601.01(d) Application Filed Without All Pages of Specification
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For an application filed under 37 CFR 1.53(b) or (c) prior to December 18, 2013 or a design 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 (first sentence), and, in a nonprovisional application, at least one claim, 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 page(s) of the specification.
For an application other than 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 page(s) of the specification, 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 page(s) of the specification.
If the application does not contain anything that can be construed as a written description, OPAP will mail a Notice of Incomplete Application indicating that the application lacks the specification and no filing date is granted.
I. APPLICATION ENTITLED TO FILING DATE
The mailing of an OPAP notice regarding a missing page(s) of specification in a nonprovisional application will permit the applicant to:
- promptly establish prior receipt in the USPTO of the page(s) at issue.
- promptly submit the omitted page(s) in a nonprovisional application and accept the date of such submission as the application filing date.
- 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:
- filing a substitute specification (including claims) that amends the specification to renumber the pages consecutively and cancels any incomplete sentences, without adding the subject matter that was in the omitted page(s) and without adding any new matter.
- filing a substitute specification (excluding claims), to add the subject matter in the omitted page(s) by relying on an incorporation by reference or other portions of the original disclosure, without any adding new matter.
The submission of omitted page(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 with any omitted page(s), which is a cost effective alternative in instances in which a nonprovisional application is deposited without filing fees.
II. APPLICATION NOT ENTITLED TO FILING DATE
If the application does not contain anything that can be construed as a written description, OPAP will mail a Notice of Incomplete Application indicating that the application lacks the specification. Applicant may:
- (A) file a petition under 37 CFR 1.53(e) with the petition fee, asserting that (1) the missing specification was submitted, or (2) the application papers as deposited contain an adequate written description.
- (B) submit the omitted specification, including at least one claim if the application is a nonprovisional application filed under 35 U.S.C. 111(a) prior to December 18, 2013 or a design application, and accept the date of such submission as the application filing date. For applications filed before September 16, 2012, the omitted specification should 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 specification being submitted; or
- (C) submit an amendment in a nonprovisional application.
Applications in which a “Notice of Incomplete Application” has been mailed will be retained in OPAP to await action by the applicant since further action by the applicant is necessary for the application to be accorded a filing date.
601.01(e) Nonprovisional Application Filed Without at Least One Claim
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This section is only applicable to nonprovisional applications filed prior to December 18, 2013 or to design applications. Nonprovisional applications, which are not design applications, filed on or after December 18, 2013 are entitled to a filing date even if the specification does not contain claims. If such an application is filed without claims, it may be completed subsequent to its filing date.
In an application filed under 35 U.S.C. 111(a) prior to December 18, 2013 and in a design application, a claim is a statutory requirement for according a filing date to the application.
- Thus, only design applications and nonprovisional applications filed prior to December 18, 2013 that are filed without at least one claim are incomplete and not entitled to a filing date.
If a nonprovisional application filed prior to December 18, 2013 or a design 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.
If a nonprovisional application filed prior to December 18, 2013 or a design application is accompanied by a preliminary amendment which cancels all claims without presenting any new or substitute claims, the Office will disapprove such an amendment.
For nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, there is no need to request conversion to a provisional application because such applications do not require presentation of at least one claim to obtain a filing date.
601.01(f) Applications Filed Without Drawings
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This section is only applicable to applications filed prior to December 18, 2013 or to design applications. Applications, which are not design applications, filed 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.
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.
Other situations in which drawings are usually not considered necessary for the understanding of the invention are:
- Coated articles or products
- Articles made from a particular material or composition
- Laminated structures:
- Articles, apparatus, or systems where sole distinguishing feature is presence of a particular material: for example:
- A hydraulic system distinguished solely by the use therein of a particular hydraulic fluid;
- 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 hydraulic system distinguished solely by the use therein of a particular hydraulic fluid;
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 simply be processed, so long as the application contains something that can be construed as a written description.
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.
601.01(g) Applications Filed Without All Figures of Drawings
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Section Frequency Chart
I. REVIEW BY THE OFFICE OF PATENT APPLICATION PROCESSING
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 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.
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 with the petition fee, 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 with the petition fee, 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 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 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, without adding the subject matter that was in the omitted drawing(s) and without adding any new matter. The application will maintain the filing date as of the date of deposit of the original application papers in the USPTO, or
- (2) filing an amendment to add the missing figure(s) by relying on an incorporation by reference or other portions of the original disclosure, without adding any new matter. Applicant is required to submit new and replacement drawing sheets to add the missing figure(s). If an application was filed on or after September 21, 2004, and contains a claim for priority of a prior-filed foreign application, or a claim 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.
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.
