conversion and the processing fee.

The provisional application filing fee and the surcharge are also required, although these fees do not need to be paid with the request for conversion.

• If the provisional application filing fee and the surcharge are not paid at the time of filing of the request for conversion, the Office will send a Notice to File Missing Parts in the provisional application requiring these fees.

Filing of the request in the nonprovisional application is required prior to the abandonment of the 37 CFR 1.53(b) application, the payment of the issue fee, or the expiration of 12 months after the filing date of the 37 CFR 1.53(b) application, whichever event is earlier.

• The grant of any such request does not entitle applicant to a refund of the fees properly paid in the application.

Converting a nonprovisional application to a provisional application will not avoid the publication of the nonprovisional application unless the request to convert is recognized in sufficient time to permit the appropriate officials to remove the nonprovisional application from the publication process.

• A provisional application is not entitled to claim priority to or benefit of a prior-filed application

• After the nonprovisonal application has been converted to a provisional application, any priority or benefit claims submitted in the nonprovisional application will be disregarded.

A provisional application is not entitled to claim priority or benefit to a prior-filed application under 35 U.S.C. 386.

II.   CONVERSION FROM A PROVISIONAL APPLICATION TO A NONPROVISIONAL APPLICATION

Applicants should carefully consider the patent term consequences of requesting conversion rather than simply filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e).

• Claiming the benefit of the provisional application under 35 U.S.C. 119(e) is less expensive and will result in a longer patent term.

The procedure requires the filing of a request in the provisional application for the conversion of the provisional application to a nonprovisional application and the required fee.

• The nonprovisional application resulting from conversion of a provisional application must also include the basic filing fee, search fee, and examination fee for the nonprovisional application.
  
• In addition, if the provisional application was not filed with an executed oath or declaration and the appropriate fees for a nonprovisional application, the surcharge is required.
  
• Furthermore, an inventor’s oath or declaration is required to be filed if the provisional application was filed on or after September 16, 2012 or pre-AIA 37 CFR 1.53(f) if the provisional application was filed prior to September 16, 2012.

Filing of the request for conversion in the provisional application is required prior to the abandonment of the provisional application or the expiration of 12 months after the filing date of the 37 CFR 1.53(c) application, whichever event is earlier.

• The grant of any such request does not entitle applicant to a refund of the fees properly paid in the application.
  

 

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